Voip Pal Com Inc (VPLM)

[GTCar]

CHEN IS NOT PRIOR ART UNDER PRE-AIA 35 U.S.C. 102(e)
In Ground 2, Petitioner asserts that “U.S. Patent Publication No.
2007/0064919 to Chen at al. (“Chen”) was filed on Sept. 14, 2005 and therefore
qualifies as prior art with regard to the ’005 Patent under 35 U.S.C. §102(e).”
Petition at 36. However, pre-AIA 35 U.S.C. §102(e) establishes that a reference is
prior art if it is “filed in the United States before the invention by the applicant”
and Chen was not filed before the invention by the inventors of the ‘005 Patent.
IPR2016-01198
Apple Inc. v. Voip-Pal
-48-
Prior invention can be established by an actual reduction to practice before
the priority date. Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). The
inventors of the ‘005 Patent reduced the claimed subject matter to practice before
Chen’s filing date of September 14, 2005.