Filed: June 2, 2017
`
`Filed on behalf of:
`One-E-Way
`By: Douglas G. Muehlhauser (Reg. No. 179,495)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: 2dgm@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1 
`
`PETITIONER’S FACTUAL BACKGROUND .............................................. 3 
`
`III. PETITIONER’S DISCUSSION OF THE CHALLENGED
`’396 PATENT .................................................................................................. 5 
`
`IV. THE SOLE GROUND FOR INVALIDITY FAILS
`BECAUSE THE ’396 PATENT CLAIMS HAVE A 2001
`PRIORITY DATE ........................................................................................... 5 
`
`A. 
`
`Petitioner Does Not Dispute that the ’396 Patent
`Properly Claims Priority to December 21, 2001—the
`Filing Date of the 2001 Parent Application—Nor
`Does Petitioner Dispute that as of that Same Date, Mr.
`Woolfork Was in Possession of the Inventions
`Claimed in the ’396 Patent .................................................................... 7 
`
`1. 
`
`The ’396 Patent Properly Claims Priority to the
`2001 Application ......................................................................... 7 
`
`a. 
`
`Petitioner Does Not Dispute that Each
`Application in the ’396 Patent Family
`Claims Priority to the Prior Applications
`in the Chain ....................................................................... 7 
`
`2.  Mr. Woolfork was in Possession of the
`Inventions Claimed in the ’396 Patent as of Its
`Effective Filing Date of December 21, 2001 .............................. 7 
`
`a. 
`
`b. 
`
`The ’396 Patent Complies, as it Must,
`With the Written Description
`Requirement as of the Filing Date Sought ....................... 7 
`
`There is No Dispute that Mr. Woolfork
`was in Possession of the Inventions
`Claimed in the ’396 Patent as of
`December 21, 2001 ........................................................... 9 
`
`B. 
`
`It is Undisputed that Mr. Woolfork Amended his 2003
`CIP Application to Disclose Subject Matter that He
`
`i
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`Had Already Disclosed in His Original 2001
`Application, and that the Patent Office Allowed Each
`Such Amendment Without Objection ................................................. 10 
`
`1. 
`
`The Patent Examiners Reviewed Numerous
`Amendments and Plainly Understood that
`Subject Matter Already Disclosed in the 2001
`Parent Application was Not New Matter .................................. 10 
`
`a. 
`
`b. 
`
`c. 
`
`d. 
`
`e. 
`
`The Patent Examiners Reviewed and
`Rejected Mr. Woolfork’s Request to Add
`New Figures 2 and 3 to the 2003 CIP
`Because the Subject Matter Was Not
`Supported by the 2003 CIP or by the
`2001 Parent Application ................................................. 11 
`
`The Patent Examiners Reviewed and
`Approved Adding Figures 2 and 3 from
`the 2001 Parent Application ........................................... 11 
`
`The Patent Examiners Reviewed and
`Rejected Mr. Woolfork’s Request to
`Disclose Frequency Shift Keying in his
`2003 CIP Application Because The
`Subject Matter Was Not Supported by
`the CIP or by the Parent 2001
`Application ..................................................................... 12 
`
`The Patent Examiners Reviewed and
`Approved Mr. Woolfork’s Request to
`Disclose Differential Phase Shift Keying
`in his 2003 CIP Application ........................................... 12 
`
`Supervisory Patent Examiner Sinh Tran
`Reviewed and Approved Mr. Woolfork’s
`Request to Incorporate By Reference the
`Entirety of the 2001 Parent Application ......................... 13 
`
`2. 
`
`The Determinations Made by the Patent
`Examiners that Mr. Woolfork’s Amendments
`
`ii
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`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`Did Not Introduce New Matter are Entitled to
`Deference .................................................................................. 15 
`
`C. 
`
`The Great Weight of Authority is in Accord with the
`Understanding and Practice of the Patent Examiners:
`No New Matter was Introduced by Amending the
`2003 CIP Application to Disclose Subject Matter that
`had Already Been Disclosed in the 2001 Parent
`Application .......................................................................................... 16 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`In re Reiffin ............................................................................... 20 
`
`Litton v. Whirlpool .................................................................... 21 
`
`Harari v. Hollmer ..................................................................... 24 
`
`G.E. v. Wabash .......................................................................... 25 
`
`Hanft v. Harry F. Manbeck, Jr. ................................................ 27 
`
`O’Hara Manufacturing v. Eli Lilly ........................................... 28 
`
`Ex parte Tianping Huang .......................................................... 31 
`
`Ex parte Dae-Ho Choo and Sang-Uk Jung .............................. 32 
`
`D. 
`
`The Cases Cited in the Petition Fail to Address the
`Present Facts and do Not Support Petitioner’s
`Argument that Continuity of Disclosure was not
`Maintained During the Prosecution of the 2003 CIP
`Application .......................................................................................... 33 
`
`1. 
`
`2. 
`
`3. 
`
`The Zenon Case Does Not Address the Present
`Facts .......................................................................................... 34 
`
`The Lockwood Case Does Not Address the
`Present Facts ............................................................................. 35 
`
`The Anascape Case Does Not Address the
`Present Facts ............................................................................. 36 
`
`iii
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`4. 
`
`5. 
`
`The Purdue Pharma Case Does Not Address
`the Present Facts ........................................................................ 37 
`
`The Dart Industries, Inc. v. Banner Case Does
`Not Address the Present Facts .................................................. 38 
`
`6.  MPEP § 201.06(c)(IV) Does Not Apply in the
`Limited Context of Incorporating by Reference
`Subject Matter from an Earlier Co-Pending
`Application ................................................................................ 40 
`
`a. 
`
`The MPEP Does Not have the Force of
`Law ................................................................................. 42 
`
`E. 
`
`The Petition Fails ................................................................................. 43 
`
`V.
`
`CONCLUSION .............................................................................................. 44 
`
`
`
`
`
`iv
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`AK Steel Corp. v. Sollac,
`344 F.3d 1234 (Fed. Cir. 2003) .......................................................................... 16
`
`Anascape, Ltd. v. Nintendo of America, Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .......................................................................... 36
`
`Ariad Pharmaceuticals, Inc. v Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .................................................................. 7, 8, 37
`
`Brooktree Corp. v. Advanced Micro Devices, Inc.,
`977 F.2d 1555 (Fed. Cir. 1992) .................................................................... 15, 16
`
`Ex parte Dae-Ho Choo and Sang-Uk Jung,
`No. 2008-5272, 2008 Pat. App. LEXIS 7884
`(B.P.A.I. December 10, 2008) ................................................................ 32, 33, 42
`
`Dart Industries, Inc. v. Banner,
`636 F2d 684 (D.C. Cir. 1980) ......................................................................passim
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988) .......................................................................... 42
`
`G.E. v. Wabash,
`93 F.2d 671 (2nd Cir. 1938) ......................................................................... 25, 26
`
`Hanft v. Manbeck,
`No. 90-1635 (RCL), 1991 U.S. Dist. LEXIS 12511
`(D.D.C. September 11, 1991) ............................................................................. 27
`
`Harari v. Hollmer,
`602 F.3d 1348 (Fed. Cir. 2010) .................................................................... 24, 25
`
`Application of Henecka,
`486 F.2d 582 (C.C.P.A. 1973) ............................................................................ 41
`
`Kolmes v. World Fibers Corp.,
`107 F.3d 1534 (Fed. Cir. 1997) .......................................................................... 41
`
`Litton v. Whirlpool,
`728 F.2d 1423 (Fed. Cir. 1984) ...................................................................passim
`
`Lockwood v. American Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 35
`
`v
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`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`O’Hara Manufacturing Ltd. v. Eli Lilly & Co.,
`No. 85-C-3979, 1986 U.S. Dist. LEXIS 22546
`(N.D. Ill. July 18, 1986) .................................................................... 28, 29, 30, 31
`
`Purdue Pharma L.P. v. Faulding Inc., et al.,
`230 F.3d 1320 (Fed. Cir. 2000) .............................................................. 36, 37, 38
`
`Ex parte Reiffin,
`App. No. 2007-2127, 2007 WL 2814119,
`(B.P.A.I. Sept. 25, 2007) ..............................................................................passim
`
`In re Reiffin,
`340 Fed. Appx. 651, 2009 WL 2222341
`(Fed. Cir. July 27, 2009) ..............................................................................passim
`
`Stearn v. Superior Distributing Co.,
`674 F.2d 539 (6th Cir. 1982) .............................................................................. 29
`
`Ex parte Tianping Huang,
`No. 2015-005149, 2016 Pat. App. ...................................................................... 30
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) ........................................................................ 7, 8
`
`Zenon Environmental, Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .............................................................. 33, 34, 35
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 103 ...................................................................................................... 1, 3
`
`35 U.S.C. § 112 ...................................................................................... 15, 16, 27, 43
`
`35 U.S.C. § 120 .............................................................................................. 7, 29, 39
`
`35 U.S.C. § 132 .................................................................................................passim
`
`MPEP § 201.02 ........................................................................................................ 40
`
`MPEP § 201.06 ............................................................................................ 39, 40, 41
`
`MPEP § 201.08 ........................................................................................................ 40
`
`§ 42.120 ...................................................................................................................... 1
`
`vi
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`

`

`Case IPR2016-01638
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`Case IPR2016-01638
`Patent 9,282,396
`Patent 9,282,396
`
`
`
`
`
`vii
`
`Vii
`
`

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`Patent 9,282,396
`
`EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`U.S. Patent No. 1,687,510
`
`
`
`viii
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`I. INTRODUCTION
`Pursuant to § 42.120, Patent Owner One-E-Way, Inc. hereby submits this
`
`Patent Owner Response to the Petition for Inter Partes Review of U.S. Patent No.
`
`9,282,396 (the “Petition” or “Pet.”). The Board should confirm the patentability of
`
`Claims 1-17 of U.S. Patent No. 9,282,396 (“the ’396 patent”). Petitioner presents a
`
`single ground for invalidity of the ’396 patent. Pet. 2. Petitioner alleges that the
`
`’396 patent is obvious under 35 U.S.C. § 103 in view of the publication of Patent
`
`Owner’s own original 2001 parent application (“the ’196 publication”). Id.
`
`Petitioner argues that continuity of disclosure was not maintained in the chain of
`
`patent applications leading to the ’396 patent, that the ’396 patent is not entitled to
`
`the filing date of the original 2001 application, and thus the publication of the 2001
`
`application is prior art to the ’396 patent. Pet. 9, 13-19.
`
`Petitioner argues that the alleged break in continuity occurred in Patent
`
`Owner’s 2003 continuation-in-part (CIP) application [(the ’012 application)]. Id.
`
`Petitioner alleges that continuity of disclosure was broken because certain subject
`
`matter disclosed in the 2001 parent application was not included in the 2003 CIP
`
`application when initially filed. Id.
`
`The present record shows, however, that during prosecution, Mr. Earl
`
`Woolfork, One-E-Way’s inventor, amended the 2003 CIP application to disclose
`
`subject matter he had already disclosed in his original 2001 application. For
`
`1
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`example, Mr. Woolfork added figures 2 and 3 from the original 2001 application,
`
`added disclosure of a direct conversion receiver as disclosed in the original 2001
`
`application, and also added disclosure of differential phase shift keying, again as
`
`disclosed in the original 2001 application. In addition, Mr. Woolfork added a
`
`statement that correctly incorporates by reference the entirety of the original 2001
`
`application.
`
`Petitioner concedes that Mr. Woolfork added all of this subject matter to the
`
`2003 CIP application and that the subject matter had already been disclosed in his
`
`original 2001 application. Pet. 16-18. Petitioner also concedes that the Patent
`
`Examiners allowed all of these amendments, although they had rejected other
`
`amendments not disclosed in the original 2001 application “as introducing new
`
`matter.” Pet. 16-18. It is also undisputed that Mr. Woolfork added the subject
`
`matter from his 2001 parent application while the prosecution of the 2003 CIP
`
`application was still open and before the application issued as a patent.
`
`As explained below, numerous cases spanning decades and numerous courts,
`
`and multiple Board decisions, make clear that a continuing application may be
`
`amended prior to abandonment or issuance to disclose subject matter that had
`
`already been disclosed in a parent application. Such subject matter is not deemed
`
`to be new matter under 35 U.S.C. § 132, and may properly be added by
`
`amendment while the application is pending. Because Mr. Woolfork properly
`
`2
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`incorporated the subject matter from his parent application while his 2003 CIP
`
`application was pending, no break in continuity of disclosure ever occurred.
`
`The cases cited in support of the institution do not address the circumstances
`
`here, where a continuing application is amended before issuance to disclose subject
`
`matter already disclosed in the applicant’s own parent application. Similarly, the
`
`MPEP provisions relied upon to support institution do not address the present facts.
`
`And even apart from the MPEP’s silence on the present facts, it does not carry the
`
`force of law.
`
`As the detailed analysis below makes clear, no authority in the Petition or
`
`the Institution Decision supports the premise that continuity of disclosure was
`
`broken even though the 2003 CIP application was amended before issuance to
`
`disclose the subject matter of the 2001 parent application. Rather, the great weight
`
`of authority demonstrates that the 2003 CIP application was properly amended,
`
`that continuity of disclosure was maintained, and that the ’396 Patent has priority
`
`dating back to the 2001 application. Thus, the publication of the 2001 application
`
`cannot be prior art under 35 U.S.C. § 103, and Petitioner’s sole ground for
`
`invalidity fails.
`
`II. PETITIONER’S FACTUAL BACKGROUND
`For purposes of this Response, Patent Owner does not dispute the
`
`description regarding the ’396 Patent, or the facts regarding the prosecution history
`
`3
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`of the ’396 Patent, as set forth in the “Factual Background” section of the Petition.
`
`Pet. 2-7. Also, Patent Owner does not dispute Petitioner’s figure showing the ‘396
`
`patent’s chain of priority back to the original 2001 application, which is set forth
`
`below:
`
`
`
`With regard to footnote 2 on page 7 of the Petition, Patent Owner notes that
`
`the Petition for Unintentional Delayed Claim of Priority was granted on August 24,
`
`2016, with a Certificate of Correction issuing on October 8, 2016.
`
`4
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`III. PETITIONER’S DISCUSSION OF THE
`CHALLENGED ’396 PATENT
`
`For purposes of this Petition, Patent Owner does not contest the four
`
`proposed claim constructions, or the level of skill in the art, proposed by Petitioner
`
`in the section titled “The Challenged ’396 Patent.” Pet. 7-8.
`
`IV. THE SOLE GROUND FOR INVALIDITY FAILS BECAUSE THE
`’396 PATENT CLAIMS HAVE A 2001 PRIORITY DATE
`
`Petitioner’s invalidity theory is based solely on the false premises that
`
`continuity of disclosure was not maintained in the prosecution of the 2003 CIP
`
`application, that the ’396 patent does not have a 2001 priority date, and that the
`
`’196 publication of Mr. Woolfork’s original 2001 application is prior art. On the
`
`present facts, the law makes clear that continuity of disclosure was maintained
`
`from the 2001 application and through the chain of continuing applications leading
`
`to the ’396 patent.
`
`This Response includes substantial authority addressing the circumstance at
`
`issue in the Petition: A continuing application amended prior to issuance to
`
`include subject matter from a parent application. Decisions from the federal
`
`appellate courts, the district courts and the Board that address this issue establish
`
`that subject matter already disclosed in a parent application may be included in a
`
`continuing application (such as a CIP) by way of an amendment made prior to
`
`issuance or abandonment. Indeed, both the Federal Circuit and other Board
`
`5
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`

`Case IPR2016-01638
`Patent 9,282,396
`
`decisions addressing this issue have made clear that such amendments are proper,
`
`that the subject matter of such amendments does not constitute new matter, and
`
`that continuity of disclosure is maintained.
`
`Moreover, the Examiners specifically rejected proposed amendments in the
`
`2003 CIP application that were not supported in the parent application, while
`
`allowing proposed amendments that were. The Federal Circuit has stated that an
`
`examiner’s allowance of such an amendment in the absence of a new matter
`
`objection is entitled to deference.
`
`Prior to issuance, Mr. Woolfork amended his 2003 CIP application to add
`
`the exact subject matter he had already disclosed in his original 2001 application.
`
`In accordance with the great weight of authority, this amendment did not add new
`
`matter and was therefore properly allowed by the Examiner. Thus, Petitioner’s
`
`invalidity argument necessarily fails because the ’396 patent properly claims
`
`priority to the original 2001 application, and the ’196 publication is not prior art.
`
`6
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`A.
`
`Petitioner Does Not Dispute that the ’396 Patent Properly Claims
`Priority to December 21, 2001—the Filing Date of the 2001 Parent
`Application—Nor Does Petitioner Dispute that as of that Same Date,
`Mr. Woolfork Was in Possession of the Inventions Claimed in the ’396
`Patent
`1.
`
`The ’396 Patent Properly Claims Priority to the 2001 Application
`a.
`
`Petitioner Does Not Dispute that Each Application in the
`’396 Patent Family Claims Priority
`to
`the Prior
`Applications in the Chain
`
`Patent Owner’s priority claims are undisputed. Petitioner does not dispute
`
`that in the 2003 CIP application, Patent Owner properly claimed priority to his
`
`2001 application. Nor does Petitioner dispute that Patent Owner made proper
`
`priority claims under 35 U.S.C. § 120 for every application in the chain from the
`
`’396 patent to Patent Owner’s original 2001 application. Pet. 9 (“Each application
`
`in the ’396 patent family claims priority to the prior applications in the chain.”).
`
`2. Mr. Woolfork was in Possession of the Inventions Claimed in the
`’396 Patent as of Its Effective Filing Date of December 21, 2001
`a.
`
`The ’396 Patent Complies, as it Must, With the Written
`Description Requirement as of the Filing Date Sought
`The Institution Decision cites Ariad Pharmaceuticals, Inc. v Eli Lilly & Co.,
`
`598 F.3d 1336 (Fed. Cir. 2010) and Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
`
`1563-64 (Fed. Cir. 1991), for the proposition that “[c]ompliance with the written
`
`description requirement is determined as of the filing date of the application.”
`
`Institution Decision 9 (emphasis added). However, neither case reflects the
`
`proposition as stated. Rather, as Vas-Cath states, “the applicant must also convey
`
`7
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`

`Case IPR2016-01638
`Patent 9,282,396
`
`with reasonable clarity to those skilled in the art that, as of the filing date sought,
`
`he or she was in possession of the invention.” Vas-Cath, 935 F.2d at 1563-64
`
`(emphasis added, original emphasis removed).
`
`Ariad confirms this distinction. In Ariad, the en banc Federal Circuit
`
`reviewed the lengthy history of its written description jurisprudence, including the
`
`test for determining when the written description requirement is satisfied. In
`
`reviewing a jury decision that the asserted claims of Ariad’s ’516 patent were
`
`supported by adequate written description, the Federal Circuit made clear that
`
`written description support is determined as of the filing date sought:
`
`Much of Ariad's written description evidence, however, is legally
`irrelevant to the question of whether the disclosure of the ’516
`patent conveys to those skilled in the art that the inventors were in
`possession of the claimed generic invention on April 21, 1989--the
`effective filing date of the ’516 patent. The parties disputed the
`effective filing date of the ’516 patent, and in a detailed and well-
`crafted special verdict form, the jury was asked to choose between the
`two possible dates: April 21, 1989, and November 13, 1991. The jury
`chose 1989 and neither party appealed that determination. Presumably
`because of uncertainty over the priority date, much of Ariad's
`evidence was actually directed to the later date. Because written
`description is determined as of the filing date--April 21, 1989, in this
`case--evidence of what one of ordinary skill in the art knew in 1990 or
`1991 cannot provide substantial evidence to the jury that the asserted
`claims were supported by adequate written description. See Vas-Cath,
`935 F.2d at 1563-64 (holding that a written description analysis
`occurs “as of the filing date sought”).
`
`Ariad, 598 F.3d at 1355.
`
`8
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`
`
`
`The Federal Circuit noted that the effective filing date had been determined
`
`by the jury to be April 21, 1989—a determination neither party appealed.
`
`Regardless, both of the two possible effective filing dates (April 21, 1989 and
`
`November 13, 1991) corresponded to filing dates of earlier related applications,
`
`and not to the actual filing date of the ’516 patent, which was June 5, 1995.
`
`b.
`
`There is No Dispute that Mr. Woolfork was in Possession of
`the Inventions Claimed in the ’396 Patent as of December
`21, 2001
`
`In the present case, Petitioner never disputes, or even questions, that Mr.
`
`Woolfork was in possession of the inventions claimed in the ’396 patent as of its
`
`effective filing date of December 21, 2001, the filing date of the 2001 application.
`
`In fact, Petitioner itself shows that, as of December 21, 2001, Mr. Woolfork
`
`possessed the inventions recited in the ’396 patent. In particular, Petitioner
`
`devotes over 10 pages of the Petition to show Mr. Woolfork’s possession of the
`
`inventions in a lengthy passage that explains how subject matter disclosed in the
`
`2001 application—as published in the ’196 publication—corresponds to each of
`
`the limitations in the ’396 patent claims. Pet. 20-31. Petitioner thus never
`
`challenged, but rather confirmed, that Mr. Woolfork possessed the inventions
`
`claimed in the ’396 patent as of its effective filing date.
`
`9
`
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`

`Case IPR2016-01638
`Patent 9,282,396
`B.
`
`It is Undisputed that Mr. Woolfork Amended his 2003 CIP Application
`to Disclose Subject Matter that He Had Already Disclosed in His
`Original 2001 Application, and that the Patent Office Allowed Each
`Such Amendment Without Objection
`
`During prosecution of the 2003 CIP application, Mr. Woolfork submitted
`
`several amendments requesting changes to the application. The following
`
`subsections show that whenever an amendment sought to include subject matter
`
`that was not supported by either the 2001 parent application or the 2003 CIP
`
`application, it was rejected as introducing new matter; but when the subject matter
`
`was supported by the 2001 parent application, it was allowed without objection.
`
`1.
`
`The Patent Examiners Reviewed Numerous Amendments and
`Plainly Understood that Subject Matter Already Disclosed in the
`2001 Parent Application was Not New Matter
`
`At least four different Patent Examiners participated in the prosecution of
`
`the 2003 CIP application, and each of them reviewed amendments proposed by
`
`Mr. Woolfork. In doing so, each Patent Examiner was called upon to consider the
`
`subject matter of the proposed amendments. As the following examples make
`
`clear, there can be no question that each of the Patent Examiners well understood
`
`that subject matter already disclosed in an earlier parent application may be
`
`incorporated by amendment and that such subject matter is not new matter.
`
`10
`
`

`

`Case IPR2016-01638
`Patent 9,282,396
`a.
`
`The Patent Examiners Reviewed and Rejected Mr.
`Woolfork’s Request to Add New Figures 2 and 3 to the 2003
`CIP Because the Subject Matter Was Not Supported by the
`2003 CIP or by the 2001 Parent Application
`
`Primary Patent Examiners Andrew Graham and Huyen Le considered Mr.
`
`Woolfork’s request to amend his 2003 CIP application by adding new figures 2
`
`and 3. The Examiners studied the new figures and concluded that the new figures
`
`would introduce new matter “by virtue of its altered shown order, which suggests
`
`the bandpass filtering of a spread spectrum and digitally demodulated signals,
`
`which is not clearly supported by the present or parent application.” Ex. 1005
`
`– 0226 (emphasis added). Thus, Examiners Graham and Le both understood that
`
`the subject matter of the figures would not be new matter if it were supported by
`
`either the present (2003 CIP application) or the parent (2001 application).
`
`b.
`
`The Patent Examiners Reviewed and Approved Adding
`Figures 2 and 3 from the 2001 Parent Application
`
`Supervisory Patent Examiner Sinh Tran and Primary Patent Examiner
`
`Andrew Flanders conducted an interview with Mr. Woolfork and discussed adding
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`figures to the 2003 CIP application. In their written summary of the interview,
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`Examiners Tran and Flanders explained that “Applicant agreed to submit new
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`drawings representing the drawings originally filed in the parent application, thus
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`overcoming the new matter rejections.” Ex. 1005 – 0368 (emphasis added).
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`Thus, Examiners Tran and Flanders understood, just like Examiners Graham and
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`11
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`

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`Case IPR2016-01638
`Patent 9,282,396
`
`Le, that the subject matter of the figures was not new matter if supported by the
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`2001 parent application. After agreeing to this suggestion, Mr. Woolfork‘s
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`subsequent amendment to add the drawings from the 2001 parent application was
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`entered without objection, as Petitioner concedes. Pet. 18.
`
`c.
`
`The Patent Examiners Reviewed and Rejected Mr.
`Woolfork’s Request to Disclose Frequency Shift Keying in
`his 2003 CIP Application Because The Subject Matter Was
`Not Supported by the CIP or by the Parent 2001
`Application
`
`Supervisory Examiner Tran and Primary Examiner Flanders considered Mr.
`
`Woolfork’s request to amend the specification of his 2003 CIP application by
`
`describing a frequency shift keying (FSK) technique. During an interview, the
`
`Examiners discussed this proposed amendment with Mr. Woolfork. Ex. 1005 –
`
`0418. Mr. Woolfork argued that frequency shift keying was an inherent feature of
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`CDMA. Id. But the Examiners did not agree, and specifically stated that the FSK
`
`technique was not present in either the parent disclosure or the then-current 2003
`
`CIP application, and thus they rejected the amendment on new matter grounds. Id.
`
`at 0474-75.
`
`d.
`
`The Patent Examiners Reviewed and Approved Mr.
`Woolfork’s Request to Disclose Differential Phase Shift
`Keying in his 2003 CIP Application
`
`Supervisory Patent Examiner Sinh Tran and Primary Patent Examiner
`
`Andrew Flanders considered Mr. Woolfork’s request to amend paragraph 9
`
`12
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`Case IPR2016-01638
`Patent 9,282,396
`
`(“paragraph [009]”) of the specification of the 2003 CIP application to disclose a
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`“DPSK (differential phase shit key) transmitter or module.” Ex. 1005 – 0376-77.
`
`Unlike the request to disclose frequency shift keying (FSK), which was rejected as
`
`new matter, the Examiners approved Mr. Woolfork’s request to disclose
`
`differential phase shift keying (DPSK). Pet. 18. The DPSK technique was not
`
`new matter because Mr. Woolfork had already disclosed it in his 2001 parent
`
`application. Petitioner itself emphasizes how the 2001 parent application disclosed
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`differential phase shift keying (DPSK), Pet. 12, and how the 2003 CIP application
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`did not, Pet. 15. Again, the Examiners understood that the DPSK technique was
`
`not new matter because Mr. Woolfork had disclosed it in his parent 2001
`
`application.
`
`e.
`
`Supervisory Patent Examiner Sinh Tran Reviewed and
`Approved Mr. Woolfork’s Request to Incorporate By
`Reference the Entirety of the 2001 Parent Application
`
`In responding to several proposed amendments, Supervisory Examiner Sinh
`
`Tran rejected many on new matter grounds. Ex. 1005 – 0476-78. But Examiner
`
`Tran allowed without objection an amendment to add a statement incorporating by
`
`reference the 2001 parent application:
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`13
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`Case IPR2016-01638
`Patent 9,282,396
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`Ex. 1005 – 0375.
`
`The Patent Office subsequently granted the request for a certificate of
`
`correction to more correctly detail the genealogy of the patent:
`
`
`
`Ex. 1005 – 1037.
`
`Petitioner acknowledges that, while the 2003 application was still pending,
`
`the specification was amended to incorporate by reference the entirety of the parent
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`2001 application. Pet. 16-17 (citing Ex. 1005 – 0375).
`
`
`
`14
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`Case IPR2016-01638
`Patent 9,282,396
`2.
`
`The Determinations Made by the Patent Examiners that Mr.
`Woolfork’s Amendments Did Not Introduce New Matter are
`Entitled to Deference
`
`There can be no question that at least four Patent Examiners carefully
`
`reviewed Mr. Woolfork’s requested amendments to ensure that no new matter was
`
`introduced into the 2003 CIP application. The prosecution record demonstrates
`
`their vigilance in allowing only amendments supported by the 2001 application or
`
`the 2003 CIP application, and rejecting the numerous other amendments supported
`
`by neither. Those determinations by the Patent Examiners are entitled to great
`
`weight.
`
`In Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1574-
`
`75 (Fed. Cir. 1992), the Federal Circuit reviewed a challenge by AMD that
`
`Brooktree’s patent was invalid based on amendments made to the patent claims to
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`indicate utility “for video display.” AMD argued that there was no disclosure of
`
`any video display utility, and that the amendments improperly added new matter.
`
`Brooktree responded, in part, that during examination, the patent examiner had
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`rejected the claims under 35 U.S.C. § 112, but upon receiving explanation of the
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`inventions’ usefulness for video display, the examiner accepted the amendment.
`
`After reviewing the evidence, the Federal Circuit rejected the new matter
`
`argument, specifically noting that when the Pa