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“[a] patent need not teach, and
preferably omits, what is well known in the art "
The Board’s erroneous rejection of claim 16’s entitlement to the ’244
provisional’s filing date flows directly from multiple legal errors. For example, the
Board ran afoul of binding Federal Circuit precedent that the written description
requirement does not require priority applications to use the exact terms appearing
in the claim in haec verba, Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
1345-46 (Fed. Cir. 2016), as well as the maxim that “[a] patent need not teach, and
preferably omits, what is well known in the art” (MPEP §2164.01). Here, the “bank
address” signals allegedly missing from the ’244 provisional were indisputably well
known in the art. Compounding these errors, the Board failed to provide the requisite
IPR2022-00615
Patent No. 7,619,912
- 3 -
reasoned, legally sufficient, factually supported explanation for its conclusory
determination. See, e.g., In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016)
(requiring a “reasoned explanation” rather than “summariz[ing] and reject[ing]
arguments without explaining why”).2
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