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`Case 2:17-cv-00513-JRG Document 226-10 Filed 12/14/18 Page 1 of 39 PageID #: 11838Case 2:17-cv-00513-JRG Document 226-10 Filed 12/14/18 Page 1 of 39 PageID #: 11838
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`EXHIBIT 10
`
`EXHIBIT 10EXHIBIT 10
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`

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`Case 2:17-cv-00513-JRG Document 226-10 Filed 12/14/18 Page 2 of 39 PageID #: 11839
`Trials@uspto.gov
`Paper No. 9
`Tel: 571-272-7822
`Entered: November 7, 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 IPR2018–00819
`Patent 9,467,838 B2
`____________
`
`Before DANIEL J. GALLIGAN, CHRISTA P. ZADO, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`

`

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`Patent 9,467,838 B2
`
`I. INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a request for inter partes review of
`claims 1–84 (the “challenged claims”) of U.S. Patent No. 9,467,838 B2
`(Ex. 1001, “the ’838 patent”). Paper 1 (“Pet.”). AGIS Software
`Development, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Petitioner filed a Reply to the Preliminary Response.
`Paper 8.
`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
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one of the challenged claims.
`Accordingly, we institute an inter partes review as to all challenged claims
`and all grounds raised in the Petition. See SAS Institute Inc. v. Iancu, 138 S.
`Ct. 1348, 1359–60 (2018) (holding that a decision to institute under 35
`U.S.C. § 314 may not institute on fewer than all claims challenged in the
`petition).
`
`A. Related Proceedings
`Petitioner advises that the ’838 patent is asserted against Petitioner in
`AGIS Software Development LLC v. Apple Inc., No. 2:17-cv-00516-JRG
`(E.D. Tex.). Pet. 3. Petitioner also advises the ’838 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
`
`2
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`Patent 9,467,838 B2
`(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.). Id. Petitioner further advises
`that it is filing petitions for inter partes review challenging U.S. Patent Nos.
`9,408,055, 9,455,251, and 8,213,970, which are asserted in the above district
`court cases. Id.1
`Patent Owner acknowledges the same proceedings. Paper 4, 2–3.
`
`B. The ’838 Patent
`The ’838 patent generally discloses a method and communication
`system to quickly set up and provide ad hoc, password protected, digital and
`voice networks among users of integrated handheld cellular/PDA/GPS
`phones (“integrated device” or “device”). Ex. 1001, 1:30–47. The
`specification of the ’838 patent (“Specification”) discloses that there is a
`need to be able to set up ad hoc digital and voice networks easily and rapidly
`across different groups of users such as military, first responder, and other
`public and private emergency groups. Id. at 2:5–14. According to the
`Specification, users’ integrated devices need to be able to rapidly coordinate
`activities across groups, for example to be able to communicate with each
`other, without having to identify each other by name, e-mail address, or
`phone number. Id. at 3:45–48.
`The disclosed system includes a plurality of Internet Protocol (“IP”)
`capable integrated devices each having an Advanced Communication
`Software (“ACS”) application program. Id. at 2:54–56. The plurality of
`integrated devices, in conjunction with a remote Server, provides the ability
`
`1 The petitions for inter partes review are in cases IPR2018-00817,
`IPR2018-00818, and IPR2018-00821.
`
`3
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`to establish an ad hoc network of devices so that the devices can either
`broadcast to a group or selectively transmit to each other. Id. at 2:54–60. A
`user of an integrated device establishes the ad hoc network or joins an
`existing ad hoc network by entering the remote Server’s IP address, an ad
`hoc event name such as “Katrina,” and a password in an appropriate prompt
`on the user’s device. Id. at 3:49–52, 10:38–52. The user also enters the
`user’s name and phone number. Id.
`Upon establishing or joining the network, the user’s device
`commences reporting information to the remote server, including the user’s
`IP address and GPS derived location. Id. at 10:53–61. Initially, when only
`one device has joined the network, the remote server retains the information
`reported by the device. Id. at 10:61–63. When additional devices join the
`network by using the same ad hoc event name and password and report their
`information to the remote server, the remote server can use the network
`participant devices’ IP addresses to pass location information automatically
`between the devices. Id. at 10:63–11:2.
`According to the Specification, the ACS application program also
`provides for a geographical map that displays georeferenced entities on a
`user’s device display. Id. at 6:10–15. The map is displayed on a touch
`screen that the device user may interact with using his/her finger or a stylus.
`Id. at 5:33–36, 6:61. The map may display symbols depicting permanent
`geographical locations and buildings. Id. at 6:35–37. The map may also
`display symbols, such as a triangle or square, that represent participants of
`the communication network. Id. at 6:51–57. The latitude and longitude of
`the device corresponding to a particular symbol displayed on the map are
`related by software to x and y coordinates on the map. Id. at 6:49–58.
`Accordingly, the location of the symbol on the map corresponds to the
`
`4
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`device’s physical location provided by the device’s GPS location data. Id. at
`5:33–36, 6:54–67. In addition, a database may associate the latitude and
`longitude of a particular symbol displayed on the map with a specific cell
`phone number, IP address, and email address. Id. at 6:58–61. One feature
`of the disclosed system is that a user may initiate contact with another user
`by selecting with a stylus the symbol on the user’s map corresponding to the
`user to be contacted. The device of the initiator detects the x and y
`coordinates of where the stylus touched the display screen, and software
`translates the x and y coordinates to latitude and longitude. The software
`then searches the device database of the initiator device for information
`corresponding to the latitude and longitude, such as an associated phone
`number or IP address. The software then initiates appropriate contact, for
`example by initiating a phone or Voice over IP (“VoIP”) call to the device of
`the user to be contacted. Id. at 56–67.
`
`C. Challenged Claims
`Petitioner challenges claims 1–84 of the ’838 patent. Claims 1, 54,
`55, and 84 are independent, and are substantially similar. Claim 1 is
`illustrative.
`
`1. A computer-implemented method comprising:
`performing, by a first device:
`[a] joining a communication network
`corresponding to a group, wherein joining the
`communication network comprises transmitting a
`message including an identifier corresponding to
`the group;
`[b] participating in the group, wherein
`participating in the group includes sending first
`location information to a first server and receiving
`second location information from the first server,
`
`5
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`the first location information comprising a location
`of the first device, the second location information
`comprising one or more locations of one or more
`respective second devices included in the group;
`[c] presenting, via an interactive display of the first
`device, a first interactive, georeferenced map and a
`first set of one or more user-selectable symbols
`corresponding to a first set of one or more of the
`second devices, wherein the first set of symbols
`are positioned on the first georeferenced map at
`respective positions corresponding to the locations
`of the first set of second devices, and wherein first
`georeferenced map data relate positions on the first
`georeferenced map to spatial coordinates;
`[d] sending, to a second server, a request for
`second georeferenced map data different from the
`first georeferenced map data;
`[e] receiving, from the second server, the second
`georeferenced map data;
`[f] presenting, via the interactive display of the
`first device, a second georeferenced map and a
`second set of one or more user-selectable symbols
`corresponding to a second set of one or more of the
`second devices, wherein the second set of symbols
`are positioned on the second georeferenced map at
`respective positions corresponding to the locations
`of the second set of second devices, and wherein
`the second georeferenced map data relate positions
`on the second georeferenced map to spatial
`coordinates; and
`[g] identifying user interaction with the interactive
`display selecting one or more of the second set of
`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, sending third data to the selected one or
`more second devices via the first server.
`
`6
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`Patent 9,467,838 B2
`Ex. 1001, 14:52–15:31 (brackets added).
`
`D. Relevant References
`Petitioner refers to 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).
`
`E. Asserted Ground of Unpatentability
`Petitioner contends that claims 1–84 of the ’838 patent are
`unpatentable under 35 U.S.C. § 103 over the ’724 patent. Pet. 5, 36–61.
`
`II. DISCUSSION
`
`A. Level of Ordinary Skill
`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 ’838 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. 8. Such a person of ordinary skill, Petitioner asserts, would have been
`capable of implementing mobile applications, including those that display
`
`7
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`Patent 9,467,838 B2
`maps. Id. Petitioner asserts further that this description is approximate, and
`a higher level of education or skill may make up for less experience, and
`vice-versa. Id.
`Patent Owner does not provide any evidence or argument as to the
`level of ordinary skill in the art. See generally Prelim. Resp. 1–41.
`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 with the
`exception of the language “at least.”
`
`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).2 Consistent with this 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 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner proposes constructions for the terms “georeferenced map
`data” and “georeferenced map.” Pet. 10–12. Patent Owner does not propose
`
`2 This standard applies to inter parties reviews filed before November 13,
`2018. 77 Fed. Reg. 48727 (Aug. 14, 2012) (codified at 37 C.F.R. §
`42.100(b)), as amended at 81 Fed. Reg. 18766 (Apr. 1, 2016); see also 83
`Fed. Reg. 51340 (Oct. 11, 2018) (changing the standard for interpreting
`claims in inter partes reviews filed on or after November 13, 2018).
`
`8
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`constructions for any claim terms. See generally Prelim. Resp. 1–41.
`We determine, for purposes of this Decision, that no claim terms
`require express construction.
`1. Sufficiency of Petitioner’s Proposed Claim Constructions
`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).
`Prelim. Resp. 4–17. Namely, Patent Owner argues Petitioner has failed to
`identify for the Board how each claim term is to be construed because
`Petitioner’s claim construction positions in this proceeding are inconsistent
`with those taken by Petitioner in district court. Id. Based on these alleged
`inconsistent positions, Patent Owner asserts that Petitioner has “failed to
`disclose the claim constructions that Petitioner believes are correct under
`applicable law and should therefore be applied by the Board.” Id. at 10.
`Patent Owner further contends that Petitioner’s claim construction positions
`violate 37 C.F.R. §§ 42.11, 11.18(b)(2) on grounds that Petitioner “has
`knowingly advanced conflicting positions before in the District Court
`Litigation and in this proceeding.” Id. at 14.
`Patent Owner alleges that in district court Petitioner argued that
`several “device” limitations in claim 54 of the ’838 patent should be
`construed as means-plus-function under 35 U.S.C. § 112(f), and further that
`claim 54 is indefinite. Prelim. Resp. 5 (citing Ex. 2001, 20–38; Ex. 2003,
`13–31). In contrast, Petitioner makes no such arguments in this proceeding.
`Id. at 4–5; see generally Pet. 1–62.
`Patent Owner also asserts that in district court Petitioner argued that
`the terms “georeferenced map” and “georeferenced map data” should
`receive their plain and ordinary meaning, whereas in this proceeding
`Petitioner has proposed express constructions for these terms. Prelim.
`
`9
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`Resp. 11. In addition, according to Patent Owner, Petitioner proposed
`express constructions in district court for the terms “group,” “an identifier
`corresponding to the group,” and “database of entities,” but in this
`proceeding Petitioner does not propose express constructions for these
`terms. Id. at 11–12.
`Contrary to Patent Owner’s arguments, the applicable provisions of
`37 C.F.R. §§ 42.104(b)(3), 42.11, and 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, slip op. at 10–12 (PTAB April 25, 2018)
`(rejecting the same argument made here, and distinguishing Toyota Motor
`Corp. v. Blitzsafe Texas LLC, IPR2016–00422, Paper 12 (PTAB July 6,
`2016)). Moreover, the standards used for claim construction and the burdens
`of proof are different in the district court than they are in this AIA
`proceeding, 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 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 this AIA proceeding, however, we must apply 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).
`
`10
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`Patent 9,467,838 B2
`We decline to deny the Petition for failure to comply with 37 C.F.R.
`§§ 104(b)(3), 42.11, and 11.18(b)(2) on the grounds requested by Patent
`Owner.
`
`C. Priority Date of the ’838 Patent
`The ’838 patent claims priority through a series of applications that
`begins with U.S. Patent Application 10/711,490 (“the ’490 application”),
`that 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, 1:8–25. Several of
`the earlier-filed applications are continuation-in-part applications (“CIP”),
`which may add, or remove, subject matter. Petitioner provides a chart (set
`out below with annotations redacted) identifying the earlier filed
`applications listed in the ’838 patent. Pet. 17.
`
`11
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`
`Petitioner’s chart (annotations redacted), shown above, illustrates the
`sequence of the related applications listed in the ’838 patent. Id.
`Even though the ’838 patent claims priority, through a series of
`applications, to the ’490 application, the ’838 patent does not automatically
`receive the benefit of the ’490 filing 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.(cid:15)(cid:3)(cid:20)(cid:19)(cid:26)(cid:3)(cid:41)(cid:17)(cid:22)(cid:71)(cid:3)(cid:20)(cid:24)(cid:25)(cid:24)(cid:15)(cid:3)(cid:20)(cid:24)(cid:26)(cid:20)(cid:3)(cid:11)(cid:41)(cid:72)(cid:71)(cid:17)(cid:38)(cid:76)(cid:85)(cid:17)(cid:20)(cid:28)(cid:28)(cid:26)(cid:12)(cid:12)(cid:30)(cid:3)(cid:3031)see also In re Hogan,
`559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of
`
`12
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`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 (CCPA 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.
`
`1. The Parties’ Contentions
`Petitioner contends that the claims of the ’838 patent are entitled to a
`filing date no earlier than October 31, 2014, the filing date of the ’838
`patent. Pet. 12, 16. According to Petitioner, the chain of priority that would
`allow the ’838 patent to have a priority date earlier than October 31, 2014 is
`broken because the ’410 Application (the ’838 patent’s parent application)
`(Ex. 1006) fails to provide written description support under 35 U.S.C. § 112
`for the ’838 patent claims. Id. at 12–13, 22–25, 27–36. Petitioner argues
`further that the lack of written description is not resolved by incorporating
`by reference earlier applications, because the ’410 application does not
`properly incorporate the only application in the chain—the ’724 patent—
`that could even arguably support the later-drafted claims in the ’838 patent.
`Id. at 18–22. As a result of this asserted break in the priority chain,
`Petitioner argues that the ’724 patent is prior art under 35 U.S.C.
`§ 102(a)(1). Id. at 36.
`Patent Owner argues that Petitioner has not established that the ’724
`patent is prior art to the ’838 patent claims. Prelim. Resp. 17–36. 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 ’838 Patent,” and “Petitioner has not applied the correct standard and
`
`13
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`has not met its burden to show that the ’724 Patent is prior art.” Id. at 18–
`19. Patent Owner also disputes Petitioner’s assertions regarding failure of
`the ’410 application to provide written description support for specific claim
`limitations in the ’838 patent. Id. at 21–36.
`2. Allocation of Burdens
`Petitioner acknowledges that it bears the ultimate burden of
`demonstrating unpatentability of the challenged claims. Pet. 13 (citing
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379
`(Fed. Cir. 2015)). However, a different burden, the burden of production,
`shifts to the patent owner once a petitioner provides invalidating art that
`predates the filing date of the challenged patent, 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).
`Petitioner has presented art, i.e., the ’724 patent, that predates the
`filing date of the ’838 patent. Therefore, the burden of production has
`shifted to Patent Owner, who must show not only the existence of the earlier
`applications through which Patent Owner seeks to claim priority, but also
`how the written description in the earlier applications supports the
`challenged claims. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1327 (Fed. Cir. 2008). The relevant inquiry is whether the disclosure in the
`earlier applications “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) (en banc). In order to claim priority back
`to the filing date of the ’724 patent, Patent Owner must show the chain is
`
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`continuous and therefore must show not only that the earliest application in
`the chain provides written description support for the challenged claims, but
`that all intervening applications in the chain also provide support. In re
`Schneider, 481 F.2d 1350, 1356 (CCPA 1973).
`3. Incorporation by Reference
`Petitioner asserts that the ’410 application fails to properly incorporate
`Petitioner asserts that the ’410 application fails to properly incorporate
`the ’724 patent by reference, Pet. 20–22, and therefore, the ’724 disclosure
`the ’724 patent by reference, Pet. 20–22, and therefore, the ’724 disclosure
`may not be relied upon to show the ’410 application provides written
`may not be relied upon to show the ’410 application provides written
`description support for the challenged claims. The ’410 application states in
`description support for the challenged claims. The ’410 application states in
`relevant part, “[t]he method and operation of communication devices used
`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
`herein are described in U.S. Patent No. 7,031,728 which is hereby
`incorporated by reference and U.S. Patent No. 7,630,724.” Ex. 1006 ¶ 5.
`incorporated by reference and U.S. Patent No. 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 incorporates and clearly
`indicate where that material is found.” Pet. 21–22 (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 and not the ’724 patent,
`which follows the dependent clause. Id. at 20. The 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.
`Patent Owner argues that the ’838 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
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`from them, including the ’724 patent. Prelim. Resp. 18. Patent Owner cites
`to similar language in the ’410 application identifying the ’724 patent. Id.
`(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 1268, 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.”
`Northrop Grumman Info. Tech., Inc. v. United States, 535 F.3d 1339, 1344
`(Fed. Cir. 2008).
`We are not persuaded by Patent Owner that the ’410 application
`We are not persuaded by Patent Owner that the ’410 application
`incorporates the ’724 patent by reference. We agree with Petitioner that a
`incorporates the ’724 patent by reference. We agree with Petitioner that a
`person of ordinary skill in the art would have understood that the phrase,
`person of ordinary skill in the art would have understood that the phrase,
`“which is hereby incorporated by reference,” refers only to the immediately
`“which is hereby incorporated by reference,” refers only to the immediately
`preceding ’728 patent and does not include the ’724 patent following it.
`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 is responsible for the use of this particular phrasing, and
`Patent Owner was in the best position to clarify any possible ambiguity.
`Patent Owner was in the best position to clarify any possible ambiguity.
`Given the standard that the ’410 application “must use language that is
`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
`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
`document being referenced, nor any reasonable doubt about the fact that the
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`referenced document is being incorporated,” we are not persuaded that the
`referenced document is being incorporated,” we are not persuaded that the
`’410 application incorporates the ’724 patent by reference. Northrop
`’410 application incorporates the ’724 patent by reference. Northrop
`Grumman Info. Tech., Inc., 535 F.3d at 1344 (emphasis altered).
`Grumman Info. Tech., Inc., 535 F.3d 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. 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)). 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 whether the disclosure of the application relied upon
`reasonably conveys to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.” Id.; see also
`Ralston Purina Co. v. Far–Mar–Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
`1985).
`The test for sufficiency requires “an objective inquiry into the four
`corners of the specification from the perspective of a person of ordinary skill
`in the art. Based on that inquiry, the specification must describe an
`invention understandable to that skilled artisan and show that the inventor
`actually invented the invention claimed.” Ariad Pharm., Inc., 598 F.3d at
`1351.
`
`As we discussed supra, the burden falls on Patent Owner, not
`Petitioner, to demonstrate that the ’410 application and other intermediate
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`applications in the priority chain satisfy the written description requirement.
`Patent Owner incorrectly asserts that it does not bear this burden. See, e.g.,
`Prelim. Resp. 19–20 (“Petitioner has not applied the correct standard and has
`not met its burden to show that the ’724 Patent is prior art. . . . Petitioner
`only challenges priority based on the content of the ’410 Application . . .
`[and] has only challenged the sufficiency of the disclosure with regard to
`two limitations”). For reasons discussed below, Patent Owner has not
`satisfied its burden to show written description support for the claims of the
`’838 patent in applications preceding the application for the ’838 patent.
`Petitioner asserts that the ’410 application fails to provide written
`description support for 1) requesting an