Case 2:17-cv-00513-JRG Document 226-11 Filed 12/14/18 Page 1 of 34 PageID #: 11877
`Case 2:17-cv-00513-JRG Document 226-11 Filed 12/14/18 Page 1 of 34 PageID #: 11877
`
`EXHIBIT 11
`EXHIBIT 1 1
`
`
`

`

`Case 2:17-cv-00513-JRG Document 226-11 Filed 12/14/18 Page 2 of 34 PageID #: 11878
`Trials@uspto.gov
`Paper 9
`Tel: 571-272-7822
`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 IPR2018–00818
`Patent 9,408,055 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
`
`

`

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`Patent 9,408,055 B2
`
`I. INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a request for inter partes review of
`claims 1–54 (the “challenged claims”) of U.S. Patent No. 9,408,055 B2
`(Ex. 1001, “the ’055 patent”). Paper 1 (“Pet.”). AGIS Software
`Development, LLC (“Patent Owner”) filed a Preliminary Response. Paper6
`(“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 ’055 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.). Pet. 2. Petitioner also advises the ’055
`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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`Patent 9,408,055 B2
`Patent Nos. 8,213,970, 9,467,838, and 9,455,251, which are asserted in the
`above litigations. Id.
`Patent Owner acknowledges the same proceedings. Paper 5, 2–3.
`
`B. The ’055 Patent
`The ’055 patent specification (the “Specification”) generally discloses
`rapidly establishing an ad hoc network of devices (e.g., smartphones, PDAs,
`or personal computers) with users, such as first responders, logging onto a
`network using the network’s name and security key (a common “password”
`for everyone). Ex. 1001, Title, Abstract, 10:55–57 (devices sign in with “the
`same ad hoc event name and password”). Once logged on, the users’
`devices exchange each other’s location information via a remote server, and
`each participant’s location is displayed as a user-selectable symbol correctly
`positioned on an interactive display of a georeferenced map. Id. at 6:47–
`7:40; Fig. 1. Users may communicate or send data to another user by
`selecting the user’s symbol and the desired action. Id.
`Figure 1 of the ’055 patent is set out below.
`
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`
`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 5:21–42, 6:49–65.
`
`C. Challenged Claims
`Petitioner challenges claims 1–54 of the ’055 patent. Claims 1, 28,
`41, and 54 are independent and are substantially similar with some slight
`differences. Claim 1 is illustrative.
`1. A method comprising:
`performing by a first device:
`obtaining contact information of a plurality of
`second devices, wherein the contact information
`comprises respective telephone numbers of the
`second devices;
`
`4
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`facilitating initiation of Internet Protocol (IP) based
`communication between the first device and the
`respective second devices by using respective
`telephone numbers to send, from the first device to
`the second devices, respective Short Message
`Service (SMS) messages including a telephone
`number of the first device and information usable b
`the respective second device to send IP-based
`communication to the first device;
`receiving respective IP-based responses to the SMS
`messages, wherein the IP-based responses to the
`SMS messages include location information of the
`respective second devices;
`transmitting IP-based messages including a location
`of the first device to the respective second devices;
`presenting, via an interactive display of the first
`device, an interactive map and a plurality of user
`selectable symbols corresponding to the plurality of
`second devices, wherein the symbols are positioned
`on the map at respective positions corresponding to
`the respective locations of the second devices;
`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 user interaction with the display
`specifying an action and, based thereon, sending
`data to the one or more second devices;
`receiving user input via user interaction with the
`interactive display of the first device, the user input
`specifying a location and a symbol corresponding to
`an entity other than the first device and the second
`devices; and
`based on the user input, adding the user-specified
`symbol to the interactive display at a position on the
`interactive map corresponding to the user-specified
`location, and transmitting the user-specified symbol
`and location to the second devices for addition of
`
`5
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`the user-specified symbol to respective interactive
`displays of the second devices at respective
`positions
`on
`respective
`interactive maps
`corresponding to the user-specified location.
`Ex. 1001, 14:38–15:16.
`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).
`
`E. Asserted Ground of Unpatentability
`Petitioner contends that claims 1–54 of the ’055 patent are
`unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 7,630,724. Pet. 4.
`Petitioner asserts the ’724 patent is prior art under 35 U.S.C. §102(a)(1),
`because the claims of the ’055 patent are entitled to a filing date no earlier
`than October 31, 2014, the filing date of its immediate parent, U.S. Patent
`No. 9,467,838. Pet. 8. Petitioner asserts that the ’410 Application (the ’055
`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 ’055 patent to have an earlier priority date. Id.
`
`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
`
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`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 ’055 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,
`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
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`the Petition fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3);
`namely, that Petitioner has failed to identify for the Board how each claim
`term is to be construed. Prelim. Resp. 4–14.
`Patent Owner argues that Petitioner has taken inconsistent positions
`on claim construction in district court. Id. at 5. For example, in this
`proceeding, Patent Owner asserts Petitioner contends that each term of
`apparatus claims 28–40 should be given its plain and ordinary meaning. Id.
`However, in district court proceedings, Patent Owner asserts Petitioner
`contends that “numerous limitations of apparatus claims 28–40” are
`indefinite under 35 U.S.C. § 112(f). Id. at 5–10.
`Patent Owner argues, “[t]he Petition advances inconsistent
`constructions for the[] terms [‘group,’ ‘SMS messages,’ ‘the other symbol,’
`and ‘user selection of the sub-net’] as compared to Petitioner’s position in
`the District Court Litigation.” 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 12–14. 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 14 (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–
`
`8
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`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
`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
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`indefiniteness and anticipation/obviousness).
`Here, Petitioner proposes that the claim terms be accorded their
`broadest reasonable interpretation. Pet. 8. Patent Owner objects to
`Petitioner’s position, but does not propose construction for any of the claim
`terms. See Prelim. Resp. 4–14.
`For purposes of this decision, we do not find it necessary to construe
`expressly any claim terms. For the reasons stated above, 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.
`
`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. (cid:20)(cid:28)(cid:28)(cid:26)(cid:12)(cid:12)(cid:30)(cid:3031)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 ’055 patent claims priority through a series of applications that
`begins with U.S. Patent Application 10/711,490 (“the ’490 application”),
`
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`Patent 9,408,055 B2
`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 ’055 patent. Pet. 13.
`
`Petitioner’s chart (annotations redacted), shown above, illustrates the
`sequence of the related applications listed in the ’055 patent. Id.
`
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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 ’055 patent are entitled to a filing date
`no earlier than October 31, 2014, the filing date of the ’055 patent’s parent
`application, U.S. Patent Application No. 14/529,978 (“the ’978 application”)
`(Ex. 1004). Pet. 8. Petitioner asserts that the ’410 Application (the ’055
`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 ’055 patent to have a priority date earlier than
`October 31, 2014. Id.
`Petitioner argues the ’055 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. 14. 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 ’055 patent. Id. at 14–15. Petitioner
`argues the ’410 Application (the grandparent of the ’055 patent) failed to
`expressly include or incorporate the subject matter of the ’724 patent that
`Patent Owner relied on throughout prosecution of the ’055 patent for written
`description support of the claims at issue here. Id.
`In particular, Petitioner asserts the ’410 Application provides no
`written support for the specific combination of SMS (Short Message
`Service) and IP (Internet Protocol) message steps to initiate IP-based
`location sharing required by all of the claims. Id. at 9, 18–28. Petitioner
`also asserts the ’410 Application lacks support for a user specifying a
`
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`symbol corresponding to a new entity. Id. at 9, 28–35.
`Patent Owner argues that Petitioner has not established that the ’724
`patent is prior art to the ’055 patent claims. Prelim. Resp. 14–26. Patent
`Owner asserts “[t]he Challenged Claims are entitled to the benefit of the
`earliest effective filing date in their priority chain, as identified on the face
`of the ’055 Patent.” Id. at 15. Patent Owner argues the Petitioner fails to
`show that facilitating the initiation of IP based communication limitations
`are not supported by the disclosure of the ’410 Application. Id. at 17–21.
`Patent Owner also argues that the “user-specified symbol” limitations are
`adequately supported by the disclosure of the ’410 Application. Id. at 22–
`26.
`
`2. Allocation of Burdens
`Petitioner acknowledges that it bears the ultimate burden of
`demonstratingunpatentability of the challenged claims. Pet. 9 (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
`claims are not entitled to the earlier priority date.” Prelim. Resp. at 15.
`Patent owner also argues “Petitioner has the 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
`
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`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
`16.
`
`In AIA proceedings, the petitioner bears the ultimate burden of
`demonstratingunpatentability, 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 ’055 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).
`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 that the intervening applications
`provide written description support for the challenged claims. In re
`Schneider, 481 F.2d at 1356.
`3. Incorporation by Reference
`Petitioner asserts that the ’410 Application fails to properly
`Petitioner asserts that the ’410 Application fails to properly
`incorporate the ’724 patent by reference, Pet. 15–18, the import of which is
`incorporate the ’724 patent by reference, Pet. 15–18, the import of which is
`that, if correct, the ’724 disclosure may not be relied upon to show the ’410
`that, if correct, the ’724 disclosure may not be relied upon to show the ’410
`Application provides written description support for the challenged claims.
`Application provides written description support for the challenged claims.
`The ’410 Application states in relevant part, “[t]he method and
`The ’410 Application states in relevant part, “[t]he method and
`operation of communication devices used herein are described in U.S. Patent
`operation of communication devices used herein are described in U.S. Patentnn
`No. 7,031,728 which is hereby incorporated by reference and U.S. Patent
`No. 7,031,728 which is hereby incorporated by reference and U.S. Patent
`No. 7,630,724.” Ex. 1006 ¶ 5. Petitioner argues that although the ’724
`No. 7,630,724.” Ex. 1006 ¶ 5.
`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. 15 (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 16. Dr. Bederson testifies that a clause beginning with
`the word “which” refers only to the item coming before it, and the verb “is”
`
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`is singular, meaning that the “which” clause refers only to the preceding
`’728 patent and not the ’724 patent. Id. (citing Ex. 1002 ¶¶ 43–45).
`Patent Owner argues that the ’055 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. 15–16. Patent Owner
`asserts the ’410 Application also claims priority to the ’724 patent. Id. at 16.
`Patent Owner, however, fails to cite any legal authority to support the
`proposition that a patent is entitled to the earliest filing date identified in its
`priority claim on the face of the patent, or that the mere identification of a
`patent as a prior related application/patent is, by itself, sufficient to act as an
`incorporation by reference.
`Contrary to Patent Owner’s assertions, “[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.” 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 find Dr. Bederson’s
`incorporates the ’724 patent by reference. We find Dr. Bederson’s
`testimony credible and agree with Petitioner that a person of ordinary skill in
`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
`the art would have understood that the phrase, “which is hereby incorporated
`
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`by reference,” refers only to the immediately preceding ’728 patent and does
`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
`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
`use of this particular phrasing, and Patent Owner was in the best position to
`clarify any possible ambiguity in language. Given the standard that the ’410
`clarify any possible ambiguity in language. Given the standard that the ’410
`Application “must use language that is express and clear, so as to leave no
`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
`ambiguity about the identity of the document being referenced, nor any
`reasonable doubt about the fact that the referenced document is being
`reasonable doubt about the fact that the referenced document is being
`incorporated,” we are not persuaded that the ’410 Application incorporates
`incorporated,” we are not persuaded that the ’410 Application incorporates
`the ’724 patent by reference. Northrop Grumman Info. Tech., Inc., 535 F.3d
`the ’724 patent by reference. Northrop Grumman Info. Tech., Inc., 535 F.3d
`at 1344 (emphasis altered).
`at 1344 (emphasis altered).
`4. Written DescriptionRequirement
`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
`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
`
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`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.2d at
`1351. As we discussed supra, the burden to demonstrate that the ’410
`Application satisfies this test has shifted to Patent Owner, and therefore is
`not on Petitioner.
`Petitioner contends the ’055 patent’s claims are not adequately
`described and lack written description support in the ’410 Application in two
`ways: 1) the ’410 Application does not describe the specific steps for
`initiating IP-based location sharing as recited in the independent claims; and
`2) the ’410 Application does not describe user input specifying a particular
`symbol when adding a new entity to the display as recited in the independent
`claims. See Pet. 8–9, 18–27.
`Patent Owner disputes Petitioner’s contentions, and argues that “[t]he
`disclosure of the ’410 Application reasonably conveys to one of skill in the
`art that the inventor was in possession of the Challenged Claims.” Prelim.
`Resp. 17.
`
`a. Initiating IP Based Communication
`Independent claim 1 of the ’055 patent is a method claim performed
`by a first device that obtains the telephone number contact information of a
`plurality of second devices, where the first device, in part,
`facilitate[es] initiation of Internet Protocol (IP)
`based communication between the first device and
`the respective second devices by using [the]
`respective telephone numbers to send, from the first
`device to the second devices, respective Short
`Message Service (SMS) messages including a
`telephone number of
`the first device and
`information usable b[y] the respective second
`
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`device to send IP-based communication to the first
`device;
`Ex. 1001, 14:44–52.
`As noted above, the burden of production is on Patent Owner to show
`that the ’410 Application provides adequate written description support for
`this l