Paper No. __
`Filed: January 23, 2015
`
`
`
`Filed on behalf of: Samsung Electronics Co., Ltd. and
`
`
`
`Samsung Electronics America, Inc.
`
`By:
`Steven L. Park (stevenpark@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Elizabeth L. Brann (elizabethbrann@paulhastings.com)
`Paul Hastings LLP
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`____________________
`
`Patent No. 7,643,168
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,643,168
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104 .......... 2
`
`III. OVERVIEW OF THE ’168 PATENT ........................................................... 2
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104 .......................................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`Claims for Which Inter Partes Review Is Requested ........................... 3
`
`The Prior Art and Specific Ground for Unpatentability ...................... 3
`
`Claim Construction............................................................................... 3
`
`D. How the Construed Claims Are Unpatentable ..................................... 6
`
`E.
`
`Supporting Evidence ............................................................................ 6
`
`V. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY ................................................................................... 6
`
`A.
`
`The ’168 Patent Is Not Entitled to the Priority Date of the ’073
`Application ........................................................................................... 7
`
`1.
`
`2.
`
`The ’168 Patent Did Not Properly Claim Priority to the
`’073 Application ........................................................................ 7
`
`The ’073 Application Was Intentionally Abandoned
`Before the Filing Date of the ’871 Parent Patent ..................... 10
`
`B.
`
`The ’818 Publication Anticipates the ’168 Patent Claims ................. 18
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Independent Claim 1 and Its Dependent Claims ..................... 19
`
`Independent Claim 22 and Its Dependent Claims ................... 38
`
`Independent Claim 24 and Its Dependent Claims ................... 42
`
`Independent Claim 26 .............................................................. 46
`
`Independent Claim 27 and Its Dependent Claims ................... 48
`
`i
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`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`6.
`
`Independent Claim 29 and Its Dependent Claims ................... 53
`
`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 .................. 57
`
`VII. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15 ...................................... 60
`
`VIII. CONCLUSION ............................................................................................. 60
`
`
`
`ii
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`Petition for Inter Partes Review – Patent No. 7,643,168
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Application of G,
`11 USPQ2d 1378 (Comm’r, 1989) ..................................................................... 22
`
`Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc.,
`609 F.3d 1345 (Fed. Cir. 2010) .......................................................................... 14
`
`Lawman Armor Corp. v. Simon,
`2005 U.S. Dist. Lexis 10843 (E.D. Mich., March 29, 2005) .............................. 22
`
`In re Maldague,
`10 USPQ2d 1477 (Comm’r 1988) ...................................................................... 22
`
`IPR2014-00439, Paper No. 16 (Aug. 4, 2014) ......................................................... 7
`
`Medtronic Corevalue, LLC v. Edwards Lifesciences Corp.,
`741 F.3d 1359 (Fed. Cir. 2014) .................................................................... 14, 17
`
`Statutes
`
`35 U.S.C. § 102(b) ............................................................................................... 8, 13
`
`35 U.S.C. § 120 .................................................................................................. 14, 15
`
`35 U.S.C. § 133 ........................................................................................................ 20
`
`35 U.S.C. § 154(a)(2) ............................................................................................... 14
`
`Other Authorities
`
`37 C.F.R. § 1.68 ....................................................................................................... 13
`
`37 C.F.R. § 1.137(b). ........................................................................................passim
`
`37 C.F.R. § 1.137(c) ................................................................................................. 21
`
`37 C.F.R. § 42.8(a)(1) .............................................................................................. 73
`
`37 C.F.R. § 42.15(a) ................................................................................................. 77
`
`iii
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`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`37 C.F.R. § 42.104(a) ................................................................................................. 5
`
`37 C.F.R.§ 42.104(b) ................................................................................................. 8
`
`37 C.F.R. § 42.300(b) ................................................................................................ 8
`
`
`
`
`
`iv
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`

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`Petition for Inter Partes Review – Patent No. 7,643,168
`
`LIST OF EXHIBITS1
`U.S. Patent No. 7,643,168, as filed in IPR2015-00414
`
`Application Data Sheet dated December 27, 2006, in U.S. Patent
`Application No. 11/617,509, as filed in IPR2015-00414
`
`Specification filed in U.S. Patent Application No. 11/617,509, as
`filed in IPR2015-00414
`
`Preliminary Amendment dated December 27, 2006, in U.S. Patent
`Application No. 11/617,509, as filed in IPR2015-00414
`
`Filing Receipt dated February 2, 2007, in U.S. Patent Application
`No. 11/617,509, as filed in IPR2015-00414
`
`WO 1999/035818, as filed in IPR2015-00414
`
`Notice of Publication dated May 17, 2007, in U.S. Patent Application
`No. 11/617,509, as filed in IPR2015-00414
`
`Patent Application Publication No. US 2007/0109594, as filed in
`IPR2015-00414
`
`U.S. Patent No. 7,365,871, as filed in IPR2015-00414
`
`Declaration of Steven J. Sasson, as filed in IPR2015-00414
`
`Office Action dated October 4, 2007, in U.S. Patent Application No.
`11/617,509, as filed in IPR2015-00414
`
`File History for U.S. Patent Application No. 09/006,073
`
`File History for U.S. Patent Application No. 09/790,381
`
`Apple Inc. v. e-Watch, Inc., IPR2015-00414, Petition, Paper No. 1
`(Dec. 11, 2014)
`
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1 Citations to non-patent publications are to the page numbers of the publication
`
`and citations to patent publications are to column:line or page:line numbers.
`
`v
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`Petition for Inter Partes Review – Patent No. 7,643,168
`
`1015
`
`1016
`
`
`
`
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00989, Institution Decision,
`Paper No. 6 (Dec. 9, 2014)
`
`Excerpts from Microsoft Computer Dictionary (2nd ed. 2002)
`
`vi
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`

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`Petition for Inter Partes Review – Patent No. 7,643,168
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) request inter partes review of claims 1-31 of U.S.
`
`Patent No. 7,643,168 (“the ’168 patent”) (Ex. 1001), which is assigned to e-Watch,
`
`Inc. (“e-Watch” or “Patent Owner”). On December 11, 2014, Apple Inc. (“Apple”)
`
`filed an inter partes review challenging claims 1-31 of the ’168 patent (IPR2015-
`
`00414) (“Apple IPR”). See Ex. 1014. This Petition proposes the same ground of
`
`rejection proposed in the Apple IPR, and relies on the same analysis, evidence, and
`
`expert testimony, with one additional argument regarding the appropriate priority
`
`date of the ’168 patent. Therefore, Petitioner submits concurrently herewith a
`
`request for joinder with the Apple IPR. If joinder is not granted, Petitioner
`
`respectfully requests that a proceeding be instituted based on this Petition alone.
`
`This Petition shows, by a preponderance of the evidence, that there is a
`
`reasonable likelihood that Petitioner will prevail on claims 1-31 of the ’168 patent
`
`based on prior art that the U.S. Patent and Trademark Office (“PTO”) did not have
`
`before it or did not fully consider during prosecution, and that anticipates claims 1-
`
`31 of the ’168 patent. In particular, during prosecution, the application leading to
`
`the ’168 patent was examined based on a priority date that was incorrect due to a
`
`defective claim for priority and a break in the chain of priority. Therefore, the PTO
`
`did not consider a PCT application that was published more than a year before the
`
`1
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`true priority date of the ’168 patent. The PCT publication shares a substantially
`
`identical specification as the ’168 patent, and anticipates claims 1-31 of the ’168
`
`patent. Accordingly, claims 1-31 of the ’168 patent should be found unpatentable
`
`and canceled.
`
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104
`Petitioner certifies that the ’168 patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the ground identified herein.
`
`III. OVERVIEW OF THE ’168 PATENT
`The ’168 patent was filed on December 28, 2006, as a continuation of
`
`application No. 10/336,470, filed on January 3, 2003, now U.S. Patent No.
`
`7,365,871 (“the ’871 patent”). Ex. 1001. The specification filed with the ’168
`
`application was an identical copy of the ’871 patent specification. The ’168 patent
`
`is generally directed to “an image capture, compression and transmission system
`
`that is specifically designed to permit reliable visual image transmission over land
`
`line or wireless communications using commercially available facsimile
`
`transmission techniques.” Ex. 1001 at 2:24-31.2
`
`
`2 In this Petition, all emphasis is added unless otherwise indicated.
`
`2
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104
`A. Claims for Which Inter Partes Review Is Requested
`Inter Partes review is requested for claims 1-31 of the ’168 patent.
`B.
`The specific statutory ground on which the challenge to the claims is based
`
`The Prior Art and Specific Ground for Unpatentability
`
`and the reference relied upon for the ground is as follows: Claims 1-31 are
`
`anticipated under 35 U.S.C. § 102(b) by WO 1999/035818 (Ex. 1006) (“the ’818
`
`publication”).
`
`C. Claim Construction
`A claim subject to inter partes review receives the broadest reasonable
`
`interpretation (“BRI”) in light of the specification of the patent in which it appears.
`
`37 C.F.R. § 42.300(b). The ’168 patent has not expired. Thus, for purposes of this
`
`proceeding, the claims of the ’168 patent should be given their BRI. Any term not
`
`construed herein should be interpreted in accordance with its plain and ordinary
`
`meaning under the BRI. Given the different claim construction standards used by
`
`the PTO and district courts, Petitioner expressly reserves the right to argue a
`
`different construction for any term during litigation.3
`
`Viewfinder: This term appears in claims 10-13, 23, 25, 28, and 31. In the
`
`Apple IPR, based on the claim language and specification, Apple proposes that the
`
`
`3 Petitioner reserves all other arguments, such as § 112 arguments, for litigation.
`
`3
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`BRI of this term is “a device for depicting a view.” Ex. 1014 at 7-8. For purposes
`
`of this proceeding, Petitioner proposes and uses Apple’s construction of this term.
`
`Media: Claims 1, 22, 24, 26, and 27 recite “media being suitable to embody
`
`at least one compression algorithm,” claims 16 and 18 recite “at least one
`
`transmission protocol algorithm embodied in suitable media,” and claim 29 recites
`
`“at least one compression algorithm embodied at least in part in suitable
`
`programmed media.” Apple did not propose an interpretation of these phrases in
`
`the Apple IPR. In IPR2014-00989, however, the Board found that the BRI of these
`
`phrases is “a storage device for storing software to perform, among other
`
`functions, image compression and storage of transmission protocols.” Ex. 1015 at
`
`6-7.
`
`As the Board explained in IPR2014-00989, the specification of the ’168
`
`Patent “describes how an image captured by camera 10 is stored on any one of a
`
`variety of memory devices for storage,” such as “writeable optical media.” Id. at 7
`
`(quoting Ex. 1001, 7:24-31). The specification also uses “‘circuit’ or ‘circuitry’
`
`more than 30 times to refer to various components that perform the disclosed
`
`functionalities.’” Ex. 1015 at 7. Otherwise, the specification does not include the
`
`word “media” in the context of the claimed invention. Nor does it describe or
`
`define the word “algorithm.” Id. at 7.
`
`As noted by the Board, dictionaries available at the time of the alleged
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`4
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`invention defined “‘[m]edia’ . . . as ‘[T]he physical material, such as paper, disk,
`
`and tape, used for storing computer-based information’” and “‘algorithm’ as ‘[A]
`
`finite sequence of steps for solving a logical or mathematical problem or
`
`performing a task.’” Id. at 7 (quoting Ex. 1016 at 28, 420). The Board also noted
`
`that “[i]n the context of software, algorithms are used to disclose adequate defining
`
`structure to render the bounds of the claim understandable to one of ordinary skill
`
`in the art.” Ex. 1015 at 7 (citing Med. Instrumentation & Diagnostics Corp. v.
`
`Elekta AB, 344 F.3d 1205, 1214 (Fed.Cir.2003)).
`
`For purposes of this proceeding, Petitioner proposes that the BRI of the
`
`“media” phrases is “a storage device for storing software to perform, among other
`
`functions, image compression and storage of transmission protocols,” as adopted
`
`by the Board in IPR2014-00989. As shown below, the prior art analysis provided
`
`by Apple meets the Board’s interpretation.
`
`Commonly moving: Claims 1, 22, and 24 recite “movement by the user of
`
`the portable housing commonly moving the image collection device” and
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`“movement by the user of the portable housing commonly moving the display.”
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`Apple did not propose an interpretation of this term in the Apple IPR. In IPR2014-
`
`00989, however, the Board found that the BRI of this term is “that the movement
`
`of the portable housing causes movement of the image collection device or
`
`display.” Ex. 1015 at 8. As noted by the Board, the specification of “the ’168
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`5
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`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
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`patent does not use the phrase ‘commonly moving’” and this interpretation is
`
`consistent with “the use of ‘commonly moving’ in the claims of the patent.” Id. For
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`purposes of this proceeding, Petitioner proposes the Board’s interpretation of this
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`term. As shown below, the prior art analysis provided by Apple meets the Board’s
`
`interpretation.
`
`D. How the Construed Claims Are Unpatentable
`A detailed explanation of how claims 1-31 are unpatentable, including the
`
`identification of how each claim element is found in the prior art, is set forth below
`
`in Section V.
`
`Supporting Evidence
`
`E.
`A list of exhibits identifying supporting evidence is included at the
`
`beginning of this Petition. For example, Exhibit 1010 is a Declaration of Steven
`
`Sasson under 37 C.F.R. § 1.68 supporting this Petition. The relevance of the
`
`evidence, including an identification of the specific portions of the evidence
`
`supporting the challenge, is included in Section V.
`
`V. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
`
`
`
`Claims 1-31 are anticipated under 35 U.S.C. § 102(b) by the ’818
`
`publication that published on July 15, 1999 -- more than one year prior to the
`
`earliest possible priority date of the ’168 patent.
`
`6
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`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`A. The ’168 Patent Is Not Entitled to the Priority Date of the ’073
`Application
`
`Petitioner respectfully submits that the Board has the authority to evaluate
`
`evidence and render decisions on factual and legal issues involving priority claims
`
`and the status of a reference as prior art in instituting the instant Petition. See, e.g.,
`
`IPR2014-00439, Paper No. 16 (Aug. 4, 2014), pp. 5-8. Here the ’168 patent is not
`
`entitled to a priority date any earlier than January 3, 2003, the filing date of the
`
`’871 parent patent.
`
`1.
`
`The ’168 Patent Did Not Properly Claim Priority to the ’073
`Application
`
`The earliest possible priority date for the ’168 patent is January 3, 2003, the
`
`date the Applicant chose. A priority claim under 35 U.S.C. § 120 to the earliest of
`
`a chain of patent applications must make specific reference to “each application in
`
`the chain of priority to refer to the prior applications.” Encyclopaedia Britannica,
`
`Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1352 (Fed. Cir. 2010). Such a
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`“specific reference” to an application in a priority claim requires precise details, as
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`“[t]he patentee is the person best suited to understand the genealogy and
`
`relationship of her applications” and “a requirement for her to clearly disclose this
`
`information should present no hardship.” Medtronic Corevalue, LLC v. Edwards
`
`Lifesciences Corp., 741 F.3d 1359, 1366 (Fed. Cir. 2014) (citing 37 C.F.R.
`
`§ 1.78(a)(2)(i)). In addition, the patent statute defines the term of the patent based
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`7
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`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
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`on the filing date of the earliest U.S. application for which benefit under § 120 is
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`claimed. See 35 U.S.C. § 154(a)(2). By statute, the start of the potential term of a
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`patent -- and its end date -- based on a chain of applications linked under § 120, is
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`a choice made by the patentee. In effect, by strategically choosing the effective
`
`filing date, the patentee can enlarge or shorten its term of protection.
`
`Here, the evidence shows that the ’168 patent claims priority to the ’871
`
`patent, but does not claim priority to U.S. Patent Application No. 09/006,073 (“the
`
`’073 application”). For example, during prosecution of the ’168 patent, the
`
`Applicant filed an Application Data Sheet (“ADS”) stating that the application was
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`a continuation of U.S. Patent Application No. 10/366,470 (“the ’470 application”),
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`filed January 3, 2003, which matured into the ’871 Patent. Ex. 1002. This priority
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`claim appears on the front page of the ’168 patent. Ex. 1001. The Applicant also
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`filed a preliminary amendment, dated December 27, 2006, stating “This
`
`application is a continuation of co-pending Patent Application Serial No.
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`10/336,470 filed on January 3, 2003 . . . .” Ex. 1004. The PTO acknowledged the
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`Applicant’s priority claim to the ’871 patent in a filing receipt mailed February 2,
`
`2007, stating “This application is a CON of 10/336,470 01/02/2003.” Ex. 1005.
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`The filing receipt does not refer to the ’073 application, which the Applicant took
`
`no steps to challenge. Furthermore, the publication of the application leading to the
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`’168 patent (Pub. No. US 2007/0109594) referred to the ’470 application in the
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`8
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`domestic priority information but not the ’073 application, which the Applicant
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`again took no steps to challenge. Ex. 1007; Ex. 1008.
`
`The evidence discussed above is not contradicted by the specification of the
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`’168 patent, which states, “This application is a divisional application of and
`
`claims priority from a non-provisional United States Application . . . Ser. No.
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`09/006,073, having a filing date of January 12, 1998 . . . .” Ex. 1001 at 1:6-12. This
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`statement is an exact copy of the priority claim found in the ’871 patent (compare
`
`id. with Ex. 1009 at 1:6-12), and cannot form a basis for a priority claim back to
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`January 12, 1998, for the simple reason that it is incorrect on its face. The phrase
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`“This application” in this specific text of the ’168 patent must be construed to refer
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`to the application from which the ’168 patent arose, that is, Patent Application No.
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`11/617,509 (“the ’509 Application”) filed on December 28, 2006. See Medtronic,
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`741 F.3d at 1366 (rejecting attempt to define “this application” to have meaning
`
`other than “the present application”). The ’509 application, however, is a
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`continuation of the ’470 application, as noted on the face of the ’168 patent, but is
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`not, and could not be, a divisional of the ’073 application, because the ’073
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`application was not pending at the time the ’509 application was filed. The text
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`referencing the ’073 application mis-identifies the relationship between the ’509
`
`and ’073 applications. Because of this mis-identification, that text cannot be a valid
`
`basis for extending the priority claim back to the ’073 filing date of January 12,
`
`9
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`1998. Accordingly, the earliest possible priority date for the ’168 patent is the ’470
`
`application filing date of January 3, 2003 – the date the Applicant chose.
`
`2.
`
`The ’073 Application Was Intentionally Abandoned Before
`the Filing Date of the ’871 Parent Patent
`
`Even ignoring the improper priority claim argument, there is an additional
`
`reason why the ’168 patent is entitled to a priority date of no earlier than January 3,
`
`2003, the filing date of the ’871 parent patent. Specifically, the ’168 patent would
`
`only be entitled to the priority date of the ’073 application if the ’871 patent, the
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`parent of the ’169 patent, is entitled to the priority date of the ’073 application,
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`which it is not. The earliest possible priority date for the ’871 patent is its filing
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`date of January 3, 2003, because the claim for priority in the ’470 application
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`(which matured into the ’871 patent), back to the filing date of the ’073 application
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`(January 12, 1998), is defective. The basis for the priority claim in the ’470
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`application is co-pendency with the ’073 application. However, because the ’073
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`application was purposefully abandoned on March 1, 2001 -- twenty-two months
`
`prior to the January 3, 2003 filing date for the ’470 application -- the ’073
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`application should not and could not have been revived as “unintentionally”
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`abandoned to provide co-pendency with the ’470 application. Since there was no
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`proper basis for co-pendency between the ’073 and ’470 applications, the ’470
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`application is not entitled to the benefit of the January 12, 1998 priority date of the
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`10
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`’073 application. The legally correct priority date for the ’470 application, and
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`therefore the ’168 patent, is the January 3, 2003 filing date of the ’470 application.
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`a)
`The prosecution history of the ’073 application begins with its initial filing
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`Prosecution History of the ’073 Application
`
`on January 12, 1998. The initial application contained 266 claims. Ex. 1012 at 5.
`
`On December 7, 1999, the PTO mailed an office action requiring a restriction to
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`one of nine groups of claims. Id. at 299-302. The Applicant elected Group I
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`(claims 1-28, 181, and 190). Id. at 304. Those claims were rejected. Id. at 307-317.
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`After an amendment in which claims 5-8, 181, and 190 were canceled (id. at 524-
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`527), all of the then pending claims were subject to a final office action mailed
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`August 29, 2000. Id. at 529-530.
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`From August 29, 2000, the six month statutory period for response to the
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`final office action would have ended on February 28, 2001. See 35 U.S.C. § 133.
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`On February 21, 2001, the Applicant filed a three month extension of time
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`(“EOT”). Ex. 1012 at 593. That EOT was not accompanied by any amendment or
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`other substantive response. On April 10, 2001, the PTO mailed a notice of
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`abandonment (“NOA”) of the ’073 application. Id. at 595. The NOA recited the
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`fact that the Applicant failed “to timely file a proper reply to the Office letter
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`mailed on 29 August 2000.” Id.
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`11
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`On the same day the EOT in the ’073 application was filed (Feb. 21, 2001),
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`U.S. Patent Application No. 09/790,381 (“the ’381 application”) was filed at the
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`PTO, as an alleged divisional of the ’073 application. Ex. 1013 at 6-37. This
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`application included 42 claims, which were an exact copy of the unelected Group
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`III claims of the ’073 application. Id. The ’381 application, however, was not
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`complete as filed. Id. at 64. On March 26, 2002, the Applicant provided the
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`missing parts of the incomplete application. Id. at 66-110. Thereafter, the PTO
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`recorded the filing date of the ’381 application as April 11, 2002. See, e.g., id. at
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`111. Because the ’381 application received a filing date of April 11, 2002, it was
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`not co-pending with the ’073 application, meaning the claim for priority in the
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`’381 application back to the ’073 application filing date of January 12, 1998,
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`became ineffective. The Applicant subsequently permitted the ’381 application to
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`go abandoned. Id. at 281.
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`On January 3, 2003, after the PTO determined that the ’381 application had
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`a filing date of April 11, 2002, and was not co-pending with the ’073 application,
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`Applicant filed a petition to revive the ’073 application based on an erroneous
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`claim of unintentional abandonment under 37 C.F.R. § 1.137(b). Ex. 1012 at 598-
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`599.4 The petition contained the form statement that “The entire delay in filing the
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`4 This petition was accompanied by a continuing application as required by 37
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`C.F.R. § 1.137(c) – the ’470 application.
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`required reply from the due date for the required reply until the filing of the
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`grantable petition under 37 C.F.R. § 1.137(b) was unintentional.” Id. at 599. This
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`statement was signed by Richard Ruble (Reg. No. 45,720). Id.
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`The PTO granted the petition, but explained: “It is not apparent whether the
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`person signing the statement of unintentional delay was in a position to have
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`firsthand or direct knowledge of the facts and circumstances of the delay at issue.”
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`Id. at 603. The PTO assumed that both a proper inquiry had been made and that
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`the proper standard had been met. See MPEP 711.03(c)(II)(C). The record
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`evidence shows that both assumptions were incorrect.
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`b)
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`The Public Record Demonstrates Deliberate
`Abandonment of the ’073 Application
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`The law is clear that “the failure of a patent applicant, acting through his or
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`her representative, to file a required response to a patent office action is a
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`deliberate decision to allow an application to become abandoned, and is not
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`subject to revival under 37 C.F.R. § 1.137(b).” Lawman Armor Corp. v. Simon,
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`2005 U.S. Dist. Lexis 10843, *15 (E.D. Mich., March 29, 2005). A “change in
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`circumstances that occurred subsequent to the abandonment of an application does
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`not render ‘unintentional’ the delay resulting from a previous deliberate decision to
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`permit an application to be abandoned. These matters simply confuse the question
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`of whether there was a deliberate decision not to continue the prosecution of an
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`application with why there was a deliberate decision not to continue the
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`13
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`prosecution of an application.” MPEP 711.03(c)(II)(C)(1). “An intentional act is
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`not rendered unintentional when an applicant reviewing the same facts changes his
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`mind as to the appropriate course of action to pursue.” In re Maldague, 10
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`USPQ2d 1477, 1478 (Comm’r 1988); see also In re Application of G, 11 USPQ2d
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`1378, 1380 (Comm’r, 1989) (where applicant deliberately chooses not to file a
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`response to an office action, that course of conduct cannot amount to unintentional
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`abandonment under § 1.137(b)).
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`The evidence shows that the ’073 application was subject to a final office
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`action rejection mailed August 29, 2000, and that a three month EOT was filed on
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`February 21, 2001. The EOT was not accompanied by a proper response to the
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`final office action. On that same day, the ’381 application (claiming priority back
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`to the ’073 application) was filed. Thereafter, a PTO notice of abandonment of the
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`’073 application was mailed on April 10, 2001. No further action was taken in the
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`’073 application until the ’381 application failed, and the petition to revive was
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`filed on January 3, 2003. Therefore, the public record shows deliberate acts
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`regarding abandonment of the parent ’073 application and use of the divisional
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`’381 application to continue prosecution described above, and Petitioner is not
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`aware of any evidence to the contrary.5
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`5 Messrs. Robert Curfiss and Richard Ruble, attorneys of record for the ’073
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`application (see, e.g., Ex. 1012 at 94-97), were deposed in a related litigation, but
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`14
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`There can be no dispute that the natural consequence (i.e., abandonment) of
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`filing the EOT without a suitable substantive response, and simultaneously filing a
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`continuation application, was deliberate at the time the acts were taken. These
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`deliberate acts cannot later -- in hindsight after the ’381 application had been
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`deemed by the PTO to be not co-pending with the ’073 application -- become
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`unintentional. The abandonment of the ’073 application was deliberate. In these
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`circumstances, 37 C.F.R. § 1.137(b) is not available to revive the ’073 application.
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`c)
`The attorney signing the petition was Mr. Richard Ruble (Reg. No. 45,720),
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`No Record Evidence of “Unintentional” Delay
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`who at the time of the petition was a relatively young lawyer working for Mr.
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`Curfiss. Mr. Ruble signed the petition, including the statement of “unintentional”
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`delay. As discussed above, however, the record evidence shows deliberate acts
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`regarding abandonment of the ’073 application, and Petitioner is not aware of any
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`evidence to the contrary.6
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`counsel for e-Watch has refused to provide consent to the use of the deposition
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`transcripts under seal in an inter partes review.
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`6 Mr. Ruble was deposed in a related litigation, but counsel for e-Watch has
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`refused to provide consent to the use of the confidential deposition transcript under
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`seal in an inter partes review.
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`15
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`The PTO’s decision on the petition to revive explained that it “is not
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`apparent whether the person signing the statement of unintentional delay was in a
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`position to have firsthand or direct knowledge of the facts and circumstances of the
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`delay at issue.” Ex. 1012 at 603. Petitioner is aware of no evidence concerning any
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`attorney inquiry into the delay period of the alleged unintentional abandonment.
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`The lack of evidence concerning any inquiry into the ’073 application delay period
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`starkly contrasts with the fact that during the delay period, the PTO expressly
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`notified Applicant’s attorney on April 10, 2001, of the abandonment of the ’073
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`application. See Ex. 1012 at 595-597. No action was taken in the ’073 application
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`in response to the Notice of Abandonment during the time period of April 10,
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`2001, until the Petition to Revive was filed on January 3, 2003.
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`Yet, during this delay period, Mr. Curfiss continued to prosecute the ’381
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`application. For example, he filed a Submission of Missing Parts on April 26,
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`2001, and he filed a Response to Notice of Incomplete Nonprovisional Application
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`on March 26, 2002. Ex. 1013 at 66-110.
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`The evidence does not support an allegation that the abandonment of the
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`’073 application and the entire period of delay befo