Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`Paper 34
`Entered: June 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`e-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-004141
`Patent 7,643,168 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`1 Case IPR2015-00611 (“’611 IPR”) was joined with this proceeding. Paper
`15. Samsung Electronics Ltd. and Samsung Electronics America, Inc. were
`Petitioners in the ’611 IPR, but have since been terminated from this joint
`proceeding (Paper 24).
`
`

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`IPR2015-00414
`Patent 7,643,168 B2
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`
`I. INTRODUCTION
`
`On December 11, 2014, Apple Inc. (“Petitioner”) filed a Petition
`
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–31 of
`
`U.S. Patent No. 7,643,168 B2 (Ex. 1001, “the ’168 patent”).2 On April 9,
`
`2015, E-Watch, Inc. (“Patent Owner”), filed a Preliminary Response (Paper
`
`11). On July 1, 2015, we granted the Petition and instituted trial on claims
`
`1–31 of the ’168 patent. Paper 13 (“Institution Decision” or “Dec. Inst.”).
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 19, “PO Resp.”), and Petitioner filed a Reply (Paper 25, “Reply”).
`
`An oral hearing was held on February 24, 2016. The transcript of the
`
`hearing has been entered into the record. Paper 33 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a). We conclude for the
`
`reasons that follow that Petitioner has shown by a preponderance of the
`
`evidence that claims 1–31 of the ʼ168 patent are unpatentable.
`
`A. Related Proceedings
`
`Petitioner identifies these related cases involving the ’168 patent: (1)
`
`E-Watch, Inc. and E-Watch Corp. v. Apple Inc., No. 2:13-CV-1061
`
`(JRG/RSP) (E.D. Tex.), to which the following case numbers in the same
`
`tribunal are consolidated: CV-1062, 1063, 1064, 1069, 1070, 1071, 1072,
`
`1073, 1074, 1075, 1077, and 1078. Pet. 53, Paper 9, 1.
`
`In addition to the present proceeding, petitions for inter partes review
`
`of the ’168 patent have been filed as follows: IPR2014-00989 (instituted
`
`
`2 The ’168 patent issued from U.S. Patent Application 11/617,509 (the “’509
`
`application”).
`
`1
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`IPR2015-00414
`Patent 7,643,168 B2
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`and joined with IPR2015-00543, “the ’989 IPR”); IPR2015-00401;
`
`IPR2015-00407; IPR2015-00408; IPR2015-00607; and IPR2015-00611.
`
`Pet. 53, Paper 9, 1. Separate petitions for inter partes review of related U.S.
`
`Patent No. 7,635,871 (“the ’871 patent”)3 have been filed as follows:
`
`IPR2014-00439; IPR2014-00987(instituted and joined with IPR2015-
`
`00541); IPR2015-00402; IPR2015-00404; IPR2015-00406; IPR2015-00411;
`
`IPR2015-00610; and IPR2015-00612. Pet. 53, Paper 9, 1–2.
`
`B. The ’168 patent (Ex. 1001)
`
`The ’168 patent describes an image capture, conversion, compression,
`
`storage, and transmission system. Ex. 1001, Abstract. The system includes
`
`a camera and a transmission device; the camera captures an image that is
`
`transmitted to another device using, for example, cellular signal, satellite
`
`transmission and hard line telephonic. Id. at 5:66–6:5. Captured images can
`
`be from a digital or analog camera or a video camera (e.g., a camcorder). Id.
`
`at 2:37–39.
`
`Figure 1 of the ’168 patent is reproduced below.
`
`
`
`
`3 The ’168 patent is a continuation of the ’871 patent. Ex. 1001, at [63].
`
`2
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`Patent 7,643,168 B2
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`Figure 1 is a block diagram of a basic facsimile camera configuration for
`
`capturing an image via a camera and transmitting it via Group III facsimile
`
`transmission to a standard hard copy medium. Id. at 5:34–37.
`
`Figure 7A of the ’168 patent is reproduced below.
`
`Figure 7A depicts “a hand[-]held device for capturing, storing, and
`
`transmitting an image in accordance with the invention.” Id. at 5:53–56,
`
`
`
`11:57–12:5.
`
`
`
`C. Illustrative Claim
`
`Independent claim 1 is reproduced below:
`
`1. Apparatus comprising:
`a portable housing, the portable housing being wireless;
`an image collection device supported by the portable
`housing, the image collection device being operable to provide
`visual image data of a field of view;
`a display supported by the portable housing, the display
`being operable to display for viewing by a user a perceptible
`visual image, the perceptible visual image being generated from
`the visual image data;
`memory supported by the portable housing, the memory
`being suitable to receive visual image data in digital format, the
`
`3
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`IPR2015-00414
`Patent 7,643,168 B2
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`
`memory being suitable to retain the visual image data in digital
`format,
`an input device supported by the portable housing, the
`input device being operable by the user;
`operation of the input device by the user enabling the
`memory to retain the visual image data in digital format, the
`memory being suitable to provide retained visual image data in
`digital format;
`media supported by the portable housing, the media being
`suitable to embody at least one compression algorithm;
`at least one processing platform supported by the portable
`housing, the at least one processing platform being operable to
`execute the at least one compression algorithm, the at least one
`processing platform being provided the retained visual image
`data in digital format, execution of the at least one compression
`algorithm providing compressed visual image data; and
`a mobile phone supported by the portable housing, the
`mobile phone being operable to send to a remote recipient a
`wireless transmission, the wireless transmission conveying the
`compressed digital image data; and
`movement by the user of the portable housing commonly
`moving the image collection device,
`movement by the user of the portable housing commonly
`moving the display.
`
`Ex. 1001, 15:14–50.
`
`
`
`D. Ground Upon Which Trial Was Instituted
`
`Trial was instituted on the ground that claims 1–31 of the ’168
`
`patent are unpatentable under 35 U.S.C. § 102(b) as anticipated by
`
`Monroe.4 Dec. Inst. 13–14.
`
`
`4 Int. Pub. Pat. App. WO 99/35818 A2, to Monroe, published July 15, 1999
`(Ex. 1006, “Monroe”).
`
`4
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`IPR2015-00414
`Patent 7,643,168 B2
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`
`II. ANALYSIS
`
`A. Whether Monroe Is Prior Art
`
`Monroe, published on July 15, 1999 (Ex. 1006, [43]), is prior art to
`
`the challenged claims only if those claims are not entitled to the January 12,
`
`1998, filing date of US Application No. 09/006,073 (“the ’073 application”).
`
`Thus, a threshold issue is whether the ’168 patent is entitled to the benefit of
`
`the filing date of the ’073 application. See Ex. 1001, 1:6–12; Pet. 9–12; PO
`
`Resp. passim; Paper 26 (Patent Owner states “[t]he only issue in this
`
`proceeding involves whether a priority claim to an earlier filed patent
`
`application was properly perfected.”).
`
`1. The Family Tree of the ’168 Patent
`
`The ’168 patent issued from the ’509 application, which was filed
`
`December 28, 2006. Ex. 1001, [21], [22]. On its face, the ’509 application
`
`purports to be a continuation of application 10/336,470, filed on January 3,
`
`2003 (“the ’470 application”).5 Id. at [63]. The ’470 application is a
`
`divisional application of the ’073 application. Ex. 1009, [62]. The
`
`following chart, an edited version of a chart at page 3 of the Petition,
`
`illustrates the relationships described above.
`
`
`
`
`
`
`5 The ’470 application issued as the ’871 patent. Ex. 1001, at [63]; Ex.
`1009.
`
`5
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`IPR2015-00414
`Patent 7,643,168 B2
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`
`Relevant Family Tree ’168 Patent
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`
`
`
`
`
`
`The ’168 patent is represented in the lower green box in the chart (i.e., the
`
`bottommost box). The ’073 application and ’470 application are represented
`
`respectively by the pink box (i.e., top left box) and the upper green box in
`
`the chart (i.e., the middle box). Monroe, cited as the “’818 publication” in
`
`the Petition (Pet. 8.), is shown in the grey box in the chart (top right box).
`
`While the preceding accurately describes the relationships among the
`
`applications, as detailed immediately below, the chain of priority between
`
`the ’509 application and the ’073 application was not correctly stated in the
`
`’509 application. Petitioner contends that the claims of the ’168 patent are
`
`not entitled to the earlier filing date of the’073 application under 35 U.S.C.
`
`§ 120 because the ’509 patent claims priority properly only to the ’470
`
`application and not to the ’073 application. Pet. 5–6, 9–10.
`
`6
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`2. The Erroneous Claims of Priority Made in the ’509 Application
`
`The Specification of the ’168 patent states that “[t]his application is a
`
`divisional application of and claims priority from” the ’073 application. Ex.
`
`1001, 1:6–12. Petitioner contends that this “specific text is an exact copy of
`
`the priority claim for the [’470 application”].” Pet. 10 (citing Ex. 1001, 1:6–
`
`12). Our review of the ’871 patent confirms that the same priority claim is
`
`made. See Ex. 1009, 1:6–12. The priority claim in the Specification is
`
`incorrect because the ’509 application is not a divisional of the ’073
`
`application. See Tr. 29:17–24 (“[n]o, I think Patent Owner would concede
`
`that that language, this application is divisional, that information is
`
`incorrect.”).
`
`The correct relationship between the applications is discussed above.
`
`Specifically, the ’509 application is a continuation of the ’470 application,
`
`which is a division of the ’073 application. The intermediate ’470
`
`application is identified on the cover page of the ’168 patent. Ex. 1001,
`
`[63]. In addition, the Application Data Sheet (“ADS,” Ex. 1002) identifies
`
`the ’509 application as a continuation of the ’470 application. Ex. 1002, 2.6
`
`In addition to the above references, Applicant filed a
`
`Preliminary Amendment that was not entered. Compare Ex. 1001,
`
`1:6–12 with Ex. 1004 (amending priority claim in the Specification);
`
`see also PO Resp. 19 (“if properly entered”). Had the Preliminary
`
`Amendment been entered, the first paragraph of the Specification
`
`would read as follows:
`
`
`6 The ADS also indicates by a checked circle that priority is claimed to a
`foreign application. Ex. 1002, 3. However, no application data is provided
`and this fact is not argued by either party.
`
`7
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`

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`IPR2015-00414
`Patent 7,643,168 B2
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`
`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.
`
`(Ex. 1004)(emphasis added). As can be seen, even if the Preliminary
`
`Amendment were entered, the resulting language does not clearly and
`
`unambiguously indicate whether the second reference to “[t]his application”
`
`references the ’509 application and not the ’470 application or how the ’509
`
`application is related to the ’073 application.
`
`The correct relationship between the three applications is not set forth
`
`in Specification, the cover page, the ADS, or the Preliminary Amendment.
`
`Thus, we are presented with the question of whether or not the ’509
`
`application properly claimed the benefit of the earlier filing date of the ’073
`
`application.
`
`3. 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a)(2)(i)
`
`Both parties acknowledge that the priority issue is premised on
`
`whether the January 12, 1998, filing date of the ’073 application was
`
`properly claimed during prosecution of the ’168 patent. See Pet. 9–12; PO
`
`Resp. 2–3. A claim to benefit of an earlier filing date under 35 U.S.C. § 120
`
`(1999)7 must make specific reference to “each application in the chain of
`
`
`7 The ’168 patent was filed prior to the effective date of § 120, as amended
`by the America Invents Act, Public Law 112-29, 125 Stat. 284 (2011)
`(“AIA”)—September 16, 2012— and is governed by the pre-AIA version of
`
`8
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`priority to refer to the prior applications.” Pet. 9 (citing Encyclopaedia
`
`Britannica, Inc. v. Alpine Elecs. of America, Inc, 609 F.3d 1345, 1352 (Fed.
`
`Cir. 2010). The complete text of pre-AIA 35 U.S.C. § 120 is as follows:
`
`An application for patent for an invention disclosed in the
`manner provided by the first paragraph of section 112 of this title
`in an application previously filed in the United States, or as
`provided by section 363 of this title, 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. (Amended Nov. 14, 1975, Public Law 94-131, sec. 9,
`89 Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b), 98
`Stat. 3385; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
`113 Stat. 1501A-563 (S. 1948 sec. 4503(b)(1)).)
`
`(emphasis added). Patent Owner does not dispute that, at the time the
`
`’509 application was filed, § 120 included the “specific reference”
`
`language. See, e.g., PO Resp. 2, 7, 9, 11, 16, and 20.
`
`
`§ 120. See AIA § 3(c).
`
`9
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`In addition, 37 C.F.R. § 1.78(a)(2)(i),8 the rule in effect as of the filing
`
`of the ’509 application, provides:
`
`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).
`
`(emphasis added). Further, “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).
`
`Petitioner cites to 37 C.F.R. § 1.78(a)(2)(i) as support for its
`
`position that the “mis-identification” of the “text cannot be a valid
`
`basis for extending the priority claim back to the [’073 application]
`
`filing date of January 12, 1998.” Pet. 11–12. Patent Owner agrees
`
`that the above version of 37 C.F.R. § 1.78(a)(2)(i) is the relevant
`
`version for purposes of this trial. PO Resp. 2–4.
`
`4. The Arguments of the Parties
`
`Petitioner argues that “[t]his application” as used in the
`
`Specification’s claim for priority means the ’509 application, “the
`
`
`8 37 C.F.R. § 1.78(a)(2) was in effect for applications filed prior to the
`effective date of the America Invents Act, March 16, 2013.
`
`10
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`application from which the ’168 patent arose.” Pet. 10–11. Petitioner
`
`argues the ’509 application claims priority from the ’470 application, and, as
`
`discussed above, “is not a divisional of the ’073 application.” Id. at 11.9
`
`According to Petitioner, because the ’168 patent “mis-identifies the
`
`relationship between the ‘509 and ‘470 applications,” it fails to make the
`
`“specific reference” required by 35 U.S.C. § 120, as implemented by 37
`
`C.F.R. § 1.78(a)(2)(i), because it fails to indicate the “relationship of the
`
`applications.” Id. Petitioner concludes that the earliest date to which the
`
`claims of the ’168 patent are entitled is the filing date of the ’470
`
`application, January 3, 2003. Id. at 12.
`
`Patent Owner makes several arguments in support of its position that
`
`“an express and proper claim to priority to the ’073 Application” was made
`
`under 35 U.S.C. §120 and 37 CFR §1.78(a)(2)(i). PO Resp. 2. Each
`
`argument is addressed below.
`
`a. Whether the ’509 Application Complied with the Statute
`and Rule
`
`The principal argument made by Patent Owner is based on its reading
`
`of 37 CFR §1.78(a)(2)(i). Patent Owner’s construction of the rule is based
`
`on the language of the rule that “such prior-filed application” refers to “one
`
`or more prior-filed copending nonprovisional applications.” PO Resp. 4–5.
`
`Patent Owner contends that the rule requires only a reference to “a
`
`
`9 Petitioner further contends that “[t]he ‘509 application is not, nor could not
`[sic] be, a divisional of the ‘470 application because the ‘470 application
`was not then pending at the time the ‘509 application was filed.” Pet. 11.
`The ’509 application (filed December 28, 2006) was co-pending with the
`’470 application (issued April 29, 2008). This appears to be a mistake and
`we understand Petitioner to refer to the ’073 application, not to the ’470
`application.
`
`11
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`copending nonprovisional application” and that “cross-reference to other
`
`related applications (i.e. those that are not copending) to which the benefit of
`
`priority is sought is permissive but not mandatory.”10 Id. Patent Owner
`
`concludes that “specific reference” was made to the ’470 application, which
`
`was the only nonprovisional application then “copending,” and therefore the
`
`priority claim is perfected. See Tr. 26:9–12, 35:16–24 (specific reference to
`
`’470 application is sufficient and referencing other applications is “optional
`
`information”).
`
`We are not persuaded by this argument. Patent Owner relies on three
`
`separate parts of the rule: “one or more prior-filed copending
`
`nonprovisional applications;” “each such prior filed application;” and
`
`“[c]ross references to other related applications may be made when
`
`appropriate.” PO Resp. 4–5. Patent Owner’s argument based on the first
`
`two quoted excerpts from the rule fails because “each such prior filed
`
`application” does not mean reference to one copending application is
`
`sufficient. Rather, specific reference to all applications, including
`
`intermediate applications, going back to the earliest application for which
`
`the applicant claims priority is required. See Pet. Reply 4 (citing Medtronic
`
`CoreValve LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, 1363 (Fed.
`
`Cir. 2014) (quoting Encyclopaedia Britannica, 609 F.3d at 1352)).
`
`Patent Owner’s argument based on the last excerpt of the rule assumes
`
`the optional “cross reference to other related applications” relates to
`
`applications in the chain of priority. See PO Resp. 5. The operative
`
`
`10 Patent Owner cites to the current version of 37 CFR §1.78(a)(2)(i) for
`support of its construction. PO Resp. 5, n.3. We are only concerned with
`the rule as it existed at the time.
`
`12
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`sentence of the rule specifically states “(see § 1.14).” Section 1.14 applies to
`
`applications outside the priority chain, including “[u]npublished abandoned
`
`applications (including provisional applications) that are identified or relied
`
`upon,” “[u]npublished pending applications (including provisional
`
`applications) whose benefit is claimed,” and “[u]npublished pending
`
`applications (including provisional applications) that are incorporated by
`
`reference or otherwise identified.” See 37 C.F.R. § 1.14(a)(iv)–(vi). Thus,
`
`we are not persuaded that Patent Owner’s position is supported by the rule.
`
`At final hearing, Patent Owner noted that other language from 35
`
`U.S.C. § 120 supports its position that it is sufficient to identify only then
`
`copending applications. Specifically, Patent Owner argued that “the
`
`‘similarly entitled’ language of the statute provides that copendency from
`
`your intermediate application back to the first application -- in this case it
`
`would be the first application, which is the ’073.” Tr. 27:11–25. Petitioner
`
`noted that this language refers only 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.” Reply 7
`
`(citing Encyclopaedia Britannica, 609 F.3d at 1350; MPEP 201.11 §§ III.A,
`
`III.C). That all applications in the chain must be referenced and the
`
`relationships between them stated is also supported by the Manual of Patent
`
`Examining Procedure (“MPEP”) applicable during the prosecution of the
`
`’509 application. See Pet. Reply 4–6 (citing MPEP 201.11 § III.C.).11 We
`
`agree with Petitioner.
`
`
`11 The MPEP during prosecution of the ’509 application included three
`revisions: MPEP, 8th ed., rev. 5 (Aug. 2006); MPEP, 8th ed., rev. 6 (Sept.
`2007); and MPEP 8th ed., rev. 7 (July 2010). The relevant text is identical
`
`13
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`Were we to adopt Patent Owner’s argument, so long as one copending
`
`application is referenced, there would be no need to identify the earliest
`
`application to which priority is claimed because priority could be determined
`
`by investigating the one application that is identified. This result would be
`
`contrary to the purpose of the “specific reference” requirement of 35 U.S.C.
`
`120, which is to provide notice to the public of the filing date upon which a
`
`patentee may rely to support the validity of the patent and to “eliminate the
`
`burden on the public to engage in a long and expensive search of previous
`
`applications in order to determine the filing date.” See Sticker Indus. Supply
`
`Corp. v. Blaw-Knox Co., 405 F.2d 90, 93 (7th Cir. 1968). The burden
`
`should not be placed on the public to track down filing dates of disparate
`
`applications when “[t]he inventor is the person best suited to understand the
`
`relation of his applications, and it is no hardship to require him to disclose
`
`this information.” Id.; see also Medtronic, 741 F.3d at 1366 (“a requirement
`
`for [applicant] to clearly disclose this information should present no
`
`hardship”). Accurately stating the relationship between the applications in
`
`the chain of priority gives the public adequate notice of the claim to the
`
`earlier filing date.
`
`b. Whether All the Applications in the Priority Chain Were
`Referenced
`
`Patent Owner argues that the reference to the ’470 application is
`
`sufficient because only the ’470 application, not the ’073 application, was
`
`copending with the ’509 application. PO Resp. 6–7. This argument adds the
`
`details to the primary argument discussed above, that identification of only
`
`copending applications in the chain is all that is required. It is
`
`
`in all the revisions. See Pet. Reply 4, n.2.
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`14
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`uncontroverted that both the ’470 and ’073 applications were referenced in
`
`the’168 patent as issued. Ex. 1001 [63] (’470 application), 1:6–12 (’073
`
`application). However, Patent Owner’s Response does not address the
`
`failure of the ’168 patent to correctly state the relationships between the
`
`three applications. As noted above, Patent Owner acknowledges the
`
`relationship between the ’509 application and the ’073 application set forth
`
`in the Specification of the ’168 patent is incorrect. See Tr. 29:17–24.
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`Patent Owner was aware of the error at least from the time of the
`
`service of the Petition. It could have sought a certificate of correction or
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`reissue of the ’168 patent, but did not do so. See 35 U.S.C. §§ 251, 255. For
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`reasons previously discussed, the failure to “specifically reference” the ’073
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`application by correctly identifying its relationship to the ’509 application
`
`means the ’168 patent is not entitled to claim the benefit of the filing date of
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`the ’073 application.
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`c. Whether the ’509 Declaration Establishes the
`Relationship Between the Applications
`
`Patent Owner argues the ’509 application declaration (Ex. 2003) is a
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`copy of the ’470 application declaration (Ex. 2009). PO Resp. 8. Each
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`declaration claims that the application with which it was filed is a divisional
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`application claiming priority to the ’073 application. Id. (“This is a
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`divisional application.”) Patent Owner contends this is evidence of its intent
`
`to claim priority to the ’073 application in the ’509 application because
`
`otherwise it would have filed a new or supplemental declaration without
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`such a priority claim. Id. Patent Owner concludes the ’509 application
`
`declaration’s copying of the ’470 application declaration provides the
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`“missing link” to the ’073 application. Id. at 9–10.
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`Patent Owner’s argument is premised on the declarations, as well as
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`other evidence previously discussed, showing that both the ’470 application
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`and its parent ’073 application were referenced in the ’509 application. PO
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`Resp. 10–11. However, the declarations add little to the record, which
`
`already shows that both the ’470 and ’073 application were referenced,
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`albeit in separate locations of the ’168 patent as issued. Furthermore, “the
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`reference required by this paragraph must be included in an application data
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`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.
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`§ 1.78(a)(2)(iii); see also MPEP 201.11 § III.D (“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.”).
`
`The issue, however, is whether the “specific reference” under 35
`
`U.S.C. § 120 to the earlier filed application was made. Such “specific
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`reference” may be satisfied by stating the correct relationship between the
`
`applications, as required by 37 C.F.R. § 1.78(a)(2)(i). Patent Owner
`
`recognizes this and argues the “’509 Application ADS . . . identifies the
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`relationship of the ’509 Application to the ’470 application (i.e. a
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`continuation application) while the ’509 Declaration . . . identifies the
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`relationship of the ’470 Application to the ’073 Application (i.e., a divisional
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`application).” PO Resp. 10–11. However, the ’509 declaration contains no
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`specific reference to the “’470 application” stating only “[t]his is a divisional
`
`application” and “I hereby claim the benefit under Title 35, United States
`
`Code, § 120 of . . . U.S. Application Serial No. 09/006,073, filed January 12,
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`1998.” See Ex. 2003. Patent Owner further recognizes this “may not
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`necessarily be in the most preferred form,” but contends “a person other than
`
`an Examiner would understand that the ’509 Application is claiming priority
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`all the way to the ’073 Application and would understand the specific
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`reference with respect to the ’509 Application, the ’470 Application, and the
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`’073 Application.” Id. at 11. According to Patent Owner, “even if the
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`relationship between the ’509 Application and the ’073 Application is
`
`misstated in the specification of the ’509 Application, this deficiency is
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`cured in other portions of the ’509 Application (i.e., the ’509 Application
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`ADS and ’509 Declaration).” PO Resp. 12.
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`We do not agree. Patent Owner’s argument is not supported by the
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`facts or by any legal authority. To the extent it relies on its construction of
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`37 C.F.R. § 1.78(a)(2)(i), its arguments were addressed above. The correct
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`relationship between all three applications is missing and 37 C.F.R.
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`§ 1.78(a)(2)(i) is not satisfied.
`
`d. Whether the Incorrect Statement Regarding the ’073
`Application Is Irrelevant
`
`Patent Owner contends that the cover page of the ’168 patent correctly
`
`states the fact that the ’509 application is a continuation of the ’470
`
`application. PO Resp. 11–12. Relying on its argument above that a
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`reference to one copending application meets the requirements of 37 C.F.R.
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`§ 1.78(a)(2)(i), Patent Owner argues the later mistake made in the
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`Specification is “irrelevant.” Id. at 12. As we discussed above, we are not
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`persuaded that the priority claim is perfected based on referencing only then
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`copending applications.
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`e. Whether the Reasonable Person of Ordinary Skill in the
`Art Would be Able to Understand There Was a Priority
`Claim to the ’073 Application
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`The proper inquiry for an issued patent is not a “reasonable examiner”
`
`standard, but a “reasonable person of ordinary skill in the art standard.”
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`Hollmer v. Harari, 681 F.3d 1351, 1357 (Fed. Cir. 2012). Patent Owner
`
`agrees that “in order to claim priority to the earlier filed application, the ’509
`
`Application must accurately indicate the relationship of the applications, as
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`required by 37 C.F.R. § 1.78(a)(2)(i), from the perspective of the public as
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`opposed to a ‘reasonable Examiner.’” PO Resp. 10 (citing Dec. Inst. 12).
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`Patent Owner argues, however, that a reasonable person of ordinary
`
`skill in the art “would use the common practice of tracing the chain of
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`priority” to go from the ’509 application to the ’073 application, and that a
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`petitioner in a inter partes review involving Patent Owner did just that. PO
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`Resp. 13 (citing petition in IPR2014-00439, Ex. 2004). Petitioner counters
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`that a “petitioner or any other person hyperfocused on litigating priority
`
`issues is not a reasonable person of ordinary skill in the art.” Pet. Reply 15,
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`n.4. We agree with Petitioner. A petitioner in an inter partes review is
`
`typically represented by experienced counsel who is well versed in patent
`
`law. Such a person represents a level of skill beyond that of the “reasonable
`
`person of ordinary skill in the art.”
`
`The relationship between the ’509 application and the earlier filed
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`’073 application is not identified correctly in any of the documents of record
`
`and cited by the parties, including the ’168 patent, the ADS, the preliminary
`
`amendment, and the ’509 declaration. Specifically, the ’509 application is
`
`not a divisional application of the earlier-filed ’073 application. From the
`
`perspective of the public, the stated relationship is incorrect and it would not
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`be reasonable to expect the “reasonable person of ordinary skill” to
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`appreciate a mistake was made or what the result of the mistake would be.
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`At a minimum, any investigation would require a review of each of the ’509,
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`’470, and ’073 applications. We are not persuaded that the “reasonable
`
`person” would even attempt the in