Takeaway: The Board has no jurisdiction to review a decision by the United States Patent and Trademark Office to revive a patent application, even where the decision affects whether there was co-pendency between a parent and child application for purposes of determining whether intervening art qualifies as prior art against the child.

In its Decision, the Board denied institution of inter partes review of the ’871 Patent because Petitioner did not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims. The ’871 Patent generally 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.”

Petitioner relied on a single ground of unpatentability of anticipation by Monroe. The Board began its analysis by reviewing the status of Monroe as prior art against the ’871 Patent. Monroe was published on July 15, 1999. The application from which the ’871 Patent issued was filed on January 3, 2003, but is a divisional application of the ’073 application filed on January 12, 1998. Therefore, if the ’871 Patent is not entitled to the earlier filing date of the ’073 application, then Monroe would not qualify as prior art and the Board would not institute the proceeding for trial.

Petitioner argued that the ’871 Patent is not entitled to the earlier filing date, because of a lack of co-pendency between the applications. Petitioner did not argue any lack of support for the subject matter of the challenged claims in the ’073 application, which would have required Patent Owner to show that the challenged claims are entitled to the earlier effective filing date. The ’073 application was abandoned with notification to Patent Owner in a notice mailed on April 10, 2001. The application resulting in the ’871 Patent was filed on January 3, 2003, together with a petition to revive the parent ’073 application on the basis of “unintentional abandonment.” The petition was granted, and the revival provided the co-pendency.

Petitioner argued that the abandonment of the ’073 application was purposeful, and granting the Petition to Revive was incorrect. However, Petitioner failed to identify any “jurisdiction or authority of the Board either (1) to review and overturn the March 11, 2003, decision of the Patent and Trademark Office on the Petition to Revive Parent ’073 Application, or (2) to ignore that decision and make [its] own determination on whether the parent ’073 application should have been revived on the basis of ‘unintentional’ abandonment.” Further, the status of an application as abandoned or revived is a procedural issues and not central to the substantive merit of a patentability determination. Because the Board only has jurisdiction over issues that are central to the substantive merit of a patentability determination, the Board does not have jurisdiction to review the decision on the Petition to Revive Parent ’073 Application. Thus, because the Board cannot overturn the decision to revive the ’073 application that resulted in co-pendency of the applications, Petitioner failed to provide sufficient evidence that Monroe qualifies as prior art. Accordingly, the Board denied institution of inter partes review.

Apple Inc. v. E-Watch, Inc., IPR2015-00411
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: May 7, 2015
Patent 7,365,871 B2
Before: Jameson Lee, Gregg I. Anderson, and Matthew R. Clements
Written by: Lee
Related Proceedings: e-Watch, Inc. v. Apple Inc., No. 2:13-cv-1061, 1062, 1063, 1064, 1070, 1071, 1073, 1075, 1077, and 1078 (E.D. Tex.); IRP2014-00439; IPR2014-00987; IPR2015-00412; IPR2015-00413; IPR2014-00402; IPR2014-00404; IPR2014-00406; IPR2015-00541; IPR2015-00610; IPR2015-00612; e-Watch, Inc. v. Huawei Technologies Co., Ltd., No. 2:13-cv-1076 (E.D. Tex.)