35 U.S.C §120
`
`An application for patent for an invention disclosed in the manner provided
`by section 112(a) (other than the requirement to disclose the best mode) in an
`application previously filed in the United States, or as provided by section
`363, which is filed by an inventor or inventors named in the previously filed
`application shall have the same effect, as to such invention, as though filed on
`the date of the prior application , if filed before the patenting or abandonment
`of or termination of proceedings on the first application or on an
`application similarly entitled to the benefit of the filing date of the first
`application and if it contains or is amended to contain a specific reference to
`the earlier filed application. No application shall be entitled to the benefit of
`an earlier filed application under this section unless an amendment
`containing the specific reference to the earlier filed application is submitted
`at such time during the pendency of the application as required by the Director.
`The Director may consider the failure to submit such an amendment within that
`time period as a waiver of any benefit under this section. The Director may
`establish procedures, including the payment of a surcharge, to accept an
`unintentionally delayed submission of an amendment under this section.
`
`Paper 19 (Patent Owner Response) at 7
`
`
`
`An application for patent for an invention disclosed in the manner provided
`by section 112(a) (other than the requirement to disclose the best mode) in an
`application previously filed in the United States, or as provided by section
`363, which is filed by an inventor or inventors named in the previously filed
`application shall have the same effect, as to such invention, as though filed on
`the date of the prior application , if filed before the patenting or abandonment
`of or termination of proceedings on the first application or on an
`application similarly entitled to the benefit of the filing date of the first
`application and if it contains or is amended to contain a specific reference to
`the earlier filed application. No application shall be entitled to the benefit of
`an earlier filed application under this section unless an amendment
`containing the specific reference to the earlier filed application is submitted
`at such time during the pendency of the application as required by the Director.
`The Director may consider the failure to submit such an amendment within that
`time period as a waiver of any benefit under this section. The Director may
`establish procedures, including the payment of a surcharge, to accept an
`unintentionally delayed submission of an amendment under this section.
`
`Paper 19 (Patent Owner Response) at 7
`
`
`
`37 CF.R. §1.78(a)(2)(i)
`
`Except for a continued prosecution application filed under § 1.53(d), any
`nonprovisional application or international application designating the United
`States of America claiming the benefit of one or more prior-filed copending
`nonprovisional applications or international applications designating the
`United States of America must contain or be amended to contain a reference to
`each such prior-filed application, identifying it by application number
`(consisting of the series code and serial number) or international application
`number and international filing date and indicating the relationship of the
`applications. Cross references to other related applications may be made when
`appropriate (see § 1.14).
`
`Paper 19 (Patent Owner Response) at 4
`
`
`
`37C.F.R. §1.78(c)(2)
`
`"[e]xcept for a continued prosecution application filed under § 1.53(d),
`any nonprovisional application, or international application designating
`the United States of America, that claims the benefit of one or more
`prior-filed nonprovisional applications or international applications
`designating the United States of America must contain or be amended
`to contain a reference to each such prior-filed application,
`identifying it by application number (consisting of the series code and
`serial number) or international application number and international
`filing date. If the later-filed application is a nonprovisional application,
`the reference required by this paragraph must be included in an
`application data sheet (§ 1.76(b)(5)). The reference also must identify
`the relationship of the applications, namely, whether the later-filed
`application is a continuation, divisional, or continuation-in-part of the
`prior-filed nonprovisional application or international application." 37
`C.F.R. §1.78(c)(2) (emphasis added).
`
`Paper 19 (Patent Owner Response) at 5
`
`
`
`Specific Reference
`
`...establish copendency throughoutthe entire chain of prior
`applications.
`
`Paper 19 (Petitioner Reply) at 7
`
`
`
`Copendency Has Been
`
`Established
`
`..."copendency" is not the element missing from Patent Owner's
`priority claim...
`
`Paper 19 (Petitioner Reply) at 19
`
`
`
`'First Sentence' From '168
`
`Patent Specification
`
`This application is a divisional application of and claims priority from a non-
`provisional United States Application entitled Apparatus For Capturing,
`Converting And Transmitting A Visual Image Signal Via A Digital Transmission
`System, Ser. No. 09/006,073, having a filing date of Jan. 12, 1998; the
`specification and drawings of which are hereby incorporated by reference.
`
`Exhibit 1001 in Paper 1 (Petition) at 1:6-12
`
`
`
`Cases Involving Specific
`Reference Issues Directed To
`Intermediate Applications
`
`The Federal Circuit has held that "the 'specific reference' requirement
`mandates each [intermediate] application in the chain of priority to refer
`to the prior applications'" (plural). Medtronic CoreValve LLC v. Edwards
`Lifesciences Corp., 741 F.3d 1359, 1363 (Fed. Cir. 2014) (quoting Encyclopaedia
`Britannica, Inc. v. Alpine Elecs. ofAm., Inc., 609 F.3d 1345, 1352 (Fed. Cir.
`2010)) (bracketed insertion in original).
`
`Paper 19 (Petitioner Reply) at 4
`
`
`
`MPEP
`
`[T]he MPEP is a "guide to patent attorneys and patent examiners on
`procedural matters," and "[although the MPEP does not have the force
`of law, it is entitled to judicial notice 'so far as it is an official
`interpretation of statutes or regulations with which it is not in conflict.'"
`E.g., Airbus S.A.S. v. FirepassCorp., 793 F.3d 1376, 1380 (Fed. Cir.
`2015) (internal citations omitted)
`
`.o
`
`Paper 19 (Petitioner Reply) at 5
`
`
`
`Revised Version Of Patent Owner Oral Hearing Demonstratives
`
`IPR2015-00414
`
`CERTIFICATE OF SERVICE
`
`This Certificate of Service in compliance with 37 CFR §42.205 is provided with
`the Patent Owner Oral Hearing Demonstratives, certifying that a copy of the Patent
`Owner Oral Hearing Demonstratives in its entirety has been served on Petitioner as
`detailed below.
`
`Date of Service:
`
`February 17,2016
`
`Manner of Service:
`
`Document(s) Served:
`
`email with consent of Petitioner
`Revised Version of PatentOwner Oral Hearing
`Demonstratives for IPR2015-00414 (pages 1-8)
`
`Person(s) Served:
`
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`
`/s/ David O. Simmons
`
`David O. Simmons
`
`Reg. No. 43,124
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