Petitioner Apple Inc.’s
`Demonstrative Slides
`
`Inter Partes Review of
`U.S. Patent No. 7,643,168 B2
`IPR2015-00414
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`February 24, 2016
`
`1
`
`Apple Ex. 1015
`Apple Inc. v. E-Watch, Inc.
`IPR2015-00414
`
`
`Demonstrative Slides
`
`Inter Partes Review of
`U.S. Patent No. 7,643,168 B2
`IPR2015-00414
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`February 24, 2016
`
`1
`
`Apple Ex. 1015
`Apple Inc. v. E-Watch, Inc.
`IPR2015-00414
`
`
`
`Table of Abbreviations
`
`’168 Patent
`
`U.S. Patent No. 7,643,168 B2, IPR2015-00414, Ex. 1001
`
`’073 Application
`
`U.S. Patent Application 09/006,073
`
`’470 Application
`
`U.S. Patent Application 10/336,470
`
`’509 Application
`
`U.S. Patent Application 11/617,509
`
`Decision
`
`Institution Decision, IPR2015-00414, Paper 13
`
`Monroe/‘818 Publication WO99/35818, IPR2015-00414, Ex. 1006
`
`MPEP
`
`Manual of Patent Examining Procedure
`
`Petition/Pet.
`
`Petition, IPR2015-00414, Paper 1
`
`POSA
`
`Reply
`
`Person of Ordinary Skill in the Art
`
`Petitioner’s Reply, IPR2015-00414, Paper 25
`
`Response/Resp.
`
`Patent Owner Response, IPR2015-00414, Paper 19
`
`2
`
`
`
`Order of Presentation
`
`Introduction
`
`Specific Topics In Dispute:
`
`1. “Specific Reference” Must Have Been Correctly Made to Each “Earlier Filed
`
`Application” in the ADS or Specification
`
`2. Neither the ADS nor Specification of the ’509 Application Contains a “Specific
`
`Reference” to the ’073 Application
`
`3. The Federal Circuit Has Rejected Patent Owner’s Argument That POSA Would
`
`Look Beyond the Specification and ADS
`
`4. There Is No “Routine Approach” Exception to the “Specific Reference”
`
`Requirement of 35 U.S.C. § 120
`
`3
`
`
`
`Introduction – The ’168 Patent’s Priority Claim
`
`’168 Patent
`
`’168 patent at 1:6-12.
`
`4
`
`
`
`Introduction – The ’168 Patent’s Priority Claim
`
`’168 Patent
`
`’168 patent at [63].
`
`5
`
`
`
`Introduction – Prior Art – Monroe
`
`WO 99/35818
`
`Ex. 1006 at [11], [22], [30], [43]; Pet. at 3, 9, 12.
`
`Petitioner’s Expert
`
`“Simply stated, the ‘168 patent and the ‘818 publication disclose the same subject matter.”
`
`The Board
`
`Ex. 1010 ¶ 19; Pet. at 9, 12.
`
`“We agree with Petitioner that the Specifications of the ’168 patent and Monroe are substantially identical.”
`
`Decision at 14.
`
`Patent Owner never disputes Monroe and the ’168 patent are identical
`See Resp. at 2, 21.
`
`6
`
`
`
`Introduction – ’168 Patent Family Tree
`
`Pet. at 3.
`
`7
`
`
`
`Order of Presentation
`
`Introduction
`
`Specific Topics in Dispute:
`
`1. “Specific Reference” Must Have Been Correctly Made to Each “Earlier Filed
`
`Application” in the ADS or Specification
`
`2. Neither the ADS nor Specification of the ’509 Application Contains a “Specific
`
`Reference” to the ’073 Application
`
`3. The Federal Circuit Has Rejected Patent Owner’s Argument That POSA Would
`
`Look Beyond the Specification and ADS
`
`4. There Is No “Routine Approach” Exception to the “Specific Reference”
`
`Requirement of 35 U.S.C. § 120
`
`8
`
`
`
`1. “Specific Reference” Must Have Been Correctly Made to
`Each “Earlier Filed Application” in the Chain of Priority
`
`35 U.S.C. § 120
`
`“No application shall be entitled to the benefit of an earlier
`filed application . . . unless an amendment containing the
`specific reference to the earlier filed application is
`submitted.”
`
`35 U.S.C. § 120; Reply at 4, 6-7; Pet. at 9-11.
`
`Federal Circuit
`
`“[T]he ‘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. of Am., Inc., 609 F.3d 1345, 1352 (Fed. Cir. 2010)); Reply at 4; see Pet. at 9.
`
`9
`
`
`
`1. “Specific Reference” Must Have Been Correctly Made to
`Each “Prior-Filed Application” in the ADS or Specification
`
`37 C.F.R. § 1.78(a)(2)(i)
`
`“[A]ny nonprovisional application … claiming the benefit of one or
`more prior-filed copending nonprovisional applications … 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) … and indicating the
`relationship of the applications. Cross references to other related
`applications may be made when appropriate (see § 1.14).”
`
`37 C.F.R. § 1.78(a)(2)(i) (2006); Reply at 5, 7; Pet. at 9, 11.
`
`37 C.F.R. § 1.78(a)(2)(iii)
`
`“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), or the specification must contain
`or be amended to contain such reference in the first sentence(s)
`following the title.”
`
`37 C.F.R. § 1.78(a)(2)(iii) (2006); Reply at 8-9.
`
`10
`
`
`
`1. “Specific Reference” Must Correctly “Identify All of the
`Prior Applications” in “an ADS or the Specification”
`
`MPEP 201.11
`
`“C. Benefit Claims to Multiple Prior Applications
`
`… If applicant wishes that the pending application have the benefit of
`the filing date of the first filed application, applicant must, besides
`making reference to the intermediate application, also make
`reference to the first application. The reference to the prior
`application must identify all of the prior applications and indicate
`the relationship (i.e., continuation, divisional, or continuation-in-part)
`between each nonprovisional application in order to establish
`copendency throughout the entire chain of prior applications.”
`
`MPEP 201.11 § III.C. (citations omitted); Reply at 7.
`
`“The reference required by 37 CFR 1.78(a)(2) or (a)(5) must be
`included in an ADS or the specification must contain or be
`amended to contain such reference in the first sentence(s) following
`the title.”
`
`MPEP 201.11 § III.D; Reply at 8-9.
`
`11
`
`
`
`1. Patent Owner’s Argument That the “Specific Reference” Is
`Limited to Only Then-Copending Applications Is Contrary to Law
`
`Petitioner’s Reply
`
`“The reference to ‘copending’ in § 1.78(a)(2)(i) is merely
`referring to the requirement that there be a copending
`application for each link in the priority chain and is not a
`limitation on which applications require a ‘specific reference.’”
`
`Federal Circuit
`
`Reply at 7.
`
`“Even if a new application is not co-pending with the first
`application, § 120 states that the application can meet the co-
`pendency requirement . . . .”
`
`Encyclopaedia Britannica, 609 F.3d at 1350; Reply at 7.
`
`12
`
`
`
`1. Patent Owner’s Argument That the “Specific Reference” Is
`Limited to Only Then-Copending Applications Is Contrary to Law
`
`37 C.F.R. § 1.78(c) (Post-AIA)
`
`“(c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed
`nonprovisional or international application. An applicant in a nonprovisional
`application . . . may claim the benefit of one or more prior-filed copending
`nonprovisional applications . . . under the conditions set forth in 35 U.S.C.
`120, 121, or 365(c) and this section.
`. . . .
`(2) Except 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) (July 2013) (now 37 C.F.R. § 1.78(d));
`Resp. at 5 n.3.
`
`13
`
`
`
`1. Patent Owner’s Reliance on “Cross References” to
`Permit Ignoring the Settled Law is Misplaced
`
`Petitioner’s Reply
`
`“Section 1.14 applies to other applications that are not in the direct, priority
`chain of copending applications necessary for claiming priority.”
`
`37 C.F.R. § 1.78(a)(2)(i)
`
`Reply at 8.
`
`“Cross references to other related applications may be made when appropriate
`(see § 1.14).”
`
`37 C.F.R. § 1.14 Patent Applications Preserved in Confidence
`
`37 C.F.R. § 1.78(a)(2)(i) (2006); Reply at 7-8.
`
`“(a) Confidentiality of patent application information. Patent applications that
`have not been published under 35 U.S.C. 122(b) are generally preserved in
`confidence pursuant to 35 U.S.C. 122(a) . . .
`(iv) Unpublished abandoned applications (including provisional
`applications) that are identified or relied upon . . .
`(v) Unpublished pending applications (including provisional applications)
`whose benefit is claimed . . . .
`(vi) Unpublished pending applications (including provisional applications)
`that are incorporated by reference or otherwise identified . . . .”
`
`37 C.F.R. § 1.14(a); Reply at 7-8.
`
`14
`
`
`
`Order of Presentation
`
`Introduction
`
`Specific Topics in Dispute:
`
`1. “Specific Reference” Must Have Been Correctly Made to Each “Earlier Filed
`
`Application” in the ADS or Specification
`
`2. Neither the ADS nor Specification of the ’509 Application Contains a “Specific
`
`Reference” to the ’073 Application
`
`3. The Federal Circuit Has Rejected Patent Owner’s Argument That POSA Would
`
`Look Beyond the Specification and ADS
`
`4. There Is No “Routine Approach” Exception to the “Specific Reference”
`
`Requirement of 35 U.S.C. § 120
`
`15
`
`
`
`2. Neither the ADS nor Specification of the ’509 Application
`Contains a “Specific Reference” to the ’073 Application
`
`’168 Patent
`
`“This application is a divisional application of and claims priority
`from … Ser. No. 09/006,073.”
`
`’168 patent at 1:6-12; Reply at 10; Pet. at 10-11.
`
`16
`
`
`
`2. Neither the ADS nor Specification of the ’509 Application
`Contains a “Specific Reference” to the ’073 Application
`
`’168 Patent
`
`’168 patent at [63]; Reply at 10; Pet. at 10-11.
`
`Application Data Sheet
`
`Ex. 1002 at 2; Reply at 10-11; Pet. at 10.
`
`17
`
`
`
`2. The Preliminary Amendment Sought by Applicant Only
`Injected More Confusion
`
`Un-entered Preliminary Amendment
`
`“This application is a continuation of co-pending Patent Application Serial No.
`10/336,470 filed on January 3, 2003 entitled APPARATUS FOR CAPTURING,
`CONVERTING AND TRANSMITTING A VISUAL IMAGE SIGNAL VIA A DIGITAL
`TRANSMISSION SYSTEM. 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.”
`
`The Board
`
`Decision at 12; Reply at 11-12, 14; Ex. 1004 at 1;
`’168 patent at 1:6-12; Pet. at 5-6.
`
`“Even were the Preliminary Amendment entered as set forth above, the resulting
`language does not clearly and unambiguously indicate whether ‘[t]his application’
`is the ’509 or the ’470 application or how the ’509 application is related to the
`’073 application.”
`
`Federal Circuit
`
`Decision at 12; Reply at 11.
`
`“Medtronic’s argument is that the phrase ‘this application’ is not self-referential from
`application to application . . . . Medtronic’s proposed meaning of ‘this application’ is
`an attempt at linguistic gymnastics that makes little sense relative to the
`straightforward, plain meaning of the phrase.”
`
`Medtronic, 741 F.3d at 1365-66; Reply at 11-12; Pet. at 11.
`
`18
`
`
`
`2. Patent Owner’s Argument That “This Application” Has Two
`Meanings Is Irreconcilable With the Incorporation by Reference
`
`Petitioner’s Reply
`
`“Patent Owner’s proposal renders the incorporation by
`reference at the end of the second sentence—“This
`application is a divisional application of … Ser. No. 09/006,073
`…; the specification and drawings of which are hereby
`incorporated by reference” (’168 patent at 1:6-12)—
`irreconcilable because it is unclear whether the incorporated
`specifications and drawings would be from the ’470
`application (as ‘[t]his application’ according to Patent Owner)
`or the ’073 application. This difficultly is not present if
`‘[t]his application’ is read as referring to ‘the present
`application’ as Federal Circuit precedent requires.”
`
`Reply at 14.
`
`19
`
`
`
`2. The Declaration Filed in the ’509 Application Merely
`Reiterates the Defective Priority Claim to the ’073 Application
`
`’509 Application Declaration
`
`’168 Patent
`
`Ex. 2003 at 1; Reply at 14.
`
`“This application is a divisional application of and claims priority from … Ser.
`No. 09/006,073.”
`
`’168 patent at 1:6-12; Reply at 14; Pet. at 11-12.
`
`20
`
`
`
`2. Priority Claims From a Declaration Still Required an
`Amendment or a Petition to Perfect Priority
`
`MPEP 201.11
`
`“If an applicant includes a benefit claim in the application but not in the
`manner specified by 37 CFR 1.78(a) (e.g., if the claim is included in an oath
`or declaration or the application transmittal letter) within the time period
`set forth in 37 CFR 1.78(a), the Office will not require a petition under 37 CFR
`1.78(a) and the surcharge under 37 CFR 1.17(t) to correct the claim if the
`information concerning the claim was recognized by the Office as shown by
`its inclusion on the filing receipt.”
`
`“If, however, a claim is not included in the first sentence(s) of the specification
`or in an ADS and is not recognized by the Office as shown by its absence on
`the filing receipt, the Office will require a petition under 37 CFR 1.78(a) and
`the surcharge to correct the claim.”
`
`“Even if the Office has recognized a benefit claim by entering it into the
`Office’s database and including it on applicant’s filing receipt, the benefit
`claim is not a proper benefit claim under … 35 U.S.C. 120 and 37 CFR
`1.78 unless the reference is included in an ADS or in the first
`sentence>(s)< of the specification and all other requirements are met.”
`
`MPEP 201.11 §§ III.D; Reply at 9.
`
`21
`
`
`
`Order of Presentation
`
`Introduction
`
`Specific Topics in Dispute:
`
`1. “Specific Reference” Must Have Been Correctly Made to Each “Earlier Filed
`
`Application” in the ADS or Specification
`
`2. Neither the ADS nor Specification of the ’509 Application Contains a “Specific
`
`Reference” to the ’073 Application
`
`3. The Federal Circuit Has Rejected Patent Owner’s Argument That POSA Would
`
`Look Beyond the Specification and ADS
`
`4. There Is No “Routine Approach” Exception to the “Specific Reference”
`
`Requirement of 35 U.S.C. § 120
`
`22
`
`
`
`3. The Federal Circuit Has Rejected Patent Owner’s Argument
`That POSA Would Look Beyond the Specification and ADS
`
`Federal Circuit
`
`“[Medtronic argues that] the test for determining whether a priority claim
`contains the specific reference required by § 120 is whether a reasonable
`person reading the language of the claim would be able to determine the
`relationship between the priority applications. It submits that the language
`of a priority claim should not exist in isolation, but should be interpreted
`by an interested reader who discerns the context.
`
`We decline to adopt the ‘reasonable person’ test proposed by Medtronic to
`interpret the sufficiency of a priority claim under 35 U.S.C. § 120. Medtronic’s
`proposal runs afoul of the language of the statutory provision, which
`requires ‘a specific reference’ to each earlier filed application, as well as the
`implementing regulation for § 120, which requires precise details in priority
`claims down to the ‘application number (consisting of the series code and
`serial number),’ 37 C.F.R. § 1.78(a)(2)(i).”
`
`Medtronic, 741 F.3d at 1365-66; Reply at 16-18; Pet. at 9.
`
`“Thus, on its face, the incorporation language does not directly lead one of
`ordinary skill to the [earlier] application but rather presents several potential
`documents for incorporation. Such ambiguity in incorporation does not suffice.”
`
`Hollmer v. Harari, 681 F.3d 1351, 1358 (Fed. Cir. 2012); Reply at 16.
`
`23
`
`
`
`3. The Federal Circuit Has Rejected Patent Owner’s Argument
`That POSA Would Look Beyond the Specification and ADS
`
`Federal Circuit
`
`“The patentee is the person best suited to understand the genealogy and
`relationship of her applications; a requirement for her to clearly disclose this
`information should present no hardship. Accord Sticker Indus. Supply Corp. v.
`Blaw–Knox Co., 405 F.2d 90, 93 (7th Cir. 1968). On the contrary, Medtronic's
`‘reasonable person’ test improperly places the burden of deciphering a
`priority claim upon the reader or the public. Cf. Sampson v. Ampex Corp., 463
`F.2d 1042, 1045 (2d Cir. 1972) (observing that the ‘specific reference’
`requirement under § 120 has the purpose of ensuring that someone
`examining a patent claiming the benefit of an earlier filed application is able
`to determine the priority date with ‘a minimum of effort’). Allocating the
`responsibility of disclosure through specific references to the patentee
`eliminates the inefficiencies associated with having the public expend efforts
`to unearth information when such information is readily available to the
`patentee. See Sticker Indus., 405 F.2d at 93 (‘Congress may well have thought
`that Section 120 was necessary to eliminate the burden on the public to
`engage in long and expensive search of previous applications in order to
`determine the filing date of a later patent.’).”
`
`Medtronic, 741 F.3d at 1366; Reply at 16-18; Pet. at 9.
`
`24
`
`
`
`Order of Presentation
`
`Introduction
`
`Specific Topics in Dispute:
`
`1. “Specific Reference” Must Have Been Correctly Made to Each “Earlier Filed
`
`Application” in the ADS or Specification
`
`2. Neither the ADS nor Specification of the ’509 Application Contains a “Specific
`
`Reference” to the ’073 Application
`
`3. The Federal Circuit Has Rejected Patent Owner’s Argument That POSA Would
`
`Look Beyond the Specification and ADS
`
`4. There Is No “Routine Approach” Exception to the “Specific Reference”
`
`Requirement of 35 U.S.C. § 120
`
`25
`
`
`
`4. Patent Owner’s Argument That There Is a “Common
`Practice of Tracing the Chain of Copendency” Is Irrelevant
`
`Petitioner’s Reply
`
`“Patent Owner alleges there is a ‘common practice of tracing
`the chain of copendency through a series of patents, as
`performed by a person other than an Examiner.’ Resp. 13.
`But ‘copendency’ is not the element missing from Patent
`Owner’s priority claim—the necessary ‘specific reference’
`under § 120 establishing that copendency is missing.
`Thus, whether or not copendency can be traced through a
`series of patents is irrelevant to whether the ‘specific
`reference’ element of 35 U.S.C. § 120 has been met.”
`
`Reply at 18-19.
`
`26
`
`
`
`3. Patent Owner’s Reliance on a Footnote in a Different
`Petition Cannot Establish a “Routine Approach” to Anything
`
`Patent Owner’s Support for a “Routine Approach” is a Footnote
`Asserted Against A Different Patent By A Different Petitioner
`
`Ex. 2004 at 8 & n.2; Resp. 13-15; Reply at 19.
`
`Patent Owner Did Not Dispute Parulski’s Priority Date
`
`“[Petitioner] cannot in good faith claim that the Swear Behind Affidavit is
`insufficient to antedate at least one of the two cited references which have
`effective dates of April 24, 1995 (Parulski ’526 Patent) and December 9,
`1994 (Reele ’037 Patent).”
`
`A. Priority Date For The Parulski Reference
`
`The earliest effective filing date of the Parulski reference is April 24, 1995.
`
`Ex. 1012 at 12-13 (top); Ex. 1013 at 12 (bottom); Reply at 19.
`
`27
`
`
`
`4. Another Petitioner Determined That the ’168 Patent Has a
`Priority Date of January 3, 2003
`
`Petitioner’s Reply
`
`“Moreover, to the extent a petitioner’s argument is an example of how a
`reasonable person of ordinary skill in the art would determine priority,
`another petitioner, HTC Corporation, determined that the priority date of the
`’168 patent was also January 3, 2003, because ‘the 168 Patent does not claim
`the priority date of Jan. 12, 1998.’”
`
`Petition from IPR2014-00989
`
`Ex. 1014 at 7; Reply at 20.
`
`Ex. 1014 at 7; Reply at 20.
`
`28
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