Takeaway: The Board does not have the authority to determine whether an application was abandoned or improperly revived when determining whether a challenged claim is entitlted to claim priority to a an earlier-filed application.  

In its Decision, the Board denied institution and determined that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims (claims 1-15) of the ’871 Patent. The ’871 Patent relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.” 

The Board reviewed the only asserted ground of unpatentability – that claims 1-15 of the ’871 Patent are anticipated by Monroe. The Board discussed whether Monroe is prior art. Monroe was published on July 15, 1999. The ’871 Patent issued from an application filed on January 3, 2003, which is a divisional of an application filed on January 12, 1998. Petitioner argued that the claims of the ’871 Patent are not entitled to the filing date of the 1998 “parent” application because of a lack of co-dependency between the parent and the divisional/child application. The Board stated that if Petitioner had argued that the parent application does not support the subject matter of the challenged claims in the divisional patent, then Patent Owner would have had to show that the challenged claims are entitled to an earlier filing date. However, Petitioner instead challenged co-pendency, which the Board noted was an attack on a petition decision in 2003 by the PTO reviving the parent divisional application when the child application was filed. Petitioner argued that the parent application was “purposefully” abandoned and should not have been revived.

The Board noted that Petitioner has not identified proper jurisdiction of the Board to review the 2003 decision or to ignore that decision and make its own determination about whether the parent application should have been revived. The Board stated it has the power to determine whether a patent owner can antedate a reference but that the status of an application as abandoned or revived is procedural and the Board does not have the ability to review such an action. Therefore, the Board found that Petitioner had not shown that Monroe constitutes prior art.

Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. v. E-Watch, Inc., IPR2015-00612
Paper 8: Decision Denying Institution
Dated: July 8, 2015
Before: Jameson Lee, Gregg I. Anderson, Matthew R. Clements
Written by: Clements
Related Proceedings: IR2015-00541; IPR2014-00439; IPR2014-00987; IPR2015-00402; IPR2015-00404; IPR2015-00406; IPR2015-00411; IPR2015-00412; IPR2015-00413; IPR2015-00610