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Inter Partes Review
United States Patent No. 8,532,641
on January 29, 2008 as the ‘833 patent).
To properly claim the benefit of the March 28, 2000 priority date, or any other
date in the chain of priority, however, the claims at issue must be directed to subject
matter disclosed in the prior application(s) in the manner provided by § 112 ¶ 1, and
must contain a written description of the invention. See, e.g., Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562-63 (Fed. Cir. 1991). “A disclosure in a parent application that
merely renders the latter-claimed invention obvious is not sufficient to meet the
written description requirement; the disclosure must describe the claimed invention
with all its limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998).
Furthermore, “entitlement to a priority date for any claim is a matter for which [the
Patent Owner] bears the burden of proof.” Ex. 1317 at 16 (CBM2012-00003, Pap. 15);
see also In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“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.”).
While reserving for another forum whether the claims have any support in any
of the listed priority applications, 2 Petitioners respectfully submit that for the
Challenged Claims in this Petition, Affinity is not entitled to claim priority to a date
2
Petitioners reserve the right to raise in an appropriate forum invalidity based on
§ 112, as well as the right to challenge in another forum that the ‘641 patent is not
entitled to the claimed March 28, 2000 priority date on other grounds.
12