Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: October 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018–00817
`Patent 9,445,251 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: October 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018–00817
`Patent 9,445,251 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2018–00817
`Patent 9,445,251 B2
`
`
`I. INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a request for inter partes review of
`
`claims 1–35 (the “challenged claims”) of U.S. Patent No. 9,445,251 B2
`
`(Ex. 1001, “the ’251 patent”). Paper 1 (“Pet.”). AGIS Software
`
`Development, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`
`(“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314, an inter partes review must not be instituted
`
`“unless . . . the information presented in the petition . . . shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`
`considering the evidence presented and the arguments made, we determine
`
`that Petitioner has not demonstrated a reasonable likelihood that it would
`
`prevail in showing the unpatentability of at least one of the challenged
`
`claims. Accordingly, we do not institute an inter partes review.
`
`A. Related Proceedings
`
`Petitioner advises that the ’251 patent is the subject of a civil action
`
`involving Petitioner, AGIS Software Development LLC v. Apple Inc., No.
`
`2:17-cv-00516-JRG (E.D. Tex.). Petitioner also advises the ’251 patent is
`
`asserted against third parties in four other cases: AGIS Software
`
`Development LLC v. Huawei Device USA Inc. et al., No. 2:17-cv-00513
`
`(E.D. Tex.); AGIS Software Development LLC v. LG Electronics, Inc., No.
`
`2:17-cv-00515 (E.D. Tex.); AGIS Software Development LLC v. ZTE
`
`Corporation et al., No. 2:17-cv-00517 (E.D. Tex.); AGIS Software
`
`Development LLC v. HTC Corporation, No. 2:17-cv-00514 (E.D. Tex.).
`
`Petitioner further advises that it is filing IPR petitions challenging U.S.
`
`2
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`IPR2018–00817
`Patent 9,445,251 B2
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`Patent Nos. 9,408,055, 8,213,970, and 9,467,838, which are asserted in the
`
`above litigations.
`
`Patent Owner acknowledges the same proceedings. Paper 5, 2–3.
`
`B. The ’251 Patent
`
`The ’251 patent specification (the “Specification”) describes a
`
`communications method and system using a plurality of cellular phones each
`
`having an integrated Personal Digital Assistant (PDA), Global Positioning
`
`System (GPS) receiver, and Advanced Communication Software (ACS) for
`
`the management of a plurality of people through the use of a remote server
`
`on a communications network. Ex. 1001, 1:33–42. The Specification
`
`describes rapidly establishing an ad hoc network of devices (e.g.,
`
`smartphones, PDAs, or personal computers) with users, such as first
`
`responders in an emergency situation, logging onto a network using the
`
`network’s name and security key (a common “password” for everyone). Id.
`
`at Abstract, 4:4–15. Once logged on, the user’s devices exchange each
`
`other’s identity, location, and status information via the remote server. Id. at
`
`5:13–22. Each cellular phone/PDA/GPS user device is identified on a map
`
`display of the other network participant users’ phone devices by a display
`
`symbol that is generated on each user phone display to indicate each user's
`
`own location and identity. Id. at 7:52–56. These symbols are user-
`
`selectable and are positioned on a geographical map of an interactive display
`
`with georeferenced entities. Id. at 6:18–23, 6:59–6:66, Fig. 1. Each symbol
`
`is placed at the correct geographical location on the user display and is
`
`correlated with the map on the display and is transmitted and automatically
`
`displayed on the other network participants’ PC and PDA devices. Id. at
`
`7:56–60. Network users communicate or send data to another network user
`
`3
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`IPR2018–00817
`Patent 9,445,251 B2
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`by selecting the user’s symbol and the desired action using a software
`
`switch. Id. at 7:9–17.
`
`Figure 1 of the ’251 patent is set out below.
`
`Figure 1, shown above, depicts a user’s digital device 10 (cellular
`
`phone/PDA/GPS) having a touch screen 16 displaying a geographical map
`
`16b with georeferenced entities 30, 34. Id. at 4:48–49, 6:19–23, 6:59–7:8.
`
`
`
`4
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`IPR2018–00817
`Patent 9,445,251 B2
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`C. Challenged Claims
`
`Petitioner challenges claims 1–35 of the ’251 patent. Claims 1 and 24
`
`are independent and are substantially similar—the principal difference being
`
`that claim 1 recites a computer-implemented method and claim 24 recites a
`
`system. Claim 1 is illustrative.
`
`1. A computer-implemented method
`comprising:
`
`with a first device, receiving a message from a
`second device, wherein the message relates to
`joining a group;
`
`based on receiving the message from the
`second device, participating in the group,
`wherein participating in the group includes
`sending first location information to a server
`and receiving second location information from
`the server, the first location information
`comprising a location of the first device, the
`second location infor mation comprising a
`plurality of locations of a respective plurality of
`second devices included in the group;
`
`presenting, via an interactive display of the first
`device, a first interactive, georeferenced map
`and a plurality of user-selectable symbols
`corresponding to the plurality of second
`devices, wherein the symbols are positioned on
`the first georeferenced map at respective
`positions corresponding to the locations of the
`second devices, and wherein the first
`georeferenced map includes data relating
`positions on the first georeferenced map to
`spatial coordinates;
`
`sending, from the first device to the server, a
`request for a second georeferenced map
`different from the first georeferenced map,
`wherein the request specifies a map location;
`
`5
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`IPR2018–00817
`Patent 9,445,251 B2
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`receiving, from the server, the second
`georeferenced map, wherein the second
`georeferenced map includes the requested
`location and data relating positions on the
`second georeferenced map to spatial
`coordinates;
`
`presenting, via the interactive display of the
`first device, the second georeferenced map and
`the plurality of user-selectable symbols
`corresponding to the plurality of second
`devices, wherein the symbols are positioned on
`the second georeferenced map at respective
`positions corresponding to the locations of the
`second devices; and
`
`identifying user interaction with the interactive
`display selecting one or more of the user-
`selectable symbols corresponding to one or
`more of the second devices and positioned on
`the second georeferenced map and user
`interaction with the display specifying an action
`and, based thereon, using an Internet Protocol
`to send data to the one or more second devices
`via the server,
`
`wherein the first device does not have access to
`respective Internet Protocol addresses of the
`second devices.
`
`Ex. 1001, 14:59–15:35.
`
`D. Relevant References
`
`Petitioner relies upon the following references:
`
`(1) U.S. Patent Application No. 14/027,410, filed Sep. 16, 2013 (“the
`
`’410 Application”) (Ex. 1006); and
`
`(2) U.S. Patent No. 7,630,724 B2, issued Dec. 8, 2009 (“the ’724
`
`patent”) (Ex. 1008).
`
`6
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`IPR2018–00817
`Patent 9,445,251 B2
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`E. Asserted Ground of Unpatentability
`
`Petitioner contends that claims 1–35 of the ’251 patent are
`
`unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 7,630,724. Pet. 5.
`
`Petitioner contends that the ’724 patent is prior art under 35 U.S.C.
`
`§102(a)(1), because the claims of the ’251 patent are entitled to a filing date
`
`no earlier than October 31, 2014, the filing date of the ’251 patent’s parent
`
`application, U.S. Patent Application No. 14/529,978 (Ex. 1004). Pet. 14.
`
`Petitioner asserts that the ’410 Application (the ’251 patent’s grandparent
`
`application), fails to comply with the written description requirement of 35
`
`U.S.C. § 112, thereby breaking the chain of priority that would allow the
`
`’251 patent to have an earlier priority date. Id.
`
`A. Level of Ordinary Skill
`
`II. DISCUSSION
`
`In determining whether an invention would have been obvious at the
`
`time it was made, we consider the level of ordinary skill in the pertinent art
`
`at the time of the invention. Graham v. John Deere Co. of Kansas City, 383
`
`U.S. 1, 17 (1966). “The importance of resolving the level of ordinary skill
`
`in the art lies in the necessity of maintaining objectivity in the obviousness
`
`inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`
`1991).
`
`Petitioner argues that a person of ordinary skill in the art in the field of
`
`the ’251 patent would have a bachelor’s degree in computer science,
`
`electrical or computer engineering, or a related field, and at least two to three
`
`years’ experience in mobile development, including designing and
`
`implementing software applications for mobile communications systems.
`
`Pet. 11 (citing Ex. 1002 ¶¶ 23–28). Such a person of ordinary skill,
`
`7
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`IPR2018–00817
`Patent 9,445,251 B2
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`Petitioner asserts, would have been capable of implementing mobile
`
`applications, including those that displayed maps. Id.
`
`Patent Owner does not provide any evidence or argument as to the
`
`level of ordinary skill in the art. See generally Prelim. Resp. 1–43.
`
`For purposes of this decision, and based on the record before us, we
`
`adopt Petitioner’s assessment of the level of ordinary skill in the art.
`
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent. 37 C.F.R. § 42.100(b). Consistent with that standard, we assign
`
`claim terms their ordinary and customary meaning, as would be understood
`
`by one of ordinary skill in the art at the time of the invention, in the context
`
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need
`
`be construed, and only to the extent necessary to resolve the controversy.
`
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999).
`
`1. Patent Owner’s Contentions
`
`Patent Owner contends the Petition should be denied on grounds that
`
`the Petition fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3);
`
`namely that the Petition fails to identify for the Board how each claim term
`
`is to be construed. Prelim. Resp. 4–13.
`
`Patent Owner argues that Petitioner has taken positions on claim
`
`construction in district court that are inconsistent with positions taken here.
`
`Id. at 5–9. For example, in district court, Petitioner asserts that “numerous
`
`limitations of apparatus claims 24–35” are indefinite under 35 U.S.C.
`
`8
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`IPR2018–00817
`Patent 9,445,251 B2
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`§ 112(f), but Petitioner does not do so here. Id.
`
`Patent Owner argues, “[t]he Petition advances a different construction
`
`for ‘georeferenced map,’ as compared to Petitioner’s position in the District
`
`Court proceeding.” Id. at 10. Patent Owner also argues Petitioner has
`
`proposed constructions for the term “group” and the phrase “receiving a
`
`message from a second device” in district court, but has “fail[ed] to assert an
`
`express construction for these terms in this proceeding.” Id. at 10–11.
`
`Patent Owner further contends that Petitioner’s claim construction
`
`positions violate 37 C.F.R. §§ 42.11, 11.18(b)(2). Id. at 11–13. Patent
`
`Owner asserts “[i]t is Petitioner’s burden to propose claim constructions that
`
`it believes are correct under applicable law as required by the Board in its
`
`interpretation of 37 C.F.R. § 42.104(b)(3).” Id. at 13 (citing Trial Practice
`
`Guide, 77 Fed. Reg. at 48,764 (“[W]here a party believes that a specific term
`
`has meaning other than its plain meaning, the party should provide a
`
`statement identifying a proposed construction of the particular term and
`
`where the disclosure supports that meaning.”)).
`
`We disagree with Patent Owner. The applicable provisions, 37 C.F.R.
`
`§§ 104(b)(3), 42.11, 11.18(b)(2) do not require Petitioner to express its
`
`subjective belief regarding the correctness of its proposed claim
`
`constructions. See Western Digital Corp. v. Spex Techs, Inc., IPR2018-
`
`00084, Paper 14 at 10–12 (April 25, 2018) (rejecting the same argument
`
`made here, and distinguishing Toyota Motor Corp. v. Blitzsafe Texas LLC,
`
`Paper 12, IPR2016-00422 (July 6, 2016)). Petitioner complies with our
`
`rules by identifying claim constructions it proposes as the basis for
`
`requesting review of the challenged claims.
`
`Moreover, the standards used for claim construction and the burdens
`
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`IPR2018–00817
`Patent 9,445,251 B2
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`of proof are different in district court than they are in AIA proceedings at the
`
`moment, such that different constructions may be appropriate depending on
`
`the context. In district court proceedings, claims in issued patents are
`
`construed using the framework set forth in Phillips v. AWH Corp., which
`
`emphasizes considering the plain meaning of the claim terms themselves in
`
`light of the intrinsic record. In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341
`
`(Fed. Cir. 2016) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–15
`
`(Fed. Cir. 2005) (en banc)). In AIA proceedings at the present time, the
`
`Board uses the broadest reasonable construction consistent with the
`
`specification, otherwise known as “BRI.” See Cuozzo Speed Tech., LLC v.
`
`Lee, 136 S. Ct. 2131 (2016) (affirming the use of broadest reasonable
`
`construction standard in AIA proceedings despite the possibility of
`
`inconsistent results in district court litigation).
`
`In addition, Fed. R. Civ. P. 8(d)(3) allows a party to take different,
`
`alternative, or even inconsistent positions. See Bancorp Services v. Sun Life
`
`Assur. Co. of Canada, 687 F.3d 1266, 1280 (Fed. Cir. 2012) (citing Fed. R.
`
`Civ. P. 8(d)(3), and holding the party was entitled to take inconsistent
`
`positions); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed.
`
`Cir. 2010) (claims are indefinite, and in the alternative, anticipated); Nippon
`
`Suisan Kaisha Ltd. v. Pronova Biopharma Norge, AS, PGR2017-0033,
`
`Paper 7 (Jan. 17, 2018) (instituting review of alternative positions of
`
`indefiniteness and anticipation/obviousness).
`
`For these reasons, we decline to deny the Petition for the alleged
`
`deficiency in compliance with 37 C.F.R. § 42.104(b)(3) as requested by
`
`Patent Owner.
`
`10
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`IPR2018–00817
`Patent 9,445,251 B2
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`
`2. “Georeferenced Map”
`
`Petitioner proposes that the claim term “georeferenced map” be
`
`construed to mean “a map that includes data relating positions on the map
`
`(e.g., x/y coordinates) to spatial coordinates (e.g., latitude and longitude).”
`
`Pet. 12. Petitioner argues “[t]his construction arises directly from the
`
`claims, which all recite that a georeferenced map ‘includes data relating
`
`positions on the first georeferenced map to spatial coordinates.’” Id.
`
`Petitioner also argues that during the prosecution of the ’251 patent, Patent
`
`Owner amended its pending claims to overcome the prior art, specifically
`
`distinguishing the recited “georeferenced maps” from other maps because
`
`“georeferenced maps” include “data relating positions on the []
`
`georeferenced map to spatial coordinates.” Id. at 13 (citing Ex. 1005, 174–
`
`75). Thus, Petitioner argues, “a ‘georeferenced map’ does not include just
`
`any geographical or location data—it must include data relating positions on
`
`its associated georeferenced map to spatial coordinates.” Id. (citing
`
`Ex. 1002 ¶¶ 29–42, ¶¶ 59–66).
`
`Patent Owner objects to Petitioner’s proposed construction, but does
`
`not propose an alternative construction for the term “georeferenced map.”
`
`See Prelim. Resp. 10–13, 17–18.
`
`Here, the Specification does not provide an express definition for the
`
`term “georeferenced map.” Claim 1, however, recites “the first
`
`georeferenced map includes data relating positions on the first georeferenced
`
`map to spatial coordinates.” Ex. 1001, 15:9–11. The Specification explains,
`
`[t]he internal CPU [of the user device] includes
`databases and software application programs that
`provide for a geographical map and georeferenced
`entities that are shown as display portion 16b that
`
`11
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`IPR2018–00817
`Patent 9,445,251 B2
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`
`includes as part of the display various areas of
`interest in the particular local map section.
`
` Id. at 6:18–23. The Specification goes onto explain,
`
`[t]o use the communication system, a user starts the
`PDA/cellular phone device system by turning on the
`cell phone power and selecting the cell phone and
`network software which causes: a) the cellular
`phone to be activated (if it has not already been
`activated); b) the GPS interface receiver to be
`established; c) a map of the geographic area where
`the operator is located and operator’s own unit
`symbol to appear at the correct latitude and
`longitude on the map on the display;
`
`Id. at 8:43–51 (emphasis added). The map is able to display the location of
`
`the operator’s unit because, as the Specification explains,
`
`[t]he screen display 16b, which is a touch screen,
`provides x and y coordinates of the screen 16b to
`the CPU’s software from a map in a geographical
`database. The software has an algorithm that relates
`the x and y coordinates to latitude and longitude and
`can access a communications net participant’s
`symbol or a fixed or movable entity’s symbol as
`being the one closest to that point.
`
`Id. at 7:2–8. Thus, an important aspect of the map displayed on a user’s
`
`device is the depiction of an accurate location of the user’s symbol on the
`
`map, which is determined by relating the x and y coordinates of the map to
`
`the latitude and longitude of the user’s geographic position, i.e., “spatial
`
`coordinates.” The importance of this feature to the claimed invention is
`
`supported by Dr. Benjamin Bederson’s testimony, Petitioner’s declarant.
`
`See Ex. 1002 ¶¶ 62–63.
`
`Patent Owner confirmed the use of spatial coordinates was a
`
`distinguishing feature of the claimed invention when it sought to distinguish
`
`12
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`IPR2018–00817
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`georeferenced maps from other prior art maps during prosecution of the ’251
`
`patent application. There, Patent Owner argued that a prior art reference did
`
`not teach or suggest a georeferenced map that includes data relating
`
`positions on the map to spatial coordinates (e.g., latitude and longitude).
`
`Ex. 1005, 175.
`
`Thus, we are persuaded that one of ordinary skill in the art reading the
`
`claims in light of the Specification, would understand that “georeferenced
`
`map” means “a map that includes data relating positions on the map (e.g.,
`
`x/y coordinates) to spatial coordinates (e.g., latitude and longitude).”
`
`C. Priority Date
`
`“[T]o gain the benefit of the filing date of an earlier application under
`
`35 U.S.C. § 120, each application in the chain leading back to the earlier
`
`application must comply with the written description requirement of 35
`
`U.S.C. § 112.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378
`
`(Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
`
`1571 (Fed. Cir. 1997)); see also In re Hogan, 559 F.2d 595, 609 (C.C.P.A.
`
`1977) (“[T]here has to be a continuous chain of copending applications each
`
`of which satisfies the requirements of § 112 with respect to the subject
`
`matter presently claimed.” (quoting In re Schneider, 481 F.2d 1350, 1356
`
`(C.C.P.A. 1973)) (alteration in original). Thus, if any application in the
`
`priority chain fails to make the requisite disclosure of subject matter, the
`
`later-filed application is not entitled to the benefit of the filing date of
`
`applications preceding the break in the priority chain.
`
`D. Chain of Claimed Priority
`
`The ’251 patent claims priority through a series of applications that
`
`begins with U.S. Patent Application 10/711,490 (“the ’490 application”),
`
`13
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`which was filed on September 21, 2004, and ultimately issued as U.S. Patent
`
`No. 7,031,728 on April 18, 2006 (Ex. 1007). Ex. 1001, 1:8–28. Several of
`
`these earlier-filed applications are continuation-in-part applications (“CIP”);
`
`CIP applications may add, or remove, subject matter. Petitioner provides a
`
`chart (set out below with annotations redacted) identifying the earlier-filed
`
`applications listed in the ’251 patent. Pet. 18.
`
`
`
`Petitioner’s chart (annotations redacted), shown above, illustrates the
`
`sequence of the related applications listed in the ’251 patent. Id.
`
`
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`14
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`1. The Parties’ Contentions
`
`Petitioner contends that the ’724 patent is prior art under 35 U.S.C.
`
`§ 102(a)(1), because the claims of the ’251 patent are entitled to a filing date
`
`no earlier than October 31, 2014, the filing date of the ’251 patent’s parent
`
`application, U.S. Patent Application No. 14/529,978 (“the ’978 application”)
`
`(Ex. 1004). Pet. 14. Petitioner asserts that the ’410 Application (the ’251
`
`patent’s grandparent application) (Ex. 1006), fails to comply with the written
`
`description requirement of 35 U.S.C. § 112, thereby breaking the chain of
`
`priority that would allow the ’251 patent to have a priority date earlier than
`
`October 31, 2014. Id.
`
`Petitioner argues the ’251 patent’s priority chain is broken because
`
`Patent Owner deleted material from the disclosure of earlier applications in
`
`the priority chain without incorporating by reference the removed material,
`
`then drafted claims based on the deleted material. Pet. 20. Petitioner argues
`
`Patent Owner did not properly incorporate the ’724 patent into later
`
`applications in the priority chain, and by its own admission, the ’724 patent
`
`disclosure is the only application in the chain that could even arguably
`
`support the later-drafted claims in the ’251 patent. Id. Petitioner argues the
`
`’410 Application (the grandparent of the ’251 patent) failed to expressly
`
`include or incorporate the subject matter of the ’724 patent that Patent
`
`Owner relied on throughout prosecution of the ’251 patent for written
`
`description support of the claims at issue here. Id.
`
`In particular, Petitioner asserts that the ’410 Application fails to
`
`provide the required written description support for 1) requesting, retrieving,
`
`and using a second georeferenced map and its georeferencing data; 2) the
`
`full scope of the claimed “group” feature; 3) participating in the group based
`
`15
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`on receiving a message from a second device; and 4) anonymous
`
`communications. Id. at 25–45.
`
`Patent Owner argues that Petitioner has not established that the ’724
`
`patent is prior art to the ’251 patent claims. Prelim. Resp. 14–38. Patent
`
`Owner asserts “the Challenged Claims are entitled to the benefit of the
`
`earliest effective filing date in their priority chain, as identified on the face
`
`of the ’251 Patent.” Id. Patent Owner argues “Petitioner has raised no
`
`legitimate challenge regarding whether the ’724 Patent was ‘incorporated in
`
`the chain’” of priority. Id. at 15. Patent Owner also argues that the “second
`
`georeferenced map,” the “group” limitations, the “based on receiving the
`
`message from the second device, participating in the group,” and the
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`“wherein the first device does not have access to respective Internet Protocol
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`addresses of the second devices” limitations are all supported by the
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`disclosure of the ’410 Application. Id. at 17–38.
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`2. Allocation of Burdens
`
`Petitioner acknowledges that it bears the ultimate burden of
`
`demonstrating unpatentability of the challenged claims. Pet. 15 (citing
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379
`
`(Fed. Cir. 2015)). Petitioner argues, however, the burden of production
`
`shifts to the patent owner once a petitioner provides invalidating art, where
`
`the patent-at-issue claims priority through continuations-in-part and the
`
`Examiner did not expressly address the priority issue. Id. (citing
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305-06 (Fed. Cir.
`
`2008); Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 871 (Fed.
`
`Cir. 2010)).
`
`Patent Owner argues, “it is the Petitioner’s burden to show that the
`
`16
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`Patent 9,445,251 B2
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`claims are not entitled to the earlier priority date.” Prelim. Resp. 14. Patent
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`owner also argues “it remains Petitioner’s burden to show that there is no
`
`continuity of disclosure for the Challenged Claims in the ’410 Application.”
`
`Id. Patent Owner further argues, “Petitioner must demonstrate that the
`
`disclosure [of the ’410 Application] fails to reasonably convey to those
`
`skilled in the art that the inventor was in possession of the invention.” Id. at
`
`15–16.
`
`In AIA proceedings, the petitioner bears the ultimate burden of
`
`demonstrating unpatentability, commonly referred to as the “burden of
`
`persuasion.” Dynamic Drinkware, LLC, 800 F.3d at 1379. However, where
`
`the patent-at-issue claims priority through CIPs, as the ’251 patent does here,
`
`and the Examiner did not expressly address the priority issue during
`
`prosecution, a different burden, the “burden of production,” shifts to the
`
`patent owner once petitioner provides potentially invalidating art. Research
`
`Corp. Techs., 627 F.3d at 871; Tech. Licensing Corp. v. Videotek, Inc., 545
`
`F.3d 1316, 1326–27 (Fed. Cir. 2008); PowerOasis, Inc., 522 F.3d at 1305–
`
`06.
`
`Once the burden of production shifts to patent owner, patent owner
`
`must then show not only the existence of the earlier application, but also
`
`how the written description in the earlier application supports the claim in
`
`order to rely on that earlier filing date. Tech. Licensing Corp. 545 F.3d at
`
`1327. At that point, the relevant inquiry is whether the disclosure in the
`
`earlier application “describe[s] an invention understandable to [the] skilled
`
`artisan and show[s] that the inventor actually invented the invention
`
`claimed” in the challenged patent. Ariad Pharm., Inc. v. Eli Lilly & Co., 598
`
`F.3d 1336, 1351 (Fed. Cir. 2010).
`
`17
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`IPR2018–00817
`Patent 9,445,251 B2
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`
`While Petitioner bears the ultimate burden of demonstrating
`
`unpatentability of the challenged claims, the burden of production shifts to
`
`Patent Owner once Petitioner provides potentially invalidating art, here the
`
`’724 patent, which Petitioner argues was not properly incorporated by
`
`reference in the ’410 Application. Pet. 21–23. See Research Corp. Techs.,
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`627 F.3d at 871; Tech. Licensing Corp., 545 F.3d at 1326–27; PowerOasis,
`
`Inc., 522 F.3d at 1305–06. Patent Owner must then show that the written
`
`description of the ’410 Application supports the challenged claims in order
`
`to rely on the ’410 Application’s earlier filing date. See Tech. Licensing
`
`Corp. 627 F.3d at 1327. Moreover, in order to claim priority back to the
`
`filing date of the ’724 patent, Patent Owner must show the chain is
`
`continuous, and therefore must show also that the intervening applications
`
`provide written description support for the challenged claims. In re
`
`Schneider, 481 F.2d 1350, 1356 (C.C.P.A. 1973).
`
`3. Incorporation by Reference
`
`Petitioner asserts that the ’410 Application fails to properly
`
`incorporate the ’724 patent by reference, Pet. 21–23, the import of which is
`
`that, if correct, the ’724 disclosure may not be relied upon to show the ’410
`
`Application provides written description support for the challenged claims.
`
`The ’410 Application states in relevant part, “[t]he method and operation of
`
`communication devices used herein are described in U.S. Patent No.
`
`7,031,728 which is hereby incorporated by reference and U.S. Patent No.
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`7,630,724.” Ex. 1006 ¶ 5. Petitioner argues that although the ’724 patent is
`
`identified, to be effective as an incorporation by reference, “the host
`
`document must identify with detailed particularity what specific material it
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`incorporates and clearly indicate where that material is found.” Pet. 21
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`18
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`IPR2018–00817
`Patent 9,445,251 B2
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`(quoting Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed.
`
`Cir. 2007) (emphasis in original)). Petitioner argues a person of ordinary
`
`skill in the art would have understood that the phrase, “which is hereby
`
`incorporated by reference,” refers only to the immediately preceding ’728
`
`patent. Id. at 22. Dr. Bederson testifies that a clause beginning with the
`
`word “which” refers only to the item coming before it, and the verb “is” is
`
`singular, meaning that the “which” clause refers only to the preceding ’728
`
`patent and not the ’724 patent. Id. (citing Ex. 1002 ¶¶ 75–77).
`
`Patent Owner argues that the ’251 patent is entitled to the earliest
`
`effective filing date identified in its priority claim on the face of the patent,
`
`which identifies the prior related applications and the patents that issued
`
`from them, including the ’724 patent. Prelim. Resp. 14–15. Patent Owner
`
`cites to similar language in the ’410 Application identifying the ’724 patent.
`
`Id. at 15 (citing Ex. 1006 ¶ 1). Patent Owner, however, fails to cite any legal
`
`authority to support the proposition that the mere identification of the ’724
`
`patent as a prior related application/patent to the ’410 Application is, by
`
`itself, sufficient to act as an incorporation by reference.
`
`“[A] patent’s claims are not entitled to an earlier priority date merely
`
`because the patentee claims priority.” In re NTP, Inc., 654 F.3d 1258, 1276
`
`(Fed. Cir. 2011). “Rather, for a patent’s claims to be entitled to an earlier
`
`priority date, the patentee must demonstrate that the claims meet the
`
`requirements of 35 U.S.C. § 120.” Id. Moreover, to incorporate by
`
`reference in order to satisfy this requirement, “the incorporating [document]
`
`must use language that is express and clear, so as to leave no ambiguity
`
`about the identity of the document being referenced, nor any reasonable
`
`doubt about the fact that the referenced document is being incorporated.”
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`19
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`IPR2018–00817
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`Northrop Grumman Info. Tech., Inc. v. United States, 535 F.3d 1339, 1344
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`(Fed. Cir. 2008).
`
`We are not persuaded by Patent Owner that the ’410 Application
`
`incorporates the ’724 patent by reference. We find Dr. Bederson’s
`
`testimony credible and agree with Petitioner that a person of ordinary skill in
`
`the art would have understood that the phrase, “which is hereby incorporated
`
`by reference,” refers only to the immediately preceding ’728 patent and does
`
`not include the ’724 patent following it. Patent Owner is responsible for the
`
`use of this particular phrasing, and Patent Owner was in the best position to
`
`clarify any possible ambiguity. Given the standard that the ’410 Application
`
`“must use language that is express and clear, so as to leave no ambiguity
`
`about the identity of the document being referenced, nor any reasonable
`
`doubt about the fact that the referenced document is being incorporated,” we
`
`are not persuaded that the ’410 Application incorporates the ’724 patent by
`
`reference. Northrop Grumman Info. Tech., Inc. at 1344 (emphasis altered).
`
`4. Written Description Requirement
`
`As noted above, “to gain the benefit of the filing date of an earlier
`
`application under 35 U.S.C. § 120, each application in the chain leading
`
`back to the earlier application must comply with the written description
`
`requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc., 506 F.3d at 1378
`
`(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
`
`1997)). In order to satisfy the written description requirement, “the
`
`description must ‘clearly allow persons of ordinary skill in the art to
`
`recognize that [the inventor] invented what is claimed.’” Ariad Pharm.,
`
`Inc., 598 F.3d at 1351 (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555,
`
`1562–63 (Fed. Cir. 1991)). “In other words, the test for sufficiency is
`
`20
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`IPR2018–00817
`Patent 9,445,251 B2
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