UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APPLE INC.,
`Petitioner
`v.
`E-WATCH, INC.,
`Patent Owner
`_____________________
`
`IPR2015-00414
`U.S. Patent No. 7,643,168 B2
`_____________________
`
`PETITIONER’S REPLY
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APPLE INC.,
`Petitioner
`v.
`E-WATCH, INC.,
`Patent Owner
`_____________________
`
`IPR2015-00414
`U.S. Patent No. 7,643,168 B2
`_____________________
`
`PETITIONER’S REPLY
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`2.
`
`Page
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 3
`A.
`“Specific Reference” Must Have Been Made To Each “Earlier
`Filed Application” In The ADS or Specification .................................. 3
`1.
`The “Specific Reference” Must Identify And Indicate
`The Relationship Between All Of The Prior Applications ......... 4
`The “Specific Reference” Must Be Made In The ADS Or
`First Sentences Of The Specification .......................................... 8
`Neither The ADS Nor Specification Of The ’509 Application
`Contains A “Specific Reference” To The ’073 Application ............... 10
`A Reasonable Person Of Ordinary Skill In The Art Would Look
`For Priority On Face Of The Patent .................................................... 15
`There Is No “Routine Approach” Exception To The “Specific
`Reference” Requirement Of 35 U.S.C. § 120 ..................................... 18
`III. CONCLUSION .............................................................................................. 20
`
`
`B.
`
`C.
`
`D.
`
`
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Airbus S.A.S. v. Firepass Corp.,
`793 F.3d 1376 (Fed. Cir. 2015) ............................................................................ 5
`
`Broadcast Innovation, L.L.C. v. Charter Commc’ns, Inc.,
`420 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 13
`
`Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc.,
`609 F.3d 1345 (Fed. Cir. 2010) ........................................................................ 4, 7
`
`Hollmer v. Harari,
`681 F.3d 1351 (Fed. Cir. 2012) .............................................................. 15, 16, 18
`
`Hovlid v. Asari,
`305 F.2d 747 (9th Cir. 1962) ................................................................................ 6
`
`Medtronic CoreValve LLC v. Edwards Lifesciences Corp.,
`741 F.3d 1359 (Fed. Cir. 2014) .................................................... 4, 12, 13, 17, 18
`
`Sampson v. Ampex Corp.,
`463 F.2d 1042 (2d Cir. 1972) ....................................................................... 16, 18
`
`Santarus, Inc. v. Par Pharm., Inc.,
`694 F.3d 1344 (Fed. Cir. 2012)
`(Newman, J., concurring in part and dissenting in part)..................................... 13
`
`Sticker Indus. Supply Corp. v. Blaw-Knox Co.,
`405 F.2d 90 (7th Cir. 1968) ............................................................................ 6, 18
`
`Zenon Envtl., Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .................................................................... 13, 18
`
`Statutes
`
`35 U.S.C. § 120 ..................................................... 2, 3, 4, 5, 7, 13, 14, 16, 17, 18, 19
`
`Regulations
`
`37 C.F.R. § 1.14 (July 2006) .................................................................................. 5, 8
`
`37 C.F.R. § 1.78(a) (July 2006) ................................................................................. 9
`
`
`
`ii
`
`
`
`
`
`37 C.F.R. § 1.78(a)(2) (July 2006)......................................................................... 8, 9
`
`37 C.F.R. § 1.78(a)(2)(i) (July 2006) ...................................... 3, 5, 6, 7, 8, 14, 17, 20
`
`37 C.F.R. § 1.78(a)(2)(iii) (July 2006) ............................................................ 5, 9, 16
`
`Other Authorities
`
`MPEP § 201.11 ...................................................................................... 6, 7, 9, 12, 13
`
`
`
`iii
`
`
`
`Exhibit Number
`1001
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`LIST OF EXHIBITS
`
`Document
`U.S. Patent No. 7,643,168 (the “’168 patent”)
`Application Data Sheet filed December 28, 2006 (from the
`file history of the ’168 patent)
`Specification filed December 28, 2006 (from the file history
`of the ’168 patent)
`Preliminary Amendment filed December 28, 2006 (from the
`file history of the ’168 patent)
`Filing Receipt mailed February 2, 2007 (from the file history
`of the ’168 patent)
`WO 1999/035818 (the “’818 publication”)
`Notice of Publication mailed May 17, 2007 (from the file
`history of the ’168 patent)
`Patent Application Publication No. US 2007/0109594 (the
`published application corresponding to the ’168 patent)
`U.S. Patent No. 7,365,871 (the “’871 patent”)
`Declaration of Steven Sasson (“Sasson Decl.”)
`Office Action dated October 4, 2007 (from the file history of
`the ’168 patent)
`Revised Patent Owner Preliminary Response, IPR2014-
`00439, Paper 15 (July 30, 2014)
`Patent Owner E-Watch Inc’s Response, IPR2014-00439,
`Paper 24 (Nov. 12, 2014)
`Petition for Inter Partes Review of U.S. Patent No.
`7,643,168 B2, IPR2014-00989, Paper 1 (June 19, 2014)
`
`
`
`iv
`
`
`
`
`
`
`
`
`
`
`
`Shorthand
`’168 patent
`’871 patent
`’073 application
`’470 application
`’509 application
`Decision
`
`Resp.
`
`MPEP
`
`GLOSSARY OF ABBREVIATIONS
`
`
`Description
`U.S. Patent No. 7,643,168
`U.S. Patent No. 7,365,871
`U.S. Patent Application 09/006,073
`U.S. Patent Application 10/336,470
`U.S. Patent Application 11/617,509
`Institution Decision, IPR2015-00414, Paper 13 (July 1,
`2015)
`Patent Owner Response, IPR2015-00414, Paper 19 (Sept.
`22, 2015)
`Manual of Patent Examining Procedure
`
`v
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The ’168 patent does not follow the clearly enunciated legal requirements
`
`designed to inform the public of its priority claim—which required the alleged
`
`claim for benefit to the ’073 application to appear on the face of the ’168 patent.
`
`The consequence of that failure is that Patent Owner’s previously published PCT
`
`application, WO 1999/035818 (Ex. 1006), with its identical specification to the
`
`’168 patent, anticipates each and every element claimed, invalidating the claims of
`
`the ’168 patent.
`
`Patent Owner’s only response was that its defective claims to priority buried
`
`across two file histories and two patents were, in effect, good enough. But the
`
`statues, rules, and the MPEP in effect at the time the ’168 patent was filed and
`
`throughout its prosecution required, without exception, the application data sheet
`
`(“ADS”) or the first sentences of the relevant patent’s specification to explicitly
`
`and accurately identify and describe the entire chain of priority.
`
` The ’168 patent does not contain an explicit and accurate identification of
`
`the entire chain of priority that e-Watch now seeks to claim in either the ADS or in
`
`the first sentences of the specification of the ’168 patent. More specifically, the
`
`’168 patent does not contain a correct and specific reference to the ’073 application
`
`anywhere. Instead, the ’168 patent, which issued from the ’509 application,
`
`incorrectly identifies its relationship to the ’073 application as a “divisional.”
`
`
`
` 1
`
`
`
`
`
`Patent Owner’s attempt to amend the ’509 application specification did nothing to
`
`correct the defective priority claim to the ’073 application and only introduced
`
`more confusion.
`
`Patent Owner argues incorrectly that there is an exception to the statutory
`
`and regulatory “specific reference” requirement. It asserts that a “routine
`
`approach” to determining copendency should apply. But such a test does not exist
`
`in the law. Even so, copendency is insufficient for 35 U.S.C. § 120 (pre-AIA)—a
`
`“specific reference” in the ’509 application to the ’073 application was also
`
`required.
`
`Patent Owner also argues that a person other than an examiner could
`
`decipher various clues to priority scattered across multiple file histories. Pouring
`
`through multiple patents and their file histories in an attempt to reconcile and
`
`unravel the error in the priority claim to the ’073 application on the face of the
`
`’168 patent is simply not a reasonable burden to place on the public and would, in
`
`essence, make them act as an examiner. The Federal Circuit, for similar reasons,
`
`has squarely rejected that type of context-based approach to 35 U.S.C. § 120.
`
`The public deserves to know exactly what priority claim is being made in the
`
`’168 patent without having to sift through and unravel the file history of multiple
`
`patents. The Board correctly found in its institution decision that priority was not
`
`properly claimed to the ’073 application pursuant to the then-applicable law. That
`
`2
`
`
`
`
`
`determination was correct, and for that reason, claims 1–31 of the ’168 patent are
`
`anticipated by WO 1999/035818 (Ex. 1006).
`
`II. ARGUMENT
`A.
`“Specific Reference” Must Have Been Made To Each “Earlier
`Filed Application” In The ADS or Specification
`
`As the Board recognized, to perfect a priority claim, the ’168 patent had to
`
`“contain … a specific reference”1 (1) to the ’073 application (i.e., “the earlier filed
`
`application” under 35 U.S.C. § 120), (2) to the intervening ’470 application, and
`
`(3) must state the priority chain for those applications correctly. Decision at 10-11;
`
`35 U.S.C. § 120; 37 C.F.R. § 1.78(a)(2)(i) (July 2006). The law also required that
`
`those three elements all had to appear either in their entirety in the ADS or in the
`
`first sentences of the ’168 patent’s specification. Yet in this case, neither the ADS
`
`nor the first sentences of the specification contain all of the required elements. The
`
`’168 patent does not have a correct specific reference to the ’073 application in the
`
`ADS or first sentences of the specification. Instead, the only claims to priority
`
`found anywhere in the ’168 patent/’509 application are to the ’470 application in
`
`the ADS and specification (as a continuation) and an incorrect and thus defective
`
`priority claim to the ’073 application in the specification (with the ’168 patent
`
`incorrectly claiming to be a divisional of the ’073 application). This morass of
`
`1 All emphases are added unless otherwise indicated.
`
`3
`
`
`
`
`
`mixed and defective priority claims is insufficient under the statutes, regulations,
`
`and MPEP2 applicable during prosecution of the ’168 patent to perfect a priority
`
`claim beyond the ’470 application to the ’073 application.
`
`1.
`
`The “Specific Reference” Must Identify And Indicate The
`Relationship Between All Of The Prior Applications
`
`Section 120 states that “[n]o 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. The Federal Circuit
`
`has held that “the ‘specific reference’ requirement ‘mandates each [intermediate]
`
`application in the chain of priority to refer to the prior applications’” (plural).
`
`Medtronic CoreValve LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, 1363
`
`(Fed. Cir. 2014) (quoting Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am.,
`
`Inc., 609 F.3d 1345, 1352 (Fed. Cir. 2010)) (bracketed insertion in original). If the
`
`Applicant wanted to claim priority to the filing date of the earlier-filed ’073
`
`application, a specific reference must have been made to the ’073 application and
`
`to the intervening ’470 application with a correct and full chain of priority recited.
`
`2 During prosecution of the ’168 patent, there were three revisions to the MPEP:
`
`MPEP, 8th ed., rev. 5 (Aug. 2006); MPEP, 8th ed., rev. 6 (Sept. 2007); and MPEP
`
`8th ed., rev. 7 (July 2010). The MPEP text quoted throughout this Reply is
`
`identical in all of these revisions.
`
`4
`
`
`
`
`
`Likewise, the governing regulations at the time required applicants to not
`
`only identify “each such prior filed application” but also “indicat[e] the
`
`relationship of the applications” (plural):
`
`[A]ny 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).
`37 C.F.R. § 1.78(a)(2)(i).
`
`The MPEP3 in effect during prosecution was entirely consistent with
`
`the statute and regulations, explicitly dealing with the situation Patent Owner
`
`3 The MPEP is a “guide to patent attorneys and patent examiners on procedural
`
`matters,” and “[a]lthough the MPEP does not have the force of law, it is entitled to
`
`judicial notice ‘so far as it is an official interpretation of statutes or regulations
`
`with which it is not in conflict.’” E.g., Airbus S.A.S. v. Firepass Corp., 793 F.3d
`
`1376, 1380 (Fed. Cir. 2015) (internal citations omitted). Here, the MPEP is
`
`completely consistent with 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a)(2)(i), (iii).
`
`5
`
`
`
`
`
`faced: “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.” MPEP 201.11 § III.C. (citing Sticker Indus. Supply Corp. v.
`
`Blaw-Knox Co., 405 F.2d 90 (7th Cir. 1968) and Hovlid v. Asari, 305 F.2d
`
`747 (9th Cir. 1962)). That specific reference “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.” Id.
`
`The specific reference to the ’073 application misidentifying the ’168 patent
`
`as a “divisional” does not comply with this requirement.
`
`Patent Owner argues, contrary to the governing law at the time, that
`
`under § 1.78(a)(2)(i), nonprovisional applications in the priority chain that
`
`are not “copending” at the time need not be identified at all. Resp. 4-5. That
`
`is incorrect. First, Patent Owner does not cite any legal support for its novel
`
`interpretation of § 1.78(a)(2)(i). And, that reading of the regulation facially
`
`contradicts the statute’s requirement that a specific reference to the earlier
`
`filed application—such as the ’073 application—is required to obtain the
`
`benefit of that same earlier application: “[n]o application shall be entitled to
`
`the benefit of an earlier filed application … unless an amendment
`
`6
`
`
`
`
`
`containing the specific reference to the earlier filed application is
`
`submitted.” 35 U.S.C. § 120. Consistent with the statute, the MPEP
`
`required that the specific reference must, “besides making reference to the
`
`intermediate application, also make reference to the first application” and
`
`“indicate the relationship (i.e., continuation, divisional, or continuation-in-
`
`part) between each nonprovisional application.” MPEP 201.11 § III.C.
`
`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.” The Federal Circuit, directly interpreting the pre-AIA
`
`version of 35 U.S.C. § 120, agreed: “[e]ven if a new application is not co-
`
`pending with the first application, § 120 states that the application can meet
`
`the co-pendency requirement if it is ‘filed before the patenting or
`
`abandonment of or termination of proceedings on ... an application similarly
`
`entitled to the benefit of the filing date of the first application.’”
`
`Encyclopaedia Britannica, 609 F.3d at 1350 (ellipsis in original). The
`
`MPEP too recognizes this binding precedent from the Federal Circuit and
`
`thus states that the specific reference must “establish copendency throughout
`
`the entire chain of prior applications.” MPEP 201.11 §§ III.A, III.C.
`
`Finally, the “cross references” sentence in 37 C.F.R. § 1.78(a)(2)(i)
`
`7
`
`
`
`
`
`refers to cross-references to “other related applications” under 37 C.F.R.
`
`§ 1.14 (“Patent applications preserved in confidence”) is also not a limitation
`
`on which applications require a “specific reference.” Section 1.14 applies to
`
`other applications that are not in the direct, priority chain of copending
`
`applications necessary for claiming priority. For example, section 1.14 lists
`
`a number of categories of such “other related applications,” 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). Section 1.78(a)(2)(i) thus allows for optional cross-
`
`references to these “other” applications when they are not in the direct
`
`priority chain of applications.
`
`2.
`
`The “Specific Reference” Must Be Made In The ADS Or
`First Sentences Of The Specification
`
`Patent Owner’s argument that 37 C.F.R. § 1.78(a)(2) merely requires
`
`that “the application provide specific reference” (Resp. 9)—even if outside
`
`the ADS or first sentences of the specification—is not supported by the
`
`statute, regulations, or any case law. Section 1.78(a)(2) explicitly prescribes
`
`that “the [specific] reference required by this paragraph must be included in
`
`8
`
`
`
`
`
`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). The MPEP has the same requirements.
`
`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.”).
`
`When an applicant relies on a benefit claim from outside the ADS or
`
`specification (e.g., in the oath or declaration as Patent Owner argues)—as
`
`Patent Owner argues here (Resp. 7–11)—the Board may or may not
`
`recognize that benefit claim on the filing receipt. If that purported claim is
`
`not recognized by the Office as shown by its absence on the filing receipt—
`
`which is essentially what occurred here (Ex. 1005)—a petition under 37
`
`C.F.R. § 1.78(a) is necessary to correct the benefit claim. MPEP 201.11
`
`§ III.D. No such petition was filed by the Applicant.
`
`But even if the PTO recognized the claimed benefit in a filing receipt
`
`or in the PTO’s database—again, which did not occur here—“the benefit
`
`claim is not a proper benefit claim … 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. In other words, the specific
`
`9
`
`
`
`
`
`reference must ultimately appear in an ADS or the first sentences of the
`
`specification to perfect that claim of priority.
`
`B. Neither The ADS Nor Specification Of The ’509 Application
`Contains A “Specific Reference” To The ’073 Application
`
`In the end, there is one and only one question that matters: does the ADS or
`
`specification contain the necessary “specific reference” to both the ’073
`
`application and ’470 application, properly indicating the relationship of each of the
`
`applications in the priority chain. The ’509 application and resulting ’168 patent
`
`do not. The face of the ’168 patent contains an indisputably defective and
`
`incorrect claim to priority: “This application is a divisional application of … Ser.
`
`No. 09/006,073.” ’168 patent at 1:6-12. The ’168 patent is not a divisional of the
`
`’073 application—there is no dispute about that. And the face of the ’168 patent
`
`fails to identify the ’470 application’s relationship to the ’073 application. Thus,
`
`the ’168 patent fails to meet two of the three requirements for a claim of priority
`
`through the ’470 application to the ’073 application.
`
`In the ADS, the Applicant was invited to provide these missing
`
`requirements, which specifically prompted the Applicant to add additional
`
`domestic priority data. Ex. 1002 at 2 (“Additional Domestic Priority Data may be
`
`generated within this form by selecting the Add button.”). Instead, the Applicant
`
`chose to only reiterate in the ADS that the ’509 application is a continuation of the
`
`’470 application and did nothing to address the ’073 application. Id.; ’168 patent
`
`10
`
`
`
`
`
`at [63]. But, again, the ADS failed to meet two of the three requirements for a
`
`claim of priority through the ’470 application to the ’073 application.
`
`Moreover, as the Board recognized, the Preliminary Amendment to the
`
`specification sought by the Applicant only injected more confusion. See Decision
`
`at 12; Ex. 1004 at 1. Had the Preliminary Amendment been entered, the resulting
`
`sentences would read (insertion underlined):
`
`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.
`
`See ’168 patent at 1:6-12; Ex. 1004 at 1. Patent Owner does not substantively
`
`dispute that the resulting priority claim would be ambiguous. Resp. 16-17.
`
`Instead, Patent Owner argues that a person other than the examiner could reconcile
`
`the relationship between the ’509 application and both the ’470 application and the
`
`’073 application after reviewing and comparing multiple patents and their
`
`respective file histories (e.g., comparing declarations, unentered amendments, and
`
`11
`
`
`
`
`
`priority claims in intermediate patents). E.g., Resp. 7-10, 13, 15-18. But this
`
`argument glosses over a key point: the only reference to the ’073 application in the
`
`’509 application was wrong in the application and the preliminary amendment.
`
`There is no ambiguity to reconcile because the priority claim is facially incorrect.
`
`Referring to “this application” as both a divisional of the ’073 application
`
`(incorrect) and a continuation of the ’470 application (correct) is, as the Board
`
`already recognized, irreconcilable: “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.”
`
`Decision at 12. Yet Patent Owner asks the Board, contrary to Federal Circuit
`
`precedent, to read the phrase “this application” as having two meanings: “[t]his
`
`application” in the first sentence refers to the ’509 application, but “[t]his
`
`application” in the second sentence refers to the ’470 application. Resp. 16-17.
`
`The Federal Circuit has squarely held otherwise, finding the use of “this
`
`application” in a specification refers to “the present application.” See Medtronic,
`
`741 F.3d at 1365-66 (rejecting attempt to define “this application” to have meaning
`
`other than “the present application”). Any other reading is just “an attempt at
`
`linguistic gymnastics that makes little sense relative to the straightforward, plain
`
`meaning of the phrase.” Id. at 1365 (noting that MPEP § 201.11, consistent with
`
`Federal Circuit precedent, uses the phrase “this application” to refer to the present
`
`12
`
`
`
`
`
`application).
`
`Patent Owner attempts to distinguish the holding in Medtronic, arguing that
`
`its holding was dependent upon the “context of surrounding language in the patent
`
`itself,” which “did not permit someone to easily determine which application ‘this
`
`application’ referred to.” Resp. 18 n.5. But that is not an accurate characterization
`
`of the case. Medtronic clearly held—independent of the patent at issue or the facts
`
`of the case—that “this application” means “the present application” based on a
`
`litany of Federal Circuit precedent and the MPEP. See Medtronic, 741 F.3d at
`
`1365 (citing MPEP § 201.11; Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344,
`
`1360–61 (Fed. Cir. 2012) (Newman, J., concurring in part and dissenting in part);
`
`Broadcast Innovation, L.L.C. v. Charter Commc’ns, Inc., 420 F.3d 1364, 1366
`
`(Fed. Cir. 2005); and Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1383
`
`(Fed. Cir. 2007)). The Federal Circuit rejected a “reasonable person,” context-
`
`based approach to determining the sufficiency of a priority claim—akin to the one
`
`proposed by Patent Owner here. Id. at 1365-66 (“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.”). The Federal Circuit only used the context
`
`of the case to illustrate how unworkable a contextual, reasonable-person test is and
`
`how it impermissibly shifts the burden of establishing priority from the applicant to
`
`the public. Id.
`
`13
`
`
`
`
`
`But even if “this application” could be read to have two meanings, which it
`
`cannot, 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.
`
`Patent Owner’s additional argument that the copycat Declaration filed in the
`
`’509 application somehow cures the defective priority claim to the ’073 application
`
`(Resp. 8-11) by providing the “missing link” between the ’470 and ’073
`
`applications is also incorrect. The ’509 declaration, like the errant statement in the
`
`specification, states that “[t]his is a divisional application,” claiming benefit under
`
`35 U.S.C. § 120 to the ’073 application. Ex. 2003 at 1. This statement is just as
`
`inaccurate vis-à-vis the ’509 application as the incorrect statement in the
`
`specification.
`
`Because neither the specification (amended or not) nor the ADS “indicat[es]
`
`the relationship of the [’509 and ’073] applications,” priority cannot be claimed
`
`back to the ’073 application. See 37 C.F.R. § 1.78(a)(2)(i).
`
`14
`
`
`
`
`
`C. A Reasonable Person Of Ordinary Skill In The Art Would Look
`For Priority On Face Of The Patent
`
`As the Board recognized, the Federal Circuit distinguishes between what an
`
`examiner would understand in the course of prosecution of a pending application
`
`and what the public would understand. Decision at 12. While the Board used
`
`slightly different language, the Federal Circuit has stated that, as to an issued
`
`patent, the proper inquiry for an issued patent is not a “reasonable examiner”
`
`standard, but a “reasonable person of ordinary skill in the art standard.”4 See
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`Hollmer v. Harari, 681 F.3d 1351, 1357 (Fed. Cir. 2012) (“Harari II”).
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`Needless to say, what a reasonable examiner would understand is more
`
`nuanced and procedurally technical than what a reasonable person of ordinary skill
`
`in the art would understand in trying to determine priority. While a reasonable
`
`examiner would likely review the file history and related applications to discern if
`
`
`4 The outcome under the Board’s similar articulation—“what would a person other
`
`than an examiner understand?”—is the same. The standard is not, however, what
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`Patent Owner alleges: any “person other than an Examiner, who is concerned with
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`matters dependent upon priority” (such as a petitioner in another IPR). Resp. 14.
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`A petitioner or any other person hyperfocused on litigating priority issues is not a
`
`reasonable person of ordinary skill in the art.
`
`15
`
`
`
`
`
`copendency existed and if the required specific references were accurate and
`
`adequate, a reasonable person of ordinary skill in the art should not be presumed to
`
`look much farther than where the governing statute, rules, and MPEP state the
`
`priority claim should ultimately be found: the face of the patent (via the ADS) and
`
`the first sentences of the specification. 35 U.S.C. § 120; 37 C.F.R.
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`§ 1.78(a)(2)(iii); cf. Sampson v. Ampex Corp., 463 F.2d 1042, 1045 (2d Cir. 1972)
`
`(“The information required to be disclosed [by Section 120] is information that
`
`would enable a person searching the records of the [PTO] to determine with a
`
`minimum of effort the exact filing date upon which a patent applicant is relying to
`
`support the validity of his application or the validity of a patent issued on the basis
`
`of one of a series of applications.”). For example, the Federal Circuit in Harari II
`
`evaluated, for the purposes of determining priority under the reasonable person of
`
`ordinary skill in the art standard, the sufficiency of the incorporation language
`
`from the patent “on its face.” Harari II, 681 F.3d at 1358. In short, Congress and
`
`the PTO have already determined the necessary requirements for where to make
`
`the “specific reference” to determine priority: on the face of the patent via the
`
`ADS or the amended first sentences of the specification.
`
`Moreover, the Federal Circuit flatly rejected Patent Owner’s view that a
`
`reasonable person of ordinary skill in the art would look beyond where the statute
`
`and regulations require the priority claim to be. Medtronic argued that that “the
`
`16
`
`
`
`
`
`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” regardless of whether it met the statutory requirements. Medtronic,
`
`741 F.3d at 1365. The Federal Circuit rejected that approach as a matter of law:
`
`“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),’
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`37 C.F.R. § 1.78(a)(2)(i).” Id. at 1366.
`
`Patent Owner argues that the ambiguity could be resolved by deciphering
`
`clues to priority scattered throughout declarations and other file histories. But
`
`determining the priority claim in that circumstance requires that “the reasonable
`
`person had a sufficient understanding of prosecution procedure,” which the Federal
`
`Circuit (and Congress and the PTO) have rejected. Id. The Applicant, not the
`
`public, 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.” Id.
`
`Patent Owner’s view of how a reasonable person of ordinary skill in the art
`
`would determine priority of the ’168 patent improperly “places the burden of
`
`17
`
`
`
`
`
`deciphering a priority claim upon the reader or the public.” Id. This violates the
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`long-held precedent that determining priority should require “a minimum of
`
`effort.” Sampson, 463 F.2d at 1045. Thus, section 12
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