UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP INC.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`
`
`Patent No. 8,678,550
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,678,550
`
`CHALLENGING CLAIMS 1-4
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`Page
`
` I. 
`
`INTRODUCTION .......................................................................................... 1 
`
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 2 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 2 
`
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 2 
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 3 
`
`Service Information under 37 C.F.R. § 42.8(b)(4) ............................... 4 
`
`III. 
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ...................................... 4 
`
`IV.  GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104 ........................ 4 
`
`V. 
`
`THE ’550 PATENT AND ITS PROSECUTION .......................................... 4 
`
`A. 
`
`B. 
`
`Summary of the Prosecution History ................................................... 4 
`
`Brief Description of the Patent ............................................................. 5 
`
`VI.  THE PRIOR ART ........................................................................................... 9 
`
`A. 
`
`B. 
`
`Summary of the Prior Art ..................................................................... 9 
`
`Brief Description of the Prior Art ........................................................ 9 
`
`VII.  STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................. 10 
`
`A. 
`
`B. 
`
`C. 
`
`Claims for Which Review Is Requested ............................................ 10 
`
`Statutory Grounds of Challenge ......................................................... 10 
`
`Proposed Claim Constructions ........................................................... 10 
`
`1. 
`
`2. 
`
`“laminated ink distribution stack” ........................................... 11 
`
`“transitional ducts” ................................................................... 14 
`
`VIII.  DETAILED GROUNDS FOR UNPATENTABILITY ............................... 15 
`
`i
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`A. 
`
`Priority Date for the ’550 Patent ........................................................ 16 
`
`1. 
`
`2. 
`
`3. 
`
`The ’550 Patent’s Purported Chain of Priority ........................ 16 
`
`The ’751 Applicant Failed to Comply with the Relevant
`Requirements ........................................................................... 18 
`
`The Priority Date of the ’751 Application and ’550 Patent
`Is October 28, 2004 .................................................................. 23 
`
`B. 
`
`Ground 1 ............................................................................................. 24 
`
`1. 
`
`Ground 1: Claims 1-4 Are Anticipated under 35 U.S.C.
`§ 102(b) by Silverbrook WO ’849. .......................................... 24 
`
`C. 
`
`Claim Chart for Ground 1 .................................................................. 45 
`
`IX.  CONCLUSION ............................................................................................. 59 
`
`
`
`ii
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`

`
`
`
`HP
`Exhibit #
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`Ex. 1010
`
`
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 8,678,550 to Silverbrook
`Declaration of Stephen Pond, Ph.D.
`File History of U.S. Patent 8,678,550
`PCT Pub. No. WO 01/89849 A1 to Silverbrook
`Curriculum Vitae of Stephen Pond, Ph.D.
`Excerpt from American Heritage College Dictionary (4th ed. 2007)
`Excerpt from McGraw-Hill Dictionary of Scientific and Technical
`Terms (5th ed. 1994)
`Certified Translation of Final Judgment in Docket No. 21 O
`20498/15 before Regional Court of Munich I dated January 29,
`2016
`File History of U.S. Patent No. 6,966,625
`Memjet’s Responsive Claim Constructions served March 7, 2016 in
`Case No. 3:15-cv-01769-BEN-BLM (S.D. Cal.)
`
`iii
`
`

`
`Attorney Docket No. 069700-5010
`
`I.
`
`INTRODUCTION
`
` As will be shown below, claims 1-4 of U.S. Patent No. 8,678,550 (“the ’550
`
`patent,” Ex. 1001) should be found unpatentable under pre-AIA 35 U.S.C. § 102.
`
`By failing to comply with statutory requirements, the ’550 patent is not entitled to
`
`the priority of the earliest date claimed. In one of the applications that precedes the
`
`’550 patent in its purported chain of priority, the applicant attempted to make an
`
`improper and untimely priority claim in violation of the patent statute. In
`
`particular, the applicant failed to comply with the statute which requires a showing
`
`that the delayed priority claim was unintentional and a payment of the requisite
`
`fee. Rather, the purported priority claim came by way of an amendment, which the
`
`applicant stated was merely an “update[] . . . to show the appropriate continuity
`
`details.” The applicant failed to inform the Examiner that the priority claim was
`
`new (and untimely). Removing this invalid priority claim, the earliest priority date
`
`to which the ’550 patent is entitled is October 28, 2004.
`
`Moreover, years earlier, the applicant filed three PCT applications having
`
`disclosures nearly identical to that of the ’550 patent, namely PCT Application
`
`Nos. PCT/AU00/00594, PCT/AU00/00596, and PCT/AU00/00597. Because these
`
`PCT applications published on November 29, 2001, more than one year before the
`
`’550 patent’s earliest valid priority date, they clearly invalidate the ’550 patent
`
`under 35 U.S.C. § 102(b). For simplicity, only one of the PCT publications is
`
`1
`
`

`
`Attorney Docket No. 069700-5010
`
`discussed in this Petition.
`
`Accordingly, pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100 et seq.,
`
`Petitioner HP Inc. (“Petitioner”) hereby requests Inter Partes Review (hereinafter
`
`“IPR”) for claims 1-4 of the ’550 patent.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), the following mandatory notices are
`
`provided as part of this Petition.
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`
`HP Inc. (formerly known as Hewlett-Packard Company) is the real party-in-
`
`interest for the Petitioner.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`As of the filing date of this Petition, the ’550 patent is involved in litigation
`
`in the Southern District of California, captioned Memjet Technology Limited v.
`
`Hewlett-Packard Company, Case No. 3:15-cv-01769-BEN-BLM. The ’550 patent
`
`is the subject of another petition for IPR filed by Petitioner concurrently with this
`
`petition. Moreover, Petitioner brings to the Board’s attention the following foreign
`
`proceedings relating to European Patent No. 1 292 451 (“the EP ’451 patent”):
`
`Request for Preliminary Injunction (No. 21 O 20498/15) filed on November 13,
`
`2015 in Munich, Germany; Nullity Suit filed on Dec. 16, 2015 in the German
`
`Federal Patent Court; Petition (2016 No. 1PAP) and Plenary Summons (2016 No.
`
`2
`
`

`
`Attorney Docket No. 069700-5010
`
`776P) filed on January 28, 2016 in the High Court in Ireland; Claims (HP-2016-
`
`000005 and HP-2016-000006) filed on January 28, 2016 in the High Court of
`
`Justice in the United Kingdom; and Main Action (No. 4a O 8/16) filed on February
`
`5, 2016 in Dusseldorf, Germany. The EP ’451 patent is directed to subject matter
`
`similar to that of the ’550 patent, and has a nearly-identical specification.
`
`Finally, although unrelated to the ’550 patent, Petitioner filed petitions
`
`requesting IPR for other patents in the district court suit, including U.S. Patent
`
`Nos. 9,056,475 (IPR2016-00356); 7,156,492 (IPR2016-00537); 6,575,549
`
`(IPR2016-00746); and 6,880,914 (IPR2016-00752).
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
`
`following designation of counsel:
`
`Lead Counsel: Dion M. Bregman (Reg. No. 45,645), Tel: 650.843.7519.
`
`Backup Counsel: Jacob A. Snodgrass (Reg. No. 66,032), Tel:
`
`202.739.5836; Andrew J. Gray IV (Reg. No. 41,796), Tel: 650.843.7575; Bradford
`
`A. Cangro (Reg. No. 58,478), Tel: 202.739.5088; Archis (Neil) V. Ozarkar (Reg.
`
`No. 71,265), Tel: 713.890.5401.
`
`Service Address: Morgan, Lewis & Bockius LLP, 1400 Page Mill Road,
`
`Palo Alto, CA 94304. Fax: 650.843.4001.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`3
`
`

`
`Attorney Docket No. 069700-5010
`
`Petition.
`
`D.
`
`Service Information under 37 C.F.R. § 42.8(b)(4)
`
`Service information is provided in Section II.C, above. Petitioner consents
`
`to electronic service at the following address: HP-PTAB@morganlewis.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The required fees are submitted herewith. If any additional fees are due at
`
`any time during this proceeding, the Office is authorized to charge such fees to
`
`Deposit Account No. 50-0310 (order no. 069700-5010).
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104
`
`Petitioner hereby certifies that the ’550 patent is available for IPR and that
`
`the Petitioner is not barred or estopped from requesting IPR challenging the claims
`
`of the ’550 patent because it has not been a party to any other post-grant or Inter
`
`Partes Review of the ’550 patent.
`
`V. THE ’550 PATENT AND ITS PROSECUTION
`
`A.
`
`Summary of the Prosecution History
`
`The ’550 patent issued to Kia Silverbrook on Mar. 25, 2014, and from
`
`USPTO records appears to be currently assigned to Memjet Technology Limited
`
`(“Memjet”). The ’550 patent issued with four claims, one of which is independent.
`
`The application that led to the ’550 patent was filed on July 13, 2010, and
`
`purports to be a continuation of application No. 11/779,845, filed on July 18, 2007,
`
`4
`
`

`
`Attorney Docket No. 069700-5010
`
`now Pat. No. 7,758,181, which purports to be a continuation of application No.
`
`11/227,240, filed on Sept. 16, 2005, now Pat. No. 7,258,430, which purports to be
`
`a continuation of application No. 10/974,751, filed on Oct. 28, 2004, now Pat. No.
`
`6,966,625, which purports to be a continuation of application No. 10/296,438, filed
`
`in Australia as PCT application No. PCT/AU00/00597 (designating the United
`
`States) on May 24, 2000, now Pat. No. 6,824,242.
`
`For the reasons described in further detail below, the ’550 patent is not
`
`entitled to the earliest claimed priority date, and instead is entitled to a priority date
`
`no earlier than October 28, 2004. This Petition presumes a priority date of October
`
`28, 2004, and Pre-AIA 35 U.S.C. applies.
`
`B.
`
`Brief Description of the Patent
`
`The ’550 patent relates to a printhead assembly (for example an assembly
`
`used in a pagewidth printer) that includes an ink distribution assembly for
`
`distributing ink from multiple sources to multiple printhead chips. Specifically, the
`
`’550 patent describes a drop on demand printhead with replaceable printhead
`
`modules. Ex. 1001 at 1:20-24, 1:25-31. Multiple modules may be arrayed across a
`
`pagewidth printing zone, thus allowing for single-pass pagewide printing. Id. at
`
`1:47-54. Each of the printhead modules receives multiple inks from multiple
`
`sources. Id. at 5:14-23, 6:1-6. Ink from these sources is supplied to channels of an
`
`ink distribution molding. Id. at 4:44-58. The ink is then fed to a laminated stack
`
`5
`
`

`
`Attorney Docket No. 069700-5010
`
`of ink distribution sheets. Id. at 5:14-23. The sheets include holes and slots that
`
`are positioned such that, when the layers are stacked and laminated, paths are
`
`formed to distribute ink from the sources to the printhead modules. Id. at 5:24-6:6.
`
`Figures 6, 7, 8, 9A, 9B, and 12 illustrate an embodiment of the purported
`
`invention of the ’550 patent. As shown in the figures below, ink is fed from ink
`
`sources through inlet ports 34 (light blue) of ducts cover 39 (blue):
`
`Ex. 1001 at Fig. 61; see also id. at 4:44-
`
`
`
`49
`
`Ink entering at the inlet ports 34 (light blue) is then distributed to ink ducts
`
`40 (light orange) of ink distribution molding 35 (orange) by way of cross-flow ink
`
`channels 42 (dark blue):
`
`
`
`1 All colorized figures have been colorized by Petitioner.
`
`6
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`

`
`Attorney Docket No. 069700-5010
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`
`
`Id. at Fig. 7; see also id. at 4:49-54
`
`
`
`Id. at Fig. 8; see also id. at 5:20-23
`
`From the ink ducts 40 (light orange), ink travels through a transfer port 50
`
`(brown) to transitional ducts 51 (pink). Id. at 6:24-29. Ink travels from transitional
`
`ducts 51 (pink) to the laminated stack 36 (green).
`
`In the laminated stack, sheets 52 (orange), 56 (green), 60 (brown), 62
`
`(purple), and 64 (light blue) are stacked on top of each other, with sheet 52
`
`(orange) disposed adjacent the ink distribution molding, and with print chips 27
`
`(red) disposed in cavities formed in layers 62 (purple) and 64 (light blue) such that
`
`the print chips 27 (red) abut the bottom of layer 60 (brown).
`
`
`
`7
`
`

`
`Attorney Docket No. 069700-5010
`
`Slots 59
`
`Slots 57
`
`
`
`Id. at Figs. 9A and 9B (annotated); see also id. at Fig. 6.
`
`Ink holes 53 are formed in layers 52, 56, and 60. Id. at 5:24-27, 5:42-46,
`
`5:59-67. Slots 57 and 59 (annotated in the figure above) are formed in layers 56
`
`and 60. Id. at 5:40-41, 5:50-51. Recesses 55, channels 58, and channels 61 are
`
`formed on the underside of layers 52, 56, and 60. Id. at 5:33-39, 5:47-51, 5:62-67.
`
`Thus, ink travels through ink holes 53 to recesses 55 and from other ink
`
`Id. at Fig. 12
`
`8
`
`

`
`Attorney Docket No. 069700-5010
`
`holes 53 to channels 58 or 61 to slots 57 or 59. Id. From there, ink travels to print
`
`chip 27 (red). Id. at 6:1-6. The ink flow through the above-mentioned holes,
`
`recesses, slots, and channels is shown by the red arrows below:
`
`Slots 59
`
`Slots 57
`
`
`
`Id. at Fig. 9B (annotated).
`
`VI. THE PRIOR ART
`
`A.
`
`Summary of the Prior Art
`
`PCT Pub. No. WO 01/89849 A1 to Silverbrook (“Silverbrook WO ’849”)
`
`qualifies as pre-AIA 35 U.S.C. § 102(b) prior art to the ’550 patent because it
`
`published on November 29, 2001, which is more than one year prior to the earliest
`
`valid priority date of the ’550 patent (i.e., October 28, 2004). See Section VIII.A
`
`infra.
`
`B.
`
`Brief Description of the Prior Art
`
`Silverbrook WO ’849, like the ’550 patent, relates to a printhead assembly
`
`(for example an assembly used in a pagewidth printer) that includes an ink
`
`9
`
`

`
`Attorney Docket No. 069700-5010
`
`distribution assembly for distributing ink from multiple sources to multiple
`
`printhead chips. Indeed, except for differences in their respective summaries, the
`
`’550 patent and Silverbrook WO ’849 include nearly identical disclosures. Ex.
`
`1002 at ¶ 44. Therefore, the summary of the ’550 patent provided in Section V.B
`
`supra equally serves as a summary of the Silverbrook WO ’849 prior art.
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A. Claims for Which Review Is Requested
`
`Petitioner respectfully requests review under 35 U.S.C. § 311 and 37 C.F.R.
`
`§ 42.100 et seq. of claims 1-4 of the ’550 patent, and the cancellation of these
`
`claims as unpatentable.
`
`B.
`
`Statutory Grounds of Challenge
`
`Petitioner requests that claims 1-4 of the ’550 patent be cancelled as
`
`unpatentable under pre-AIA 35 U.S.C. § 102. In particular, Petitioner submits the
`
`following grounds of unpatentability:
`
`Ground
`1
`
`Statute(s)
`35 U.S.C. § 102
`
`Reference(s)
`Silverbrook WO ’849
`
`Claim(s)
`1-4
`
`The claim constructions, reasons for unpatentability, and specific evidence
`
`supporting this request are detailed below.
`
`C.
`
`Proposed Claim Constructions
`
`Pursuant to 37 C.F.R. § 42.100(b), and solely for purposes of this IPR,
`
`10
`
`

`
`Attorney Docket No. 069700-5010
`
`Petitioner construes the claim language such that the claim terms are given their
`
`broadest reasonable interpretation. Because the broadest reasonable interpretation
`
`standard differs from the standard applied by courts, see In re Am. Acad. of Sci.
`
`Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioner reserves the right
`
`to argue alternative constructions in any other proceedings.
`
`1.
`
`“laminated ink distribution stack”
`
`The claim term “laminated ink distribution stack” appears in claim 1, which
`
`states: “a laminated ink distribution stack connected to the ink distribution
`
`molding, the laminated ink distribution stack comprising a plurality of layers” and
`
`“each print chip being in fluid communication with a respective set of outlets
`
`defined in the laminated ink distribution stack.” Ex. 1001 at 8:66-9:1, 9:9-11.
`
`One of ordinary skill in the art, defining the broadest reasonable
`
`interpretation of the claim term in the context of the ’550 patent, would understand
`
`“a laminated ink distribution stack” to mean “an ink distribution structure
`
`manufactured by layering thin, flat sheets one on top of the other and gluing
`
`or otherwise bonding them together.” Ex. 1002 at ¶ 31.
`
`This construction is supported by both the intrinsic and extrinsic evidence.
`
`The specification of the ’550 patent describes the laminated ink distribution stack
`
`36 as “a number of laminated layers” 52, 56, 60, 62, and 64. Ex. 1001 at 4:62-65,
`
`6:46-49, 6:13-14, and Figs. 9A, 9B, 12-19.
`
`11
`
`

`
`Attorney Docket No. 069700-5010
`
`Ex. 1001 at
`
`Fig. 9B
`
`
`
`The specification also states that “[t]he individual layers of the laminated
`
`stack . . . can be glued or otherwise bonded together to provide a sealed unit.” Ex.
`
`1001 at 6:39-41. Thus, as shown in Figs. 9A, 9B, 12-19, the “laminated ink
`
`distribution stack” is “an ink distribution structure manufactured by layering thin,
`
`flat sheets one on top of the other and gluing or otherwise bonding them together.”
`
`This construction is also consistent with dictionary definitions of
`
`“laminated.” In particular, one definition of “laminate” is “a sheet of material
`
`made of several different bonded layers.” Ex. 1002 at ¶ 34. Further, definitions of
`
`“laminated” are “composed of layers bonded together” and “arranged in laminae,”
`
`while a definition of “lamina” is “a thin plate, sheet, or layer.” Id.
`
`Finally, this construction is in accord with the Final Judgment of the
`
`Regional Court of Munich I, which considered the meaning of a nearly identical
`
`claim term in the German proceeding noted in section II.B supra. In particular, in
`
`denying Memjet’s application for a preliminary injunction, the Munich court
`
`12
`
`

`
`Attorney Docket No. 069700-5010
`
`considered the meaning of the German term corresponding to a “laminated ink
`
`distribution structure.” Specifically, the court found that the person skilled in the
`
`art would understand that:
`
`the laminated ink distribution structure consists of multiple layers
`positioned on top of each other [0016], and that the individual
`layers of the laminated stack are connected, preferentially glued,
`with each other [0023] so as to form a sealed unit [0057] [and] . . .
`the laminated layers are flat plates.
`Ex. 1008 at p. 14, ll. 12-18 (internal citations to EP ’451 patent).
`
`In the district court case, Memjet has proposed an overly-broad construction
`
`that should not be adopted here. In particular, Memjet proposes that “laminated
`
`ink distribution stack” should be construed as “a stack of firmly united layers for
`
`distributing ink”. Ex. 1010 at 32. This is far too broad of an interpretation, even
`
`under the broadest reasonable interpretation standard. Memjet’s proposal would
`
`encompass thick and non-uniform structures that are joined to one another by any
`
`means, such as screws or clips,2 and one skilled in the art would not understand the
`
`same to be a “laminated” “stack.” Ex. 1002 at 36.
`
`
`
`2 Indeed, under Memjet’s proposal, the components of an automobile engine (i.e., a
`
`cylinder head cover ,cylinder head, engine block, and oil pan) would be
`
`“laminated.”
`
`13
`
`

`
`Attorney Docket No. 069700-5010
`
`2.
`
`“transitional ducts”
`
`The claim terms “transitional ducts” and “transitional ink duct” appear in
`
`claim 1, which states: “an ink distribution molding comprising . . . one or more
`
`transitional ducts extending from each of the longitudinally extending ink ducts”
`
`and “a laminated ink distribution stack . . . comprising a plurality of layers,
`
`wherein an uppermost layer has a plurality of inlets for receiving ink from the
`
`transitional ink duct.” Ex. 1001 at 8:61-9:3.
`
`One of ordinary skill in the art, defining the broadest reasonable
`
`interpretation of the phrase “transitional ducts” in the context of the ’550 patent,
`
`would understand it to mean “channels for carrying ink from one structure to
`
`an adjoining structure.”
`
`The specification discloses the path of ink from the distribution molding to
`
`the laminated stack as follows: ink travels from ink ducts 40 (light orange) of
`
`distribution molding 35 (orange) through a transfer port 50 (brown) to transitional
`
`ducts 51 (pink). Id. at 6:24-29. Ink travels from transitional ducts 51 (pink) to the
`
`laminated stack 36 (green):
`
`14
`
`

`
`Attorney Docket No. 069700-5010
`
`Id. at Fig. 7; see also id. at 4:49-54
`
`
`
`
`Id. at Fig. 8; see also id. at 5:20-23
`
`Moreover, the above proposed interpretation is consistent with the structure
`
`of claim 1. In particular, the claim states that the transitional ducts extend from
`
`each of the longitudinally extending ink ducts, which are part of the ink
`
`distribution structure, to the upper-most layer of the laminated ink distribution
`
`structure, which is separate from and connected to the ink distribution structure.
`
`Ex. 1001 at 8:61-9:3.
`
`Thus, transitional ducts 51 are “channels for carrying ink from one structure
`
`[i.e., the distribution molding] to an adjoining structure [i.e., the laminated stack].”
`
`This construction is also consistent with dictionary definitions of
`
`“transitional.” In particular, one definition of “transition” is “passage from one
`
`form, state, style, or place to another.” Ex. 1002 at ¶ 41.
`
`VIII. DETAILED GROUNDS FOR UNPATENTABILITY
`
`Below is an explanation of each proposed ground of unpatentability in
`
`accordance with 37 C.F.R. § 42.104(b). As an initial matter, the relevant priority
`
`15
`
`

`
`Attorney Docket No. 069700-5010
`
`date for the ’550 patent is established. Next, Ground 1 is presented. In this
`
`ground, Silverbrook WO ’849, which qualifies as prior art to the ’550 patent under
`
`pre-AIA 35 U.S.C. § 102(b), is compared to claims 1-4 of the ’550 patent. Finally,
`
`a claim chart is provided, which shows that each and every element of the patent
`
`claims are disclosed in Silverbrook WO ’849.
`
`A.
`
`Priority Date for the ’550 Patent
`
`The ’550 patent is entitled to a priority date no earlier than October 28, 2004
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`because that is the earliest date to which a predecessor application, in the purported
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`priority chain of the ’550 patent, is entitled.
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`1.
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`The ’550 Patent’s Purported Chain of Priority
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`The purported priority chain for the ’550 patent is as follows:
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`Attorney Docket No. 069700-5010
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`U.S. Patent No. 8,678,550
`Issued: Mar. 25, 2014
`U.S. App. No. 12/834,893
`Filed: Jul. 13, 2010
`↑ con
`U.S. Patent No. 7,758,181
`Issued: Jul. 20, 2010
`U.S. App. No. 11/779,845
`Filed: Jul. 18, 2007
`↑ con
`U.S. Patent No. 7,258,430
`Issued: Aug. 21, 2007
`U.S. App. No. 11/227,240
`Filed: Sep. 16, 2005
`↑ con
`U.S. Patent No. 6,966,625
`Issued: Nov. 22, 2005
`U.S. App. No. 10/974,751
`Filed: Oct. 28, 2004
`↑ con
`U.S. Patent No. 6,824,242
`Issued: Nov. 30, 2004
`U.S. App. No. 10/296,438
`Filed: Nov. 23, 2002
`↑ 371
`WO 01/89836
`Published: Nov. 29, 2001
`PCT App. No. PCT/AU00/00597
`Filed: May 24, 2000
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`As shown above, the ’550 patent purports to be entitled to a May 24, 2000
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`priority date; however, the ’550 patent is not entitled to that earliest claim to
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`priority, and, instead, is entitled to a priority date no earlier than October 28, 2004.
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`In particular, the application that led to the ’550 patent was filed on July 13,
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`2010, and purports to be a continuation of application No. 11/779,845, filed on
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`July 18, 2007, now Pat. No. 7,758,181, which purports to be a continuation of
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`application No. 11/227,240, filed on Sept. 16, 2005, now Pat. No. 7,258,430,
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`which purports to be a continuation of application No. 10/974,751 (“the ’751
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`Attorney Docket No. 069700-5010
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`application”), filed on Oct. 28, 2004, now Pat. No. 6,966,625, which purports to be
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`a continuation of application No. 10/296,438 (“the ’438 application”), filed in
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`Australia as PCT application No. PCT/AU00/00597 (designating the United
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`States) on May 24, 2000, now Pat. No. 6,824,242.
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`However, the applicant of the ’751 application severed this purported chain
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`of priority by failing to comply with the relevant statutory requirements regarding
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`priority claims.
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`2.
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`The ’751 Applicant Failed to Comply with the Relevant
`Requirements
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`The ’751 applicant failed to perfect the full priority claim within the
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`timeframe set forth by the statute. Furthermore, although the applicant improperly
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`attempted to make a delayed priority claim, the requisite showing of unintentional
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`delay was not made, and the applicant failed to pay a surcharge. Both of these are
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`required by the statute. Thus, the ’751 application and, as a result, the ’550 patent,
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`are entitled to a priority date no earlier than October 28, 2004.
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`At the time of filing of the ’751 application, 35 U.S.C. § 120 provided:
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`An application for patent for an invention disclosed in the manner provided
`by the first paragraph of section 112 of this title in an application previously
`filed in the United States, or as provided by section 363 of this title, which is
`filed by an inventor or inventors named in the previously filed application
`shall have the same effect, as to such invention, as though filed on the date
`of the prior application, if filed before the patenting or abandonment of or
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`Attorney Docket No. 069700-5010
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`termination of proceedings on the first application or on an application
`similarly entitled to the benefit of the filing date of the first application and
`if it contains or is amended to contain a specific reference to the earlier filed
`application. No application shall be entitled to the benefit of an earlier
`filed application under this section unless an amendment containing the
`specific reference to the earlier filed application is submitted at such time
`during the pendency of the application as required by the Director. The
`Director may consider the failure to submit such an amendment within that
`time period as a waiver of any benefit under this section. The Director may
`establish procedures, including the payment of a surcharge, to accept an
`unintentionally delayed submission of an amendment under this section.
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`35 U.S.C. § 120 (2000) (emphasis added).
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`The statute makes clear that an amendment to a priority claim must be made
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`“at such time during the pendency of the application as required by the Director.”
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`Here, for the reasons set forth below, it is indisputable that the amendment was not
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`made during this time. The statute, however, does allow for a late/delayed benefit
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`if the delay was unintentional, and if it complies with the Director’s procedures.
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`The applicant, however, made no showing that the delayed submission of an
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`amendment was unintentional. For these reasons alone, the delayed attempt to
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`correct the priority claim violates the statute and cannot be remedied or excused by
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`the Office.
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`Moreover, at the time, the Director had established certain procedures for a
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`delayed amendment to the priority claim, including a requirement for certain
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`Attorney Docket No. 069700-5010
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`evidence that the delay was unintentional (i.e., at least a statement to that effect)
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`and the payment of a fee. 37 C.F.R. § 1.78(a)(3) (2004).
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`In other words, per the statute, at the time, certain procedures for perfecting
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`a priority claim were already established by the Director. The applicant, however,
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`failed to comply with all of the Director’s procedures as: (i) the amendment was
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`untimely, (ii) no fee was paid, and (iii) no evidence was provided that the delayed
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`amendment was unintentional. For these reasons, the applicant is not entitled to
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`the delayed priority claim.
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`i.
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`The Purported Claim of Priority for the ’751
`Application Was Untimely
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`This statute makes clear that to be entitled to the benefit of the filing date of
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`an earlier-filed application, the priority claim must be made in a specific time
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`frame, i.e., the time period established by the Director. At the time that the ’751
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`application was filed, the Director had set the time to submit a priority claim at the
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`later of: (i) four months from filing, or (ii) sixteen months from the filing of the
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`application to which priority is claimed. 37 C.F.R. 1.78(a)(2)(ii) (2004).
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`Furthermore, the relevant regulation at the time required that, to satisfy the
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`statutory “specific reference” requirement, the later-filed application “identify[]
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`[the earlier-filed application] by application number (consisting of the series code
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`and serial number) . . . and indicating the relationship of the applications.” 37
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`C.F.R. § 1.78(a)(2)(i) (2004). Such reference was required to be included “in an
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`Attorney Docket No. 069700-5010
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`application data sheet . . . or the specification must contain or be amended to
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`contain such reference in the first sentence following the title.” 37 C.F.R. §
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`1.78(a)(2)(iii) (2004). Thus, including this information in, for example, an
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`application transmittal is inadequate. See Worlds, Inc. v. Activision Blizzard, Inc.,
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`No. 12-10576-DJC, 2014 WL 972135, at *5 (D. Mass. Mar. 13, 2014)
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`(distinguishing an application data sheet from other prosecution documents,
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`including an application transmittal, and finding that reference to a provisional
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`application in application papers other than the first sentence of the specification or
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`an application data sheet does not entitle an application to claim priority to the
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`provisional application); see also 37 C.F.R. § 1.76 (2004) (setting forth
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`requirements of application data sheets).
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`In this case, it is indisputable that the applicant failed to include a “specific
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`reference” in the ’751 application to the ’438 application “at such time during the
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`pendency of the application as required by the Director.” See 35 U.S.C. § 120
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`(2000). The ’751 application was filed on October 28, 2004, with the following
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`appearing in the first paragraph of the specification: “This is a continuation
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`application of 10/296, filed on November 23, 2002.” Thus, the ’751 application
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`failed to contain a reference, much less the statutorily-required “specific reference”
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`to the ’438 application, at the time of filing.
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`Attorney Docket No. 069700-5010
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`Although the specification of the ’751 application was amended on July 12,
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`2005 to identify the ’438 application, this amendment occurred more than eight
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`months after the ’751 application was filed and more than 2 ½ years after the ’438
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`application was filed. As a result, this amendment was untimely. See 37 C.F.R. §
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`1.78(a)(2)(ii) (2004).
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`ii.
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`The ’751 Applicant Failed to Comply with the
`Requirements For Untimely Priority Claims
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`Thus, the ’751 application is entitled to the benefit of the ’438 application’s
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`filing date only if Memjet can show that the last sentence of 35 U.S.C. § 120
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`applies. It cannot. At the time of filing of the ’751 application, Section 120
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`authorized the Director to forgive belated claims, but only (1) in instances of “an
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`unintentionally delayed submission” and (2) if the applicant follows the procedures
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`set forth by the Director, including the payment of a surcharge. 35 U.S.C. § 120
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`(2000).
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`In this case, no evidence was provided to the Office (or the public) that the
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`delayed submissions in the ’751 application was “unintentional.” This omission is
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`dispositive. Memjet is unable to establish that the only mechanism provided by
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`Congress for the acceptance of delayed priority claims was available to the
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`applicant, much less that the applicant complied with the procedures set forth by
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`the Director, which it clearly did not,