UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`APPLE, INC.,
`SAMSUNG ELECTRONICS LTD, AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
` ___________________________________
`Case: IPR2015-004141
`Patent No. 7,643,168
`
`
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual Image
`Signal Via A Digital Transmission System
`
`___________________________________
`PATENT OWNER E-WATCH INC.’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
`
`
`
`
`
`
`1 Case IPR2015-00611 has been joined with this proceeding.
`
`e-Watch, Inc.
`Petitioner – Apple, Inc. et al.
`Patent Owner – e-Watch, Inc.
`IPR2015-00414
`
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`APPLE, INC.,
`SAMSUNG ELECTRONICS LTD, AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
` ___________________________________
`Case: IPR2015-004141
`Patent No. 7,643,168
`
`
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual Image
`Signal Via A Digital Transmission System
`
`___________________________________
`PATENT OWNER E-WATCH INC.’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
`
`
`
`
`
`
`1 Case IPR2015-00611 has been joined with this proceeding.
`
`e-Watch, Inc.
`Petitioner – Apple, Inc. et al.
`Patent Owner – e-Watch, Inc.
`IPR2015-00414
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`
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`Patent Owner Response
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`IPR2015-00414
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`TABLE OF CONTENTS
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`STATEMENT OF MATERIAL FACTS IN DISPUTE........................................ 1
`
`INTRODUCTION .................................................................................................... 1
`
`
`I.
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`II.
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`Statement of Relief Requested..................................................................... 1
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`Summary of Patent Owner’s Argument...................................................... 2
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`III. PATENT OWNER’S RESPONSE TO PETITIONER’S PRIORITY
`
`ANALYSIS AND ANTICIPATION ASSERTIONS............................................ 3
`
`
`A.
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`B.
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`A.
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`Required Practice for Claiming the Benefit of Earlier Filing Date......... 3
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`1.
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`2.
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`B.
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`C.
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`D.
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`E.
`
`F.
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`Clarification of 37 CFR §1.78(a)(2)(i) as Presented in
`MPEP 8th Edition, Rev. 5 .................................................................. 3
`
`‘509 Application Satisfies Required Practice for Claiming the
`Benefit of Earlier Filing Date......................................................... 6
`
`Express Claim to Priority in Declaration and ADS Satisfies Specific
`Reference Requirement..................................................................................... 7
`
`Specific Reference Requirement is Not Violated by ‘168 Patent
`Specification......................................................................................................11
`
`Person Other Than Examiner Would Use Routine Approach to Confirm
`Priority from Public Perspective....................................................................12
`
`Reasonable Person Would Recognize Priority Claim................................15
`
`Totality of Patentee Actions Contradict Petitioner’s Underlying
`Premise...............................................................................................................19
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`IV. CONCLUSION.......................................................................................................20
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`EXHIBIT LIST
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`Currently Filed – Patent Owner
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`[EXH. 2002] Specification of U.S. Patent Application 10/336,470 (“the ‘470
`Specification”)
`
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`[EXH. 2003] Declaration of U.S. Patent Application 11/617,509 (“the ‘509
`Declaration”)
`
`
`[EXH. 2004] Petition in Proceedings of IPR2014-00439 for U.S. Patent No.
`7,365,871 (“the ‘439 Petition”)
`
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`[EXH. 2005] U.S. Patent No. 6,122,526 (“the Parulski ‘526 Patent”)
`
`[EXH. 2006] U.S. Patent No. 5,943,603 (“the Parulski ‘603 Patent”)
`
`[EXH. 2007] U.S. Patent No. 5,666,159 (“the Parulski ‘159 Patent”)
`
`[EXH. 2008] Institution Decision for Proceedings in IPR2014-00439 (“the
`‘439 Institution Decision”)
`
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`[EXH. 2009] Declaration of U.S. Patent Application 10/336,470 (“the ‘470
`Declaration”)
`
`Previously Filed – Patent Owner
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`[EXH. 2001] Table Showing Other Inter Partes Review Petitions With
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` Prior Art And/Or Issues That Overlap With IPR2015-00414
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`Previously Filed – Petitioner
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`[EXH. 1001] U.S. Patent No. 7,643,168 (“the ‘168 Patent”)
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`[EXH. 1002] Application Data Sheet filed December 28, 2006
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`[EXH. 1003] Specification filed December 28, 2006
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`[EXH. 1004] Preliminary Amendment filed December 28, 2006 (“the ‘509
` Preliminary Amendment”)
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`[EXH. 1005] Filing Receipt mailed February 2, 2007
`
`[EXH. 1006] WO 1999/035818 (“the Monroe ‘818 Publication”)
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`[EXH. 1007] Notice of Publication mailed May 17, 2007 (from the File
` History of the ‘168 patent) (“the ‘509 Publication Notice”)
`
` [EXH. 1008] Patent Application Publication No. US 2007/0109594 (“the
`
` ’594 Publication”)
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`[EXH. 1009] U.S. Patent No. 7,365,871 (“the ‘871 Patent”)
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`[EXH. 1010] Declaration of Steven J. Sasson (“Sasson Declaration”)
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`[EXH. 1011] Office Action dated October 4, 2007 (“the ‘509 Office
` Action”)
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`Previously Filed – Board
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`[EXH. 3001] Microsoft Computer Dictionary 332 (2d ed. 2002) –
`
` (“Media” Definition)
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`I. STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner did not submit a statement of material facts in its Petition for Inter
`
`Partes review (“Petition”). Accordingly, no response to a statement of material facts
`
`is necessary pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
`
`II.
`
`INTRODUCTION
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`Patent Owner e-Watch, Inc. (hereinafter “Patent Owner”) respectfully submits
`
`this Patent Owner Response under 35 U.S.C. §§311–319 and 37 C.F.R. §42.120. It is
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`being timely filed by September 22, 2015.
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`“In an inter partes review instituted under this chapter, the petitioner shall have
`
`the burden of proving a proposition of unpatentability by a preponderance of the
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`evidence.” 35 U.S.C. §316(e). Petitioner’s propositions of unpatentability fail to meet
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`that burden with respect to any of the claims of U.S. Patent No. 7,643,168 (“’168
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`Patent”).
`
`A.
`
`Statement of Relief Requested
`
`Pursuant to 35 U.S.C. §316, Patent Owner respectfully requests that the Patent
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`Trial And Appeal Board (“Board” or “PTAB”) find that originally issued claims 1-31
`
`of the ‘168 Patent are not invalid and, specifically, that claims 1-31 of the ‘168 Patent
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`are patentable in view of the instituted grounds of unpatentability.
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`B.
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`Summary of Patent Owner’s Argument
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`Petitioner alleges that the relationship between U.S. Application Serial No.
`
`11/617,509 (“‘509 Application”), from which the ‘168 Patent issued, and U.S.
`
`Application Serial No. 09/006,073 (“’073 Application”) is misidentified in the ‘168
`
`Patent specification and that, as a result, the ‘168 Patent only properly claims
`
`priority to U.S. Application Serial No. 10/336,470 (“‘470 Application”), from which
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`U. S. Patent No. 7,365,871 (“ ‘871 Patent) issued. Consequently, Petitioner alleges
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`that the ‘168 Patent is only entitled to a filing date of January 3, 2003 (i.e. the filing
`
`date of the ‘470 Application) rather than a filing date of January 12, 1998 (i.e. the
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`filing date of the ‘073 Application). Based upon this alleged priority date of January
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`3, 2003, Petitioner has proposed grounds of unpatentability premised on
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`anticipation under 35 U.S.C. §102(b) of claims 1-31 of the ‘168 Patent (i.e. the ‘168
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`Patent Claims) by WO1999/035818 (“Monroe ‘818 Publication”), which has a
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`publication date of July 15, 1999.
`
`Petitioner’s allegations of improper claim to priority fail because the
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`requirements of 35 U.S.C. §120 and 37 CFR §1.78(a)(2)(i), in effect as of the filing
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`of the ‘509 Application (i.e. the patent application that matured into the ‘168
`
`Patent), were satisfied. Moreover, Patentee made an express and proper claim to
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`priority to the ‘073 Application in the Application Data Sheet (“ADS”) and
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`Declaration of the ‘509 Application, meaning the Patentee satisfied the specific
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`2
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`reference requirements even under a very strict, and in Patent Owner’s view
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`improper, interpretation of 35 U.S.C. §120 and 37 CFR §1.78(a)(2)(i).
`
`Additionally, in view of the manner in which the ‘470 Application and ‘073
`
`Application are identified in the ‘168 Patent and the totality of the prosecution
`
`history of the ‘509 Application, a person other than an Examiner (e.g., a person
`
`other than the Examiner who is concerned with matters dependent upon priority)
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`would understand that the ‘168 Patent (i.e. the patent issuing from the ’509
`
`Application) was claiming priority to the ‘073 Application through the ‘470
`
`Application.
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`Finally, Petitioner’s underlying premise that the Patentee was attempting to
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`avoid claiming priority to the ‘073 Application to extend the life of the ‘168 Patent is
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`not supported by the totality of actions of the Patentee during prosecution of the ‘509
`
`Application.
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`III. PATENT OWNER’S RESPONSE TO PETITIONER’S CLAIM
`ANALYSIS AND ANTICIPATION ASSERTIONS
`
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`A. Required Practice for Claiming the Benefit of Earlier Filing Date
`
`1.
`
`Clarification Of 37 CFR §1.78(a)(2)(i) as Presented in MPEP 8th Edition,
`Rev. 5
`
`
`
`The ‘509 Application was filed on December 28, 2006. Thus, at the time of
`
`filing of the ‘509 Application, the current version of the Manual of Patent Examiner’s
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`Procedure was MPEP 8th Edition, Rev. 5 (“the then-current MPEP”), which was
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`released in August of 2006. The code of federal regulations related to patent matters
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`was included in the then-current MPEP, and the relevant code of federal regulations in
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`effect with regard to claiming the benefit of earlier filing dates and cross-references
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`to other applications, 37 CFR §1.78(a)(2)(i), 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
`to each such prior-filed
`be amended
`to contain a reference
`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).
`
`37 CFR §1.78(a)(2)(i) (emphasis added).2
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`Under 37 CFR §1.78(a)(2)(i), any nonprovisional application claiming the
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`benefit of one or more prior-filed copending nonprovisional applications must
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`contain or be amended to contain a reference to each such prior-filed application.
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`Recitation of “such prior-filed application” finds its antecedent basis in the
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`previously
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`recited “one or more prior-filed copending nonprovisional
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`2 The Board cites this same version of 37 C.F.R. §1.78(a)(2)(i) in the Institution
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`Decision as being the relevant version for purposes of the instant Petition.
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`Institution Decision, Paper 13, at 11.
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`applications.” 37 CFR §1.78(a)(2)(i) continues by stating that cross references to
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`other related applications may be made when appropriate. Thus, under 37 CFR
`
`§1.78(a)(2)(i), a nonprovisional application must
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`reference a copending
`
`nonprovisional application when the benefit of priority is sought, but cross-reference
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`to other related applications (i.e. those that are not copending) to which the
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`benefit of priority is sought is permissive but not mandatory.3
`
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`3 Tellingly, the corresponding regulation related to priority claims in post-AIA 37
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`C.F.R. §1.78(c)(2) removes the “copending” language and the permissive aspects of
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`pre-AIA 37 C.F.R. §1.78(a)(2)(i). It states, “[e]xcept for a continued prosecution
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`application filed under § 1.53(d), any nonprovisional application, or international
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`application designating the United States of America, that claims the benefit of one
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`or more prior-filed nonprovisional applications or international applications
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`designating the United States of America must contain or be amended to contain a
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`reference to each such prior-filed application, identifying it by application number
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`(consisting of the series code and serial number) or international application number
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`and international filing date. If the later-filed application is a nonprovisional
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`application, the reference required by this paragraph must be included in an
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`application data sheet (§ 1.76(b)(5)). The reference also must identify the
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`relationship of the applications, namely, whether the later-filed application is a
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`2.
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`‘509 Application Satisfies Required Practice for Claiming the Benefit of
`Earlier Filing Date
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`Because the ‘509 Application was filed on December 28, 2006, 37 CFR
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`
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`§1.78(a)(2)(i) provides the required practice for claiming the benefit of an earlier
`
`filing date and cross-references to other applications. As such, claiming the benefit
`
`of an earlier filing date in the ‘509 Application required that a reference be made
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`to the ‘470 Application, which was copending with the ‘509 Application, but did
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`not require a cross-reference to the ‘073 Application which was not copending
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`with the ‘509 Application. Patentee made such a reference to the ‘470
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`Application in an ADS filed in the ‘509 Application during pendency thereof. EXH.
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`1002, ‘509 Application ADS. “If an application data sheet is provided, the application
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`data sheet is part of the provisional or nonprovisional application for which it has been
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`submitted.” 37 CFR §1.76(a) (Pre-AIA). The ‘509 Application’s proper reference
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`to the copending ‘470 Application is also shown on the cover page to the ‘168
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`Patent, issued from the ‘509 Application, the cover of U.S. Patent Application
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`Publication 2007/0109594, the publication of the ‘509 Application, and the filing
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`receipt for the ‘509 Application. EXH. 1001 (‘168 Patent issuing from ‘509
`
`Application is listed as “[c]ontinuation of application No. 10/336,470, filed on
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`continuation, divisional, or continuation-in-part of the prior-filed nonprovisional
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`application or international application.” 37 C.F.R. §1.78(c)(2) (emphasis added).
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`Jan. 3, 2003”), EXH. 1005 and EXH. 1008. Thus, under 37 CFR §1.78(a)(2)(i),
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`the ‘509 Application accurately represents the necessary chain of priority for
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`claiming the benefit of an earlier filing date.
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`Similarly, reference to the ‘073 Application that was copending with the ‘470
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`Application was properly made in the first paragraph of the ‘470 Specification. EXH.
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`2002, ‘470 Specification in ‘470 Application and EXH. 1009, ‘871 Patent, (‘871
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`Patent issuing from ‘470 Application is listed as “[d]ivisional of application No.
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`09/006,073, filed on Jan. 12, 1998.”). Under 37 CFR §1.78(a)(2)(i), the
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`relationship between the applications and chain of priority is accurately indicated
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`in the ‘509 and ‘470 Applications per the requirements of 37 CFR §1.78(a)(2)(i),
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`meaning the ‘509 Application should be afforded the priority date of the ‘073
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`Application.
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`B.
`
`Express Claim to Priority in Declaration and ADS Satisfies Specific
`Reference Requirement
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`Even if, arguendo, a more stringent reading of the requirements of 37 CFR
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`§1.78(a)(2)(i) and 35 U.S.C. §120 is applied to require specific reference in a
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`nonprovisional application to all prior applications, not just copending applications, in a
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`chain for which priority is sought, the ‘509 Application contains an express claim to
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`priority from the ‘509 Application to the ‘470 Application to the ‘073 Application
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`through the ADS and Oath/Declaration filed in conjunction with the ‘509 Application
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`that by law constitute parts of the ‘509 Application.
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`As required by 35 U.S.C. §111, a United States non-provisional application shall
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`include an Oath, which thereby forms a part of the application. The Oath may be
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`subscribed to by a written declaration. 35 U.S.C. §25(a). In the case of
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`continuation applications and divisional applications, a newly executed oath or
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`declaration is not required as long as certain conditions are met, including the
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`submission in the continuation or divisional of “[a] copy of the executed oath or
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`declaration filed in the prior application, showing the signature or an indication
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`thereon that it was signed.” 37 CFR §1.63(d)(1)(iv) (Pre-AIA).
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`The declaration filed in the ‘509 Application (“‘509 Declaration”) is a copy
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`of the declaration of the ‘470 Application (“’470 Declaration”), as evidenced by
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`the signature date of the ‘509 Declaration being the same as the filing date of the
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`‘470 Application and the same as the ‘470 Declaration. EXH. 2003, ‘509
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`Declaration and EXH. 2009, ‘470 Declaration. Consistent with these laws and
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`regulations, the ‘509 Declaration was timely filed as part of the ‘509 Application
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`and includes an express claim to priority to the ‘073 Application. EXH. 2003,
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`’509 Declaration. If Patentee desired not to claim the benefit of priority to the
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`‘073 Application in the ‘509 Application, a new or supplemental declaration
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`without such claim to priority would have needed to be filed in the ‘509
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`Application instead of relying on the refiled ‘470 Declaration.
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`Although 35 USC §120 requires specific reference, neither 35 USC §120
`
`nor 37 CFR §1.78(a)(2)(i) articulate any particular form of the required specific
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`reference, aside from requiring that the application provide specific reference that
`
`identifies the prior-filed application by application number and identifies the
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`specific relationship of
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`the applications (i.e. continuation, divisional, or
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`continuation-in-part).4 Thus, in view of the ‘509 Declaration indicating the serial
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`number of the ‘073 Application and, by virtue of being a copy of the ‘470
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`Declaration, providing confirmation that the ‘470 Application is a divisional
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`application of the ‘073 Application, the ‘509 Declaration resolves any alleged
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`deficiencies with respect to the requirements of “specific reference” under 35 USC
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`§120 (i.e. the ‘470 Declaration forms a part of the ‘509 Application by serving also
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`as the ‘509 Declaration and provides the alleged missing link between the ‘470
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`Application and the ‘073 Application because the “[t]his is a divisional
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`application” of the ‘470 Declaration/’509 Declaration is clearly identifiable as
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`referring to the ‘470 Application both because of the date (January 3, 2003) of the
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`4 37 C.F.R. §1.78(c)(2) (Post-AIA) clarifies that “the reference required by this
`
`paragraph must be included in an application data sheet,” but this regulation was
`
`enacted after the filing of the ‘509 Application and does not apply to the ‘168
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`Patent. See also Section III.A.1 supra (FN 3).
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`document which is the same as the filing date of the ‘470 Application and prior to
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`the filing date of the ‘509 Application and because the ‘470 Application was a
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`divisional, as opposed to a continuation, of the ‘073 Application whereas the ‘509
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`Application is a continuation of the ‘470 Application).
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`As stated by the Board in the Institution Decision, in order to claim priority to
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`the earlier filed application, the ‘509 Application must accurately indicate the
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`relationship of the applications, as required by 37 C.F.R. § 1.78(a)(2)(i), from the
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`perspective of the public as opposed to a “reasonable Examiner.” Institution
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`Decision, Paper 13, at 12. More specifically, in the Institution Decision, the Board
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`has stated:
`
`The Federal Circuit draws a distinction between what an Examiner would
`understand in the course of prosecution of a pending application and what the
`public would understand. As to an Examiner, “[t]he proper standard by which
`to evaluate the sufficiency of incorporation by reference language, at this
`stage of the proceedings, is whether the identity of the incorporated reference
`is clear to a reasonable examiner in light of the documents presented.” Harari
`v. Hollmer, 602 F.3d 1348, 1352 (Fed. Cir. 2010). Conversely, as to an issued
`patent the “reasonable examiner” standard does not apply. Hollmer v. Harari,
`681 F.3d 1351, 1357 (Fed. Cir. 2012) (“Harari II”). Because at issue is an
`issued patent, we determine that the standard is similar to that articulated in
`Harari II, i.e., what would a person other than an examiner understand?
`Harari II, 681 F.3d at 1357.
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`Institution Decision, Paper 13, at 12 (emphasis added). Without ambiguity,
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`the ‘509 Application provides specific reference that identifies the prior-filed
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`applications by application numbers and further identifies the specific relationship
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`of the applications. The ‘509 Application ADS, which constitutes a part of the ‘509
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`Application, identifies the relationship of the ‘509 Application to the ‘470 Application
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`(i.e. a continuation application) while the ‘509 Declaration, which also constitutes a part
`
`of the ‘509 Application, identifies the relationship of the ‘470 Application to the ‘073
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`Application (i.e. a divisional application). EXH. 2003 and EXH. 1002.
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`Although the priority claim for the ‘509 Application may not necessarily be
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`in the most preferred form, for example in a single ADS, a person other than an
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`Examiner would understand that the ‘509 Application is claiming priority all the
`
`way to the ‘073 Application and would understand the specific reference with
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`respect to the ‘509 Application, the ‘470 Application, and the ‘073 Application.
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`C.
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`Specific Reference Requirement
`Specification
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` Petitioner alleges that the “specific reference” requirement of 35 USC §120
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`is Not Violated by ‘168 Patent
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`is not met due to the relationship between the ‘509 Application and the ‘073
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`Application being incorrectly stated in the specification of the ‘509 Application
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`which issued as the ‘168 Patent. Petition at 10. The ‘168 Patent states, “[t]his
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`application is a divisional application of and claims priority from a non-
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`provisional United States Application … Ser. No. 09/006,073, having a filing date
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`of January 12, 1998.” ‘168 Patent at 1:6-12.
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` As discussed in Section III.A.1 supra, the specific reference requirement of 37
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`CFR §1.78(a)(2)(i) is limited to copending applications. The ‘509 Application was not
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`copending with the ‘073 Application. As such, the misstatement of the relationship of
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`the ‘509 Application to the ‘073 Application is irrelevant with respect to the specific
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`reference requirements of §1.78(a)(2)(i). The ‘509 Application only needed to
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`properly recite its relationship to the copending ‘470 Application, and both parties and
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`the Board agree that the ‘509 Application satisfied this obligation as can be readily
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`seen on the cover page to the ‘168 Patent.
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` As further discussed in Section III.B supra, even if specific reference to all
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`applications, copending and otherwise, is required, the ‘509 Application satisfies even
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`this more stringent standard through the ‘509 Application ADS and ‘509 Declaration
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`that form part of the ‘509 Application. Hence, even if the relationship between the
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`‘509 Application and the ‘073 Application is misstated in the specification of the ‘509
`
`Application, this deficiency is cured in other portions of the ‘509 Application (i.e. the
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`‘509 Application ADS and ‘509 Declaration).
`
`D.
`
`Person Other Than Examiner Would Use Routine Approach to Confirm
`Priority from Public Perspective
`
`
`
` In the Institution Decision, the Board indicated that the standard for what the
`
`public would understand with respect to claiming priority is “what a person other than
`
`an examiner would understand.” Institution Decision, Paper 13, at 12. Patent Owner
`
`submits that a person other than an Examiner would use a routine approach to
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`12
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`Patent Owner Response
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`IPR2015-00414
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`confirm priority of the ‘509 Application to the ‘073 Application without undue
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`effort, burden or ambiguity.
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` Specifically, in determining the chain of priority between the ‘509
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`Application and the ‘073 Application, such person other than an Examiner would
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`use the common practice of tracing the chain of priority from the ‘509
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`Application to the ‘073 Application through the ‘470 Application. In doing so,
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`such person other than an Examiner would readily understand the relationship of
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`the ‘509, ‘470, and ‘073 Applications and, thus, the chain of copendency for
`
`obtaining the benefit of the filing date of the earliest of a chain of prior copending
`
`applications. As recited in Section 201.11 of the then-current MPEP, “[t]here is no
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`limit to the number of prior applications through which a chain of copendency
`
`may be traced to obtain the benefit of the filing date of the earliest of a chain of
`
`prior copending applications.” MPEP, Section 201.11, citing In re Henriksen,
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`399 F2.d 253, 158 USPQ 224 (CCPA 1968).
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` The Petition in IPR2014-00439 (“the ‘439 Petition”), which is familiar to the
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`Board, provides an example of such common practice of tracing the chain of
`
`copendency through a series of patents, as performed by a person other than an
`
`Examiner. EXH. 2004, ‘439 Petition. In the ‘439 Petition, U.S. Patent No.
`
`6,122,526 (“Parulski ‘526 Patent”) is asserted as prior art having a 35 U.S.C.
`
`§102(e) prior art date of April 24, 1994. EXH. 2004, ’439 Petition at 3. The ‘439
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`13
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`Patent Owner Response
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`IPR2015-00414
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`Petition states, “Parulski [‘526 Patent] is a U.S. patent granted from application
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`Serial No. 09/232,594 (filed on Jan. 19, 1999), itself a continuation of application
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`Serial No. 08/842,458 (filed on April 24, 1997), itself a divisional of application
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`Serial No. 08/426,993 that was filed on April 24, 1995. Therefore, Parulski [‘526
`
`Patent] is prior art under at least 35 U.S.C § 102(e).” EXH. 2004, ‘439 Petition at
`
`3, FN 2.
`
`In determining the 35 U.S.C. §102(e) prior art date of the Parulski ‘526
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`Patent, Petitioner (i.e., a person other than an Examiner, who is concerned with
`
`matters dependent upon priority) has used the common practice of tracing the
`
`chain of copendency through a series of patents. The Parulski ‘526 Patent is a
`
`United States patent granted from Application Serial No. 09/232,594 (“the
`
`Parulski ‘594 Application). The Parulski ‘594 Application is itself a continuation
`
`of Application Serial No. 08/842,458 (“the Parulski ‘458 Application”). The
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`Parulski ‘458 Application, from which U.S. Patent No. 5,943,603 (“the Parulski
`
`‘603 Patent) issued, is itself a divisional of Application Serial No. 08/426,993
`
`(“the Parulski ‘993 Application”), from which U.S. Patent No. 5,666,159 (“the
`
`Parulski ‘159 Patent) issued. EXH. 2005, EXH. 2006 and EXH. 2007.
`
`The Petitioner in IPR2014-00439 was able to ascertain the proper chain of
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`priority even though the Parulski ‘526 Patent only makes reference to being a
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`continuation of the Parulski ‘458 Application (which eventually issued as the
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`Patent Owner Response
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`Parulski ‘603 Patent) on the cover page and does not specifically reference any of
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`the other Parulski applications (i.e. the other related applications that were not
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`copending at the time of filing the Parulski ‘594 Application that matured into the
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`Parulski ‘526 Patent). Likewise, the Parulski ‘603 Patent only makes reference to
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`being a divisional of the Parulski ‘993 Application (issued as the Parulski ‘159
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`Patent) on its cover page. Nevertheless, one other than an Examiner was able to
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`follow this chain of priority to determine the appropriate priority date of the
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`Parulski ‘526 Patent without undue difficulty or burden.
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`The Board also conducted an analysis of these facts in the ‘439 Institution
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`Decision and determined that the effective filing date for purposes of priority of the
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`Parulski ‘526 patent was April 24, 1995 (i.e. the filing date of the Parulski ‘993
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`Application). EXH. 2008 at 5. As such, a person other than an Examiner would
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`readily understand the relationship of the ‘509, the ‘470, and ‘073 Applications using
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`this same approach to determine the proper priority date.
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`E. Reasonable Person Would Recognize Priority Claim
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`In addition to performing the routine approach of tracing the priority of the
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`‘168 Patent discussed in Section III.D supra, Patent Owner submits that a
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`“reasonable person” (e.g., a person other than an Examiner that is concerned with
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`matters dependent upon priority) would recognize that other actions Patentee took
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`and other documents Patentee filed during prosecution of the ‘168 Patent indicate
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`that a claim to priority of the ‘073 Application was being made. Review of the
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`prosecution history of the ‘168 Patent would not place any undue burden on such
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`reasonable person, which is the intent of the specific reference requirements under
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`35 USC §120. Cf. Sampson v. Ampex Corp., 463 F.2d 1042, 1045 (2d Cir.1972)
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`(observing that the “specific reference” requirement under § 120 has the purpose
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`of ensuring that someone examining a patent claiming the benefit of an earlier
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`filed application is able to determine the priority date with “a minimum of
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`effort”).
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`As the Board noted in the Institution Decision, Applicant filed a
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`Preliminary Amendment on December 27, 2006 during prosecution of the ‘168
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`Patent (“Preliminary Amendment”) that, if properly entered, would have resulted
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`in the ‘168 Patent specification stating:
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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.
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`EXH. 1004 and Institution Decision, Paper 13, at 12.
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`The Board previously indicated that ambiguity would remain regarding
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`whether “‘[t]his application’ is the ‘509 application or the ‘470 application or how
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`the ‘509 application is related to the ‘073 application” even if this Preliminary
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`Amendment had been entered. Institution Decision, Paper 13, at 12. Patent
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`Owner respectfully submits that even if, arguendo, ambiguity would have still
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`existed, a person other than the Examiner would easily have been able to resolve
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`this ambiguity. Because the ‘470 Application is a divisional of the ‘073
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`Application whereas the ‘509 Application is a continuation of the ‘470
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`Application, a person other than the Examiner would be able to look at the cover
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`page of the ‘168 Patent to ascertain that the first instance of “this application”
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`refers to the ‘509 Application and the second instance of “this application” refers
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`to the ‘470 Application (i.e. the application referenced at the end of the
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`immediately preceding sentence).
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`If this Preliminary Amendment had been properly entered and appeared in
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`the ‘168 Patent specification as intended, it would have, in conjunction with the
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`cover page of the ‘168 Patent, provided enough detail for a person other than the
`
`Examiner to determine the chain of priority from the ‘509 Application to the ‘470
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`Application to the ‘073 Application which could have been further confirmed
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`with minimal effort using the routine approach to tracing priority discussed in
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`Section III.D supra.5
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`5 Petitioner cites to Medt
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