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. 7,365,871
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,365,871
`
`
`
`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104 .......... 6
`
`III. OVERVIEW OF THE ’871 PATENT ........................................................... 6
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104 .......................................................................................................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes
`Review Is Requested ............................................................................ 7
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds
`on Which the Challenge to the Claims Is Based .................................. 7
`
`37 C.F.R. § 42.104(b)(3): Claim Construction .................................... 7
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims Are
`Unpatentable ......................................................................................... 9
`
`E.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence .................................. 9
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’871 PATENT IS UNPATENTABLE ................... 10
`
`A.
`
`Claims 1-15 Are Anticipated by WO 1999/035818 ........................... 10
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Effective Filing Date for the ’871 Patent Is January
`3, 2003 ...................................................................................... 10
`
`’073 Prosecution History ......................................................... 11
`
`The Public Record Demonstrates Deliberate
`Abandonment of the ’073 Application .................................... 15
`
`No Record Evidence of “Unintentional” Delay ....................... 17
`
`The PTO “Assumed” Unintentional Delay -- It Did Not
`Decide the Merits of the Issue ................................................. 19
`
`The Effective Filing Date of the ’871 Patent Is January 3,
`2003 .......................................................................................... 20
`
`i
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`B.
`
`The ’818 Publication Has the Same Disclosure as the ’871
`Patent, Rendering Claims 1-15 of the ’871 Patent Anticipated ......... 21
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Independent Claim 1 Is Disclosed by the ’818
`Publication ............................................................................... 21
`
`Independent Claim 6 Is Disclosed by the ’818
`Publication ............................................................................... 28
`
`Independent Claim 9 Is Disclosed by the ’818
`Publication ............................................................................... 34
`
`Independent Claim 12 Is Disclosed by the ’818
`Publication ............................................................................... 41
`
`Dependent Claims 2-5, 7, 8, 10, 11, and 13-15 Are
`Disclosed by the ’818 Publication ........................................... 44
`
`C.
`
`Summary -- Claims 1-15 of the ’871 Patent Are Invalid as
`Anticipated by the ’818 Publication ................................................... 48
`
`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 .................. 49
`
`A.
`
`B.
`
`Real Party-in-Interest ......................................................................... 49
`
`Related Matters ................................................................................... 49
`
`1.
`
`2.
`
`Litigations ................................................................................ 49
`
`Inter Partes Reviews ................................................................ 50
`
`C.
`
`Lead and Back-up Counsel and Service Information ........................ 51
`
`VII. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15 ...................................... 52
`
`VIII. CONCLUSION ............................................................................................. 53
`
`ii
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`In re Am. Acad. Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 8
`
`In re Application of G,
`11 USPQ2d 1378 (Comm’r, 1989) ..................................................................... 16
`
`IPR2014-00439, Paper No. 16 (Aug. 4, 2014) .......................................................... 6
`
`Lawman Armor Corp. v. Simon,
`2005 U.S. Dist. Lexis 10843 (E.D. Mich., March 29, 2005) .............................. 16
`
`Lumenyte Int’l Corp. v. Cable Lite Corp.,
`Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS 16400, 1996 WL
`383927 (Fed. Cir. July 9, 1996) (unpublished) ................................................... 15
`
`In re Maldague,
`10 USPQ2d 1477 (Comm’r 1988) ...................................................................... 16
`
`Federal Statutes
`35 U.S.C. § 102(b) ............................................................................................passim
`
`35 U.S.C. § 120 .................................................................................................. 11, 13
`
`35 U.S.C. § 133 ........................................................................................................ 12
`
`Regulations
`
`37 C.F.R. § 1.68 ....................................................................................................... 10
`
`37 C.F.R. § 1.137(b) .........................................................................................passim
`
`37 C.F.R. § 1.137(c) ................................................................................................. 14
`
`37 C.F.R. § 41.100(b) ................................................................................................ 8
`
`37 C.F.R. § 42.8(a)(1) .............................................................................................. 50
`
`37 C.F.R. § 42.8(b) .................................................................................................. 50
`
`iii
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`

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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`37 C.F.R. § 42.8(b)(2) ........................................................................................ 50, 51
`
`37 C.F.R. §§ 42.8(b)(3)-(4) ...................................................................................... 53
`
`37 C.F.R. § 42.15(a) ................................................................................................. 53
`
`37 C.F.R. § 42.104(a) ................................................................................................. 6
`
`37 C.F.R. § 42.104(b) ................................................................................................ 7
`
`37 C.F.R. § 42.104(b)(1) ............................................................................................ 7
`
`37 C.F.R. § 42.104(b)(2) ............................................................................................ 7
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 8
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 10
`
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 10
`
`37 CFR 1.137(b) ...................................................................................................... 15
`
`37 CFR 11.18 ........................................................................................................... 15
`
`Other Authorities
`
`MPEP 711.03(c)(II)(C) ............................................................................................ 15
`
`MPEP 711.03(c)(II)(C)(1) ....................................................................................... 16
`
`MPEP § 2111 ............................................................................................................. 8
`
`
`
`iv
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`

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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
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`
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`
`
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`
`
`
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`
`
`
`
`LIST OF EXHIBITS1
`
`U.S. Patent No. 7,365,871, as filed in IPR2015-00411
`
`WO 1999/035818, as filed in IPR2015-00411
`
`File History for Application Serial No. 09/006,073, as filed in
`IPR2015-00411
`
`File History for Application Serial No. 09/790,381, as filed in
`IPR2015-00411
`
`Declaration of Steven Sasson, as filed in IPR2015-00411
`
`Apple Inc. v. e-Watch, Inc., IPR2015-00411, Petition, Paper No. 2
`(Dec. 11, 2014)
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00987, Institution Decision,
`Paper No. 6 (Dec. 9, 2014)
`
`
`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 of U.S. Pat. No. 7,365,871
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) request inter partes review of claims 1-15 of U.S.
`
`Patent No. 7,365,871 (“the ’871 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 1-15 of the ’871 patent (IPR2015-
`
`00411) (“Apple IPR”). Ex. 1006. This Petition proposes the same ground of
`
`rejection proposed in the Apple IPR, and relies on the same analysis, evidence, and
`
`expert testimony. 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 1-15 of the ’871 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-
`
`15 of the ’871 patent. In particular, during prosecution, the ’871 patent was
`
`examined based on a priority date that was improper due to a defective claim for
`
`priority. Therefore, the PTO did not consider a corresponding PCT application that
`
`was published more than a year before the true priority date of the ’871 patent. The
`
`PCT publication shares substantially the same disclosure as the ’871 patent, and
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`anticipates all the claims (1-15) of the ’871 patent under 35 U.S.C. § 102(b) either
`
`explicitly or inherently. Accordingly, all the claims of the ’871 patent should be
`
`found unpatentable and canceled.
`
`The ’871 patent is allegedly related to a family of patent applications filed
`
`by Mr. David A. Monroe. The relevant portion of the family includes at least:
`
`• U.S. Application No. 09/006,073 (“the ’073 application” -
`
`abandoned), filed January 12, 1998;
`
`• PCT/US99/00664 (published in 1999 as WO1999/035818 (“the ’818
`
`publication”)), claimed benefit of the ’073 application;
`
`• U.S. Application No. 09/790,381 (“the ’381 application” -
`
`abandoned), claimed priority as a divisional to the ’073 application;
`
`and
`
`• U.S. Application No. 10/336,470 (“the ’470 application”) issued as
`
`the ’871 patent and improperly claimed priority as a divisional to the
`
`’073 application.
`
`This is illustrated in Figure A below.
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`FIGURE A
`
`
`
`The sole basis for the ’871 patent priority claim to the ’073 application is an
`
`improper petition for revival under 37 C.F.R. § 1.137(b) of the deliberately
`
`abandoned ’073 application. The deliberate, i.e., intentional abandonment, is
`
`shown through the public record of the ’073, ’381, and ’470 applications for two
`
`reasons, and Petitioner is not aware of any evidence to the contrary.2 First, it was
`
`not until 22 months after the ’073 application abandonment and after a mistake was
`
`made by the prosecuting attorneys in the ’381 child application, which caused them
`
`2 Mr. Robert Curfiss and Mr. Richard Ruble, attorneys of record for the ’073
`
`application, were deposed in a related litigation, but counsel for e-Watch has
`
`refused to consent to the use of the confidential deposition transcripts under seal in
`
`an inter partes review.
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`to lose its filing date and priority claim, that the abandonment of the ’073 parent
`
`application suddenly become “unintentional.” Second, there is absolutely no
`
`evidence that shows the prosecuting attorneys performed the required due
`
`diligence needed to claim unintentional abandonment of the ’073 application in the
`
`§ 1.137(b) petition – rather only evidence to the contrary exists.
`
`The basic timeline of events in the prosecution is as follows:
`
`1. On February 21, 2001, the Patent Owner filed a three-month extension
`
`of time in the ’073 application, but without a substantive reply to the
`
`final Office action of August 29, 2000.
`
`2. On February 21, 2001, the Patent Owner also filed the ’381 divisional
`
`application in lieu of continuing prosecution of the ’073 application.
`
`3. The Patent Owner was informed, based on a filing error, the ’381
`
`divisional application would receive a filing date of April 11, 2002, so
`
`that it no longer was co-pending with the ’073 application and could
`
`not claim priority. The ’381 application went abandoned for failure to
`
`file a response to the October 3, 2002 Office action.
`
`4. On January 3, 2003, “coincidentally” the three-month due date for the
`
`Office action in the ’381 application, the Patent Owner filed the §
`
`1.137(b) petition to revive the ’073 application 22 months after it was
`
`abandoned so that the concurrently filed ’470 application could claim
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`priority to the ’073 application the Patent Owner claimed was
`
`“unintentionally” abandoned.
`
`Based on these facts, the abandonment of the ’073 application should have
`
`been ruled intentional by the USPTO, and the ’073 application should have
`
`remained abandoned. If abandoned, the ’073 application and ’470 application
`
`could never be co-pending, such that the ’470 application could not have properly
`
`claimed priority to the ’073 application. As such, the ’871 patent is not entitled to
`
`the 1998 effective filing date of the ’073 application and, if anything, can claim no
`
`more than its date of filing, i.e., January 3, 2003.
`
`Finally, as shown in Figure A above and most important to the invalidity of
`
`the ’871 patent claims, the ’664 PCT application was filed claiming priority back
`
`to the ’073 Application. The ’664 PCT application published in 1999 as
`
`WO1999/035818 (“the ’818 publication”). The ’818 publication has a substantially
`
`identical specification as the ’871 patent, i.e., it includes all the limitations of the
`
`claims 1-15. Because the ’818 application was published more than one year prior
`
`(i.e., 1999) to the earliest effective filing date of the ’871 patent (i.e., 2003), and
`
`disclosed all the claimed subject matter of the ’871 patent, all the claims of the
`
`’871 patent are invalid under 35 U.S.C. § 102(b) either explicitly or inherently.
`
`Petitioner respectfully submits that the Board has the authority to evaluate
`
`evidence and render decisions on factual and legal issues involving priority claims
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`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 (where the Board rendered a
`
`decision on the insufficiency of an inventor affidavit as to diligence in reduction to
`
`practice during prosecution (which impacted the alleged invention date) and made
`
`an associated determination as to the availability of a reference as prior art).
`
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104
`Petitioner certifies that the ’871 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 grounds identified herein.
`
`III. OVERVIEW OF THE ’871 PATENT
`The ’871 patent contains approximately 14 columns of specification in
`
`which figures 1-9 are described and in which various embodiments are described
`
`that provide:
`
`“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. Embodiments
`
`incorporate a
`
`camera and signal converter into an integrated unit wherein the
`
`converted signal may be transmitted on a real time basis or may be
`
`stored in memory for later recall and transmission.” Ex. 1001, 1:25-
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`32.3
`
`As issued, the ’871 patent has 15 claims.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes Review Is
`A.
`Requested
`Inter partes review is requested for claims 1-15 of the ’871 patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds on
`Which the Challenge to the Claims Is Based
`Inter partes review is requested in view of the following prior art reference:
`
`• WO 1999/035818 (Ex. 1002, “the ’818 publication”).
`
`The specific statutory ground on which the challenge to the claims is based
`
`and the reference relied upon for the ground is as follows:
`
`•
`
`Claims 1-15 are anticipated under 35 U.S.C. § 102(b) by the ’818
`
`publication.
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`
`C.
`Pursuant to 37 C.F.R. § 41.100(b), solely for the purposes of this review,
`
`Petitioner construes the claim language such that the claims are given their
`
`broadest reasonable interpretation in light of the disclosure of the ’871 patent.
`
`Petitioner submits that, for the purposes of this review, each claim should be
`
`construed in accordance with its plain and ordinary meaning under the required
`
`3 In this Petition, all emphasis is added unless otherwise indicated.
`
`7
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`broadest reasonable interpretation, which for the avoidance of doubt for one term is
`
`presented below. Because the standard for claim construction at the Patent Office
`
`is different than that used during a litigation in a United States District Court (See
`
`also, In re Am. Acad. Sci. Tech. Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004);
`
`MPEP § 2111) Petitioner expressly reserves the right to assert a different claim
`
`construction in litigation for any term of the ’871 patent as appropriate in any such
`
`proceeding.4
`
`Framing an image: This term appears in the claims in different variations:
`
`“an image framed by the camera” (claim 1); “framing the [an] image to be
`
`captured” (claims 2, 9, 12); “visually framing a visual image to be captured” (claim
`
`6); “framing the visual image” (claim 7). In IPR2015-00411, Apple proposed that
`
`the broadest reasonable interpretation of these phrases is “obtaining data
`
`representing an image as shown on a display.” Ex. 1006 at 8. The Board, however,
`
`has already construed these phrases in IPR2014-00987. Ex. 1007 at 6-7.
`
`Specifically, the Board interpreted “image framed by the camera” as “an image
`
`having boundaries established by the camera,” and all other “framing” terms as
`
`“establishing the boundaries of the image to be captured.” Id.
`
`As explained by the Board in IPR2014-00987, “[t]he term ‘frame’ is used in
`
`the Specification, but it is used as a noun, not as a verb, and only in an image-
`
`4 Petitioner reserves all other arguments, such as § 112 arguments, for litigation.
`
`8
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`processing context,” and “[t]he terms ‘framed’ and ‘framing’ are not used in the
`
`Specification.” Id. at 6. But, “[a]s used in the claims, ‘framed’ and ‘framing’
`
`appear to refer to composing an image by positioning the subject of the image
`
`within the boundaries of the camera’s field of view.” Id.
`
`For purposes of this proceeding, Petitioner proposes that the broadest
`
`reasonable interpretation of “image framed by the camera” is “an image having
`
`boundaries established by the camera,” and of all other “framing” terms is
`
`“establishing the boundaries of the image to be captured,” as adopted by the Board
`
`in IPR2014-00987. See id. at 6-7. Petitioner notes, however, that the prior art
`
`analysis provided by Apple meets both Apple’s interpretation and the Board’s
`
`interpretation.
`
`D.
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims Are
`Unpatentable
`
`A detailed explanation of how claims 1-15 are unpatentable, including the
`
`identification of how each claim element is found in the prior art, is set forth below
`
`in Section V.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`E.
`A list of exhibits is provided at the beginning of this petition. Included at Ex.
`
`1005 is a Declaration of Steven Sasson (“Sasson Decl.”), an expert with over 35
`
`years of experience in this technology space, under 37 C.F.R. § 1.68, further
`
`supporting the petition. In addition, the relevance of the evidence to the challenged
`
`9
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`claims, including an identification of the specific portions of the evidence
`
`supporting the challenge, is included in Section V.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’871 PATENT IS UNPATENTABLE
`A. Claims 1-15 Are Anticipated by WO 1999/035818
`Claims 1-15 are anticipated, either explicitly or inherently, under 35 U.S.C.
`
`§ 102(b) by the disclosure of the ’818 publication. See, Ex. 1002. The ’818
`
`publication was published on July 15, 1999 -- more than one year prior to the
`
`earliest effective filing date for the ’871 patent, January 3, 2003. The ’818
`
`publication also has substantially the same disclosure as the ’871 patent. Ex. 1005,
`
`Sasson Decl., ¶ 19. The ’818 publication anticipates all the claims (1-15) of the
`
`’871 patent under 35 U.S.C. § 102(b) either explicitly or inherently.
`
`1.
`
`The Effective Filing Date for the ’871 Patent Is January 3,
`2003
`The earliest effective date for the ’871 patent is January 3, 2003,5 because
`
`the claim for priority in the ’470 application (which matured into the ’871 patent),
`
`back to the filing date of the ’073 application (January 12, 1998), is defective. The
`
`basis for the priority claim in the ’470 application is co-pendency with the ’073
`
`
`5 The ’470 application was filed January 3, 2003.
`
`10
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`application.6 However, because the ’073 application was purposefully abandoned
`
`on March 1, 2001 -- twenty-two (22) months prior to the January 3, 2003 filing
`
`date for the ’470 application -- the ’073 application should not and could not have
`
`been revived as “unintentionally” abandoned to provide co-pendency with the ’470
`
`application. Since there was no proper basis for co-pendency between the ’073 and
`
`’470 applications, the ’470 application is not entitled to the benefit of the January
`
`12, 1998 priority date of the ’073 application. The legally correct effective date for
`
`the ’470 application is January 3, 2003.
`
`’073 Prosecution History
`
`2.
`The prosecution history of the ’073 application begins with its initial filing
`
`on January 12, 1998. The initial application contained 266 claims. Ex. 1003, p. EW
`
`005 (“Patent Application Transmittal Letter”). On December 7, 1999, the PTO
`
`mailed an office action requiring a restriction to one of nine groups of claims. Id.,
`
`p. EW 299-302. The Applicant elected Group I (claims 1-28, 181 and 190). Id., p.
`
`EW 304. Those claims were rejected. Id., pp. EW 307-317. After an amendment in
`
`6 Under 35 U.S.C. § 120, “An application for patent for an invention disclosed . . .
`
`in an application previously filed in the United States . . . shall have the same effect
`
`. . . as though filed on the date of the prior application, if filed before the patenting
`
`or abandonment of . . . the first application . . . .” This temporal overlap of two
`
`applications pending before the PTO is referred to herein as co-pendency.
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`which claims 5-8, 181, and 190 were canceled (Id. at EW 524-527), all of the then
`
`pending claims were subject to a final office action mailed August 29, 2000. Id., p.
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`EW 529-530.
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`From August 29, 2000, the six (6) month statutory period for response to the
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`final office action would have ended Wednesday, February 28, 2001.7 On February
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`21, 2001 -- one week prior to running of the statutory bar -- the applicant filed a
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`three month extension of time (“EOT”). Ex. 1003, p. EW 593. That EOT was not
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`accompanied by any amendment or other substantive response. On April 10, 2001,
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`the PTO mailed a notice of abandonment (“NOA”) of the ’073 application to the
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`Applicant. Id., p. EW 595. The NOA recited the fact that the Applicant failed “to
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`timely file a proper reply to the Office letter mailed on 29 August 2000.” Id.
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`On the same day that the EOT in the ’073 application was filed -- February
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`21, 2001 -- a separate application with serial number 09/790,381 (“the ’381
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`application”) was filed at the PTO. Ex. 1004 at 6-37 (“Utility Patent Application
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`Transmittal,” see, barcoded date stamp). This application claimed priority as a
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`divisional of the ’073 application. Id. This application included 42 claims, which
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`were an exact copy of the unelected Group III claims of the ’073 application. Id.
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`7 See, 35 U.S.C. § 133 (“Upon failure of the applicant to prosecute the application
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`within six months after any action therein, . . . the application shall be regarded as
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`abandoned by the parties thereto.”).
`
`12
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`Notwithstanding its February 21, 2001 date stamp, the ’381 application was
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`not complete as filed. See, id. at 64, Notice of Incomplete Nonprovisional
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`Application, mailed January 28, 2002. On March 26, 2002, the Applicant provided
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`the missing parts of the incomplete application. Id. at 66-110, Response to Notice
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`of Incomplete Nonprovisional Application, filed March 26, 2002. Thereafter, the
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`PTO recorded the filing date of the ’381 application as April 11, 2002. See, e.g., id.
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`at 111, Office Action mailed October 3, 2003. However, because the ’381
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`application received a filing date of April 11, 2002, it was not co-pending with the
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`’073 application. Under 35 U.S.C. § 120, the claim for priority in the ’381
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`application back to ’073 application filing date of January 12, 1998 became
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`ineffective. The Applicant subsequently permitted the ’381 application to go
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`abandoned. Id. at 281.
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`After the PTO determined that the ’381 application had a filing date of April
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`11, 2002, and was not co-pending with the ’073 application, Applicant improperly
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`returned to prosecuting the previously deliberately and intentionally abandoned
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`’073 application. On January 3, 2003, Applicant filed a petition to revive the ’073
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`application based on unintentional abandonment under 37 C.F.R. § 1.137(b). Ex.
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`13
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`1002, p. EW 598-599.8 This petition contains the form statement that “The entire
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`delay in filing the required reply from the due date for the required reply until the
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`filing of the grantable petition under 37 C.F.R. § 1.137(b) was unintentional.” Id.,
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`EW 599, ¶ 4. This statement was signed by Richard Ruble (Reg. No. 45,720). Id.
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`The PTO subsequently granted the petition. Ex. 1002, p. EW 603. However,
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`in so doing, the PTO explained: “It is not apparent whether the person signing the
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`statement of unintentional delay was in a position to have firsthand or direct
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`knowledge of the facts and circumstances of the delay at issue.” Id. The PTO
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`assumed that both a proper inquiry had been made and that the proper standard had
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`been met.9 The record evidence now shows that both assumptions were incorrect.
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`8 This petition was accompanied by a continuing application as required by 37
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`C.F.R. § 1.137(c). That application was assigned Serial No. 10/336,470 – the ’470
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`application eventually matured into the ’871 patent.
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`9 See MPEP 711.03(c)(II)(C):
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`[T]he Office relies upon the applicant’s duty of candor and
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`good faith . . . without requiring further information in the vast
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`majority of petitions . . . because the applicant is obligated under 37
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`CFR 11.18 to inquire into the underlying facts and circumstances
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`when a practitioner provides this statement to the Office . . . .
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`[P]roviding an inappropriate statement in a petition under 37 CFR
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`14
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`3.
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`The Public Record Demonstrates Deliberate Abandonment
`of the ’073 Application
`
`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
`
`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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`prosecution of an application.” MPEP 711.03(c)(II)(C)(1). “An intentional act is
`
`
`1.137(b) . . . may have an adverse effect when attempting to enforce
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`any patent resulting from the application. See Lumenyte Int’l Corp. v.
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`Cable Lite Corp., Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS
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`16400, 1996 WL 383927 (Fed. Cir. July 9, 1996) (unpublished)
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`(patents held unenforceable due to a finding of inequitable conduct in
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`submitting an inappropriate statement that the abandonment was
`
`unintentional).
`
`15
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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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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`There is no dispute concerning the public record facts. They show that the
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`’073 application was subject to a final office action rejection mailed August 29,
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`2000, and that a three (3) month EOT was filed on February 21, 2001. That
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`3-month EOT was not accompanied by a proper response to the final office action.
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`On that same day -- February 21, 2001 -- the ’381 application (claiming priority
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`back to the ’073