95000460 (B.P.A.I. Jun. 29, 2012)

Ex Parte 6304236 et al

Board of Patent Appeals and InterferencesJun 29, 2012

95000460 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/000,460 05/04/2009 6304236 379922-460RX (105402) 7144 37509 7590 12/20/2012 DECHERT LLP P.O. BOX 390460 MOUNTAIN VIEW, CA 94039-0460 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/20/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CHIMEI INNOLUX CORP. Requester and Respondent v. Patent of MONDIS TECHNOLOGY, LTD. Patent Owner and Appellant ____________________ Appeal 2012-007868 Reexamination Control 95/000,460 Patent US 6,304,236 B1 Technology Center 3900 ____________ Before RICHARD TORCZON, HOWARD B. BLANKENSHIP, ALLEN R. MacDONALD, SCOTT R. BOALICK, and STEPHEN C. SIU, Administrative Patent Judges. PER CURIAM DECISION ON REQUEST FOR REHEARING Appeal 2012-007868 Reexamination Control 95/000,460 Patent US 6,304,236 B1 2 INTRODUCTION1 In an earlier Decision (mailed Mar. 21, 2011), the Board reversed the Examiner’s final decision favorable to the patentability of claims 1 and 2 and entered rejections consistent with grounds proposed by Requester. Owner elected to reopen prosecution before the Examiner (37 C.F.R. § 41.77(b)(1)). The proceeding returned to the Board pursuant to 37 C.F.R. § 41.77(f). In our new Decision on Appeal mailed June 29, 2012, we affirmed the Examiner’s decision adverse to the patentability of claims 1 and 2. Patent Owner has filed (July 30, 2012) a Request for Rehearing (37 C.F.R. § 41.79(a)(4)) that contends we erred in the new Decision on Appeal (“New Decision”). Requester has filed (Aug. 30, 2012) Comments in Opposition to Owner’s request for rehearing (37 C.F.R. § 41.79(c)). DISCUSSION Owner argues again in the Request for Rehearing that Webb (US 5,216,504) fails to teach that “stored control data is read out by the control signal” as claimed. However, we considered the evidence provided by Owner and Requester and found Requester’s Richter Declaration to be the more credible, and specified some reasons why. New Decision 5-7. We also found the Richter Declaration in support of why the artisan would have used standard handshaking signals as set forth in the RS232C 1 This appeal is related to the inter partes reexamination of US 6,639,588 B2, Control No. 95/000,455, Appeal No. 2012-002715, and to the inter partes reexamination of US 6,686,895 B2, Control No. 95/000,456, Appeal No. 2012-003164. Appeal 2012-007868 Reexamination Control 95/000,460 Patent US 6,304,236 B1 3 standard to confirm proper reception of signals, and why the artisan would have used the handshaking procedures regardless of the “visual” feedback calibration procedure taught by Webb, to be the more credible. In fact, Owner’s own expert admits that designers can add circuitry and logic to an RS232 interface to implement communications protocols that include reception confirmation signals. Lamm Decl. (attached to Patent Owner Response After Board Decision, Apr. 21, 2011) ¶ 24. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). The operative question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. Even if additional circuitry and logic were needed to effect reception confirmation signals, such an improvement represents no more than the predictable use of prior art elements according to their established functions, rendering the predictable result of confirming to the sender that a data signal has been properly received. Owner in the Request also contends that we erred in stating that the Spiro Declaration fails to allege, in express terms, that the '236 patent has been licensed to any entity. As we noted, the Declaration states that relevant companies have entered into license agreements, “expressly or implicitly encompassing the Patents (for example, by reference to priority applications or functionality)” with monitor companies. New Decision 9-10. Owner in the Request submits the theory that “implicitly encompassing” the patents Appeal 2012-007868 Reexamination Control 95/000,460 Patent US 6,304,236 B1 4 “by reference to priority applications” may be understood to indicate “all patents issuing from continuations and divisional [sic] of priority application xxx,xxx.” Req. R’hrg 10. Owner makes no attempt to explain what “implicitly encompassing” by reference to “functionality” might mean. In any event, we reiterate that the Spiro Declaration fails to provide sufficient details of the licensing as it might relate to the claimed invention of the '236 patent. Moreover, manifestly, if a patent license was accepted because the '236 patent issued from a continuation or divisional of some priority application, no nexus has been shown between licensing of the '236 patent and the merits of the invention (issued claims) of the '236 patent as opposed to the claimed invention of the priority application. Owner also alleges that “the Board states that Patent Owner has merely established that ‘parts of the claims may read on portions of standards’ to indicate that Patent Owner has purportedly not established that the whole patented invention is embodied in the VESA standard.” Req. R’hrg 13. Apparently, Owner bases the allegation on the following statement: “However, Owner has cited no authority for the proposition that because parts of the claims may read on portions of standards that were promulgated by an industry standards-setting committee, the claimed invention is demonstrated to be non-obvious by showing industry acceptance and commercial success of the promulgated standards.” New Decision 12. Rather than citing some authority for the position, Owner again alleges that parts of the claims read on portions of the promulgated standards. For example, Owner submits: “Finally, Mr. Lamm explains that the DDC/CI standard requires use of I2C communications protocols, which Appeal 2012-007868 Reexamination Control 95/000,460 Patent US 6,304,236 B1 5 implement reception confirmation signals back to the computer when the display receives a command across the interface. Id. at ¶ 30 (corresponding to the fourth limitation of claim 1).” Req. R’hrg 13-14. However, the Lamm Declaration does not address any specific claim limitations in the indicated section. “DDC/CI is implemented over a bi-directional I2C communication channel. Exh. A at MTL018087. The I2C specification uses a communications protocol in which the display sends acknowledgement signals when receiving control signals from the display unit.” Lamm Decl. ¶ 30. Lamm Declaration Exhibit A, which describes the DDC/CI VESA standard as of October 29, 2004, states that “DDC/CI compliant designs shall comply with the Philips I2C Specification.” Lamm Ex. A at 13, § 2.1. However, the DDC/CI System Architecture, Hardware Implementation, Communication Basic Commands, Communications Protocol, Software Implementation, and Support of Display Dependent Devices spans about 22 pages. There is insufficient evidence in the record to establish that commercial success of the DDC/CI VESA standard was due to ('236 patent claim 1) transmitting a reception confirmation signal to the external computer that indicates receiving the control signal from the external computer, in combination with the other features of claim 1. Moreover, as we indicated in the New Decision, a basic problem with Owner’s position is that commercial success and industry acceptance of a promulgated industry standard is most likely because it is a promulgated industry standard. Owner has not demonstrated success and acceptance of a de facto standard adopted by buyers due to the merits of the invention as compared with the merits of Appeal 2012-007868 Reexamination Control 95/000,460 Patent US 6,304,236 B1 6 competing alternatives, which would tend to show non-obviousness as a secondary consideration. We have not addressed numerous new arguments that Owner raises in the Request that could have been earlier presented. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in a rehearing, except in circumstances that do not apply here. See 37 C.F.R. § 41.79(b)(1). However, to the extent that some arguments might be considered timely, we find the arguments to be adequately addressed in Requester’s Comments in Opposition. DECISION We have granted Owner’s request for rehearing to the extent that we have reconsidered our decision affirming the rejection of claims 1 and 2, but we decline to modify the decision in any way. Requests for extensions of time in this proceeding are governed by 37 C.F.R. § 1.304(a). DENIED cu Appeal 2012-007868 Reexamination Control 95/000,460 Patent US 6,304,236 B1 7 FOR PATENT OWNER: DECHERT, LLP P.O. BOX 390460 MOUNTAIN VIEW, CA 94039-0460 FOR THIRD-PARTY REQUESTER: COOLEY GODWARD KRONISH, LLP ATTN: PATENT GROUP 777 6TH STREET, NW SUITE 1100 WASHINGTON, DC 20001