Ex Parte 7,120,462 et al

Patent Trial and Appeal Board

Jul 2, 2018

95002075 (P.T.A.B. Jul. 2, 2018)

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.
95/002,075 08/16/2012 7,120,462 3059.020REX2 9873
100766 7590 07/02/2018
2nd Reexam Group - Polsinelli PC
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/02/2018 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
____________

MOTOROLA MOBILITY LLC,
Requester, Respondent, and Cross-Appellant

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner, Appellant, and Cross-Respondent.
____________

Appeal 2017-005641
Reexamination Control No. 95/002,075
United States Patent 7,120,462 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)

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This is a decision under 37 C.F.R. § 41.77(f). On March 10, 2016, we
affirmed the Examiner’s decision to reject claims 1 and 14–29 as
unpatentable over Kobayashi (US 5,463,742; issued October 31, 1995) and
Smith (US 7,549,007 B1; issued June 16, 2009) alone and in combination
with various other references, but reversed the Examiner’s decision to reject
claims 1–3, 8–10, and 14–29 based on the combination of Boyle and Smith
alone and in combination with the additionally cited prior art references.
Decision on Appeal, Appeal No. 2015-007257, mailed March 4, 2016
(“Decision”), at 31. In the Decision, we also entered the following new
grounds of rejection under 37 C.F.R. § 41.77(b):
1. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi and Smith.
2. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi, Smith, and Toshiba.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi, Smith, and Tao.
In response to the Decision, Patent Owner exercised its option under
37 C.F.R. § 41.77(b)(1) to file a request to reopen prosecution and submit
evidence. Along with Patent Owner’s Response Requesting Reopening of
Prosecution, Patent Owner submitted the following evidence: (1)
Declaration of Rajendra Kumar under 37 C.F.R. §1.1321 (“Kumar Decl.”)
with attachments, (2) the trial transcript of Intellectual Ventures JLLC et al.
v. Motorola Mobility LLC, CV No. 11-908-SLR-MPT, dated January 23,
2014, and (3) the Second Supplemental Declaration of Earl E. Swartzlander,
Jr. under 37 C.F.R. § 1.132 (“Swartzlander Decl. II”).
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Patent Owner alleges that this newly submitted evidence shows
industry praise and copying and establishes the non-obviousness of claims 2,
3, and 8–10. Patent Owner’s Response Requesting Reopening of
Prosecution, filed April 4, 2014, pp. 4–9 (“PO Resp.”). Requester responds
to Patent Owner Response. See Third Party Requester’s Comments, filed
June 10, 2016 (“TPR Comments”).
On remand, the Examiner maintained the new ground of rejection of
claims 2, 3, and 8–10. Determination Under 37 C.F.R. 41.77(d) (“Ex.
Deter.”) mailed November 14, 2016.
We maintain the rejections of claims 2, 3, and 8–10.

ANALYSIS
Patent Owner presents evidence of secondary considerations, namely
industry praise and copying, and asserts that this evidence demonstrates the
non-obviousness of the rejected claims. See, e.g., PO Resp. 9–19.1 Patent
Owner also challenges the combinations of Kobayashi, Smith, and Toshiba
and Kobayashi, Smith, and Tao. PO Resp. 23–28, 36–38. Requester, on the
other hand, contends that the allegedly evidence of secondary considerations
does not overcome the strong case of obviousness. TPR Comments 4.

1 We note Patent Owner also asserts that there is insufficient notice of the
Examiner’s reasoning. Patent Owner’s Comments to Examiner’s
Determination, filed December 14, 2016, pp. 2–3 (“PO Comments”). We
disagree. The new ground of rejections are fully explained in the Decision.
See Decision 19–27. The Examiner further elaborates and explains
agreement with the Requester’s position. As such, Patent Owner has been
provided adequate notice.
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Secondary Considerations
Patent Owner asserts that a prototype embodying claims 2, 3, and 9 of
the ’462 patent received industry praise. Specifically, Khyber Technologies
Corporation (KTC) developed a prototype that was presented at the 2001
Consumer Electronics Show (CES) and was awarded the 2001 CES Design
& Engineering Showcase Award “in recognition of the innovation provided
by the prototype [].” PO Resp. 12, 20.
To show that that the prototype included the limitations of claims 2, 3,
and 9, Patent Owner relies on Rajendra Kumar’s summary of the prototype.
PO Resp. 10–12. Patent Owner then concludes
In view of the foregoing, Patent Owner submits that there is
clearly a nexus between industry praise (i.e., the CES award for
the prototype embodying the features of the invention) and the
features of claim 2. Thus, Patent Owner submits that this
secondary considerations evidence objectively indicates the non-
obviousness of claim 2 of the '462 patent.
PO Resp. 12; see also PO Resp. 20, 34–35 (asserting the same for claims 3
and 9).
Patent Owner additionally asserts that there is sufficient evidence of
copying by Motorola to support non-obviousness of claims 2, 3, and 8–10.
Specifically, Patent Owner contends that
in view of: (1) the commensurate scope between the Motorola
Application and/or the Motorola Lapdock product and claim 2,
(2) that there is no dispute that there were interactions between
KTC and Motorola regarding the ’462 patent, (3) the submission
of the ’462 patent as the only known prior art for the Motorola
Application at the time of filing, and (4) the fact that the
Motorola inventors and the Motorola engineers involved in the
interactions between KTC and Motorola appear to have been co-
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located, there is substantial evidence of copying of the features
of claim 2 of the ’462 patent by Motorola.
PO Resp. 19; see also PO Resp. 20 (claim 3); PO Resp. 28–29 (claim 8); PO
Resp. 35–36 (claim 9); and PO Resp. 39–40 (claim 10); PO Comments 8–
11.
On the other hand, Requester maintains that the Patent Owner fails to
establish a nexus tying the presented evidence to “any of the additional,
trivial claim limitations recited in dependent claims 2-3 and 8–10.”
TPR Comments 5. According to Requester, there are no novel limitations in
claims 2, 3, and 8–10 and, thus, there is no nexus between the alleged
evidence of secondary considerations and claims 2, 3, and 8–10. TPR
Comments 5–7 (providing citations to Kobayashi, Smith, and Toshiba for
teaching the limitations of claims 2, 3, 8, and 9 and identifying U.S. Patent
No. 5,557,653 to Paterson (“Paterson”) and U.S. Patent No. 5,625,668 to
Loomis et al. (“Loomis”) as teaching the limitations of claims 8 and 10,
respectively).
With respect to copying, Requester points out that the Motorola
application, in some embodiments, include a central processor in the
docking station, which is precluded by a limitation of claim 1 of the ’462
patent. TPR Comments 9. Requester also explains that Patent Owner’s
assertion that the limitations of claims 3, 8, and 10 must necessarily be
included in the Motorola application device is unsupported and does not
establish a nexus for these claims. TPR Comments 9. Finally, Requester
contends that Patent Owner fails to provide evidence of efforts to replicate a
specific product. TPR Comments 9.
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While considering the issue of obviousness under 35 U.S.C. § 103, we
carefully evaluate and weigh both the obviousness evidence relied upon by
the Examiner and the objective evidence of nonobviousness. See In re
Mageli et al., 470 F.2d 1380, 1384, 176 USPQ 305, 307 (Cust. &
Pat.App.1973) (evidence bearing on the issue of nonobviousness “is never of
‘no moment’, is always to be considered and accorded whatever weight it
may have.”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, 776
F.2d 281, 306, 227 USPQ 657, 674 (Fed.Cir.1985) (“The objective evidence
of secondary considerations may in any given case be entitled to more or
less weight, depending upon its nature and its relationship to the merits of
the invention”).
We determine that the evidence of secondary considerations in this
case is not sufficient to overcome the Examiner’s rejection of obviousness.
With respect to industry praise, Patent Owner relies solely on a “Design and
Engineering Showcase Award” received at the 2001 Consumer Electronics
Show. Patent Owner summarily asserts that this award was “in recognition
of the invention provided by the prototype” (Kumar Decl. ¶), but does not
provide any further information regarding the award. For example, there is
no evidence as to why or what features resulted in the award. Further absent
from Patent Owner’s proffered evidence is documentary evidence of the
prototype itself. Instead, Patent Owner relies on brochures of a later product
and asserts that the features of the prototype and the later product are similar
with only a few differences. Kumar Decl. ¶¶ 16–22.
With insufficient information regarding the award and the prototype,
any nexus with the claimed invention is tentative at best. Further, even if
Patent Owner had established a nexus, we feel this award would be lack
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sufficient industry praise to overcome the obviousness rejection. For
example, as addressed above it is unclear why or what features of the
prototype resulted in the award. Nor is it clear that any praise is tied to the
claimed invention, let alone that it was from a competitor. See Power–One,
Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010) (noting
that industry praise, and specifically praise from a competitor, tends to
indicate that the invention would not have been obvious).
Next, we determine that the Patent Owner fails to provide sufficient
evidence to establish copying. Notably, not every competing product that
arguably falls within the scope of a patent is evidence of copying; otherwise,
“every infringement suit would automatically confirm the nonobviousness of
the patent.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325
(Fed. Cir. 2004). Our case law holds that copying requires evidence of
efforts to replicate a specific product, which may be demonstrated through
internal company documents, direct evidence such as disassembling a
patented prototype, photographing its features, and using the photograph as a
blueprint to build a replica, or access to the patented product combined with
substantial similarity to the patented product (as opposed to the patent). Iron
Grip, 392 F.3d at 1325; see also Akamai Techs., Inc. v. Cable & Wireless
Internet Servs., Inc., 344 F.3d 1186, 1196–97 (Fed. Cir. 2003); Advanced
Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285–86 (Fed. Cir.
2000).
Patent Owner, here, submits that there were interactions between KTC
and Motorola regarding the ’462 patent and the “Motorola inventors and the
Motorola engineers involved in the interactions between KTC and Motorola
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appear to have been co-located.” PO Resp. 19. We find this insufficient.
As Requester explains,
the Patent Owner points to communications that Mr. Kumar may
have had with certain employees within particular divisions of
Motorola, but presents no evidence that the designers of the
Motorola Atrix 4G and the designers of the Motorola LapDock
knew of Mr. Kumar, the ’462 patent, or any prototype that Mr.
Kumar may have had. At trial, under oath, the lead developer of
the Motorola LapDock, Mr. Jim Barber, testified that he had
never heard of Mr. Kumar, the ’462 patent, any prototype Mr.
Kumar may have had prior to the Patent Owner filing suit against
Motorola in October 2011. Exhibit B, Trial Tr. 809:19-810:17;
see Exhibit A.
TPR Comments 10. As Requester also points out, “by Mr. Kumar’s own
admission, Mr. Sanghi was part of Motorola Ventures which is an entirely
different division” and Patent Owner does not “establish that anyone that
Mr. Kumar allegedly communicated within in various divisions within
Motorola was ever involved with the development of the Motorola LapDock
or that anyone ever spoke with anyone that was part of the Motorola
Lapdock development team.” TPR Comments 10 (citations omitted). Also
lacking is evidence of substantial similarity to the patented product, not the
patent. See Tokai Corp. v. Easton Enterprises, Inc., 632 F.3d 1358, 1370
(Fed. Cir. 2011)(“[c]opying 'requires evidence of efforts to replicate a
specific product.”). As such, we agree with Requester and the Examiner that
the submitted evidence does not establish copying.
Moreover, even if Patent Owner had established industry praise and
copying, the evidence is given little weight and would be insufficient to
overcome the strong case of obviousness. Namely, as Requester points out,
dependent claims 2, 3, and 8–10 are trivial limitations that are well known in
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the art and it would have been obvious to incorporate these limitations into
the cited combinations of prior art. See TPR Comments 5–7. Accordingly,
on the totality of the evidence, weighing all evidence of obviousness against
all evidence of non-obviousness, we hold that claims 2, 3, and 8–10 are
unpatentable over the cited combinations of prior art.

Combination of Kobayashi, Smith, and Toshiba
Patent Owner’s arguments with respect to combining Kobayashi,
Smith, and Toshiba are likewise unavailing. See PO Resp. 23–28; PO
Comments 12–15. Patent Owner alleges that it would not have been obvious
to incorporate headphones into Kobayashi’s PPM device because
Kobayashi’s PPM device is not similar to Toshiba’s laptop and that a skilled
artisan would only combine a headphone connector to Kobayashi’s
combined PPM and docking station. PO Resp. 24–25; PO Comments 12–
13. Patent Owner similarly asserts that Smith’s portable telephone is not a
multimedia device and, thus, not similar to Toshiba’s laptop. PO Resp. 26.
Patent Owner’s arguments fail to consider the combination of
Kobayashi with Smith. Kobayashi’s PPM, modified in view of Smith,
would result in an independently operable handheld device. As such, a
skilled artisan would recognize the advantage of using headphones with this
device. The combination, then, with Toshiba is simply the use of a known
technique to improve a similar device in the same way, which is an obvious
variation. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). A
skilled artisan would also have been motivated to combine Toshiba’s
headphone connection with Kobayashi’s modified PPM to provide
additional privacy or convenience. See TPR Comments 12–13; see also
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TPR Comments 14 (discussing the motivation to combine Kobayashi’s
modified PPM with Toshiba for the limitations of claim 9). Moreover, as
Requester also points out, including a headphone connection in either
Kobayashi’s modified PPM or the docking station would have simply been a
design choice. Id.
Patent Owner’s similar arguments with respect to claim 9 are
unpersuasive. See, e.g., PO Resp. 31–33; PO Comments 14–15. Namely,
we agree with Requester that it would have been obvious to incorporate the
optical transmitter and optical transceiver with Kobayashi’s modified PPM.
As discussed in the Decision and by the Requester, these features are well
known in the art and the additional functionality would have been readily
apparent to a skilled artisan at the time of the invention. Decision 26–27;
TPR Comments 14–15. For example, a skilled artisan would have
recognized
that having an optical transmitter and/or optical transceiver in
Kobayashi's PPM would reduce or eliminate the need to have an
optical transmitter and/or optical transceiver in each of
Kobayashi's docking stations. Further, a person skill in the art
would have been motivated to have an optical transmitter in
Kobayashi's PPM to provide notifications to a user, such as
when the PPM was successfully docked with a docking station.
TPR Comments 14. As such, the cited combination simply uses a known
technique to improve a similar device in the same way and, thus, is an
obvious variation. Additionally, as Requester points out, “skilled artisan at
the time would have understood that having at least one of an optical
transmitter and an optical transceiver in Kobayashi's PPM would have been
a design choice.” TPR Comments 14.
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Patent Owner’s argument that Kobayashi teaches away from the
combination with Toshiba are likewise unpersuasive. See, e.g., PO Resp.
27–28, 33–34; PO Comments 13–14. As Requester discusses, we addressed
similar arguments in the Decision. Namely,
in Kobayashi “it is not the separation of processing/memory
components from the I/O components that achieves Kobayashi's
desired flexibility, but the use of a single processing unit that can
be easily transported to use at a variety of sites” and that “[w]ith
this single processing unit, software upgrades must only be
performed once, saving cost and time.” [Decision 7] Moreover,
Patent Owner's reference to a preferred embodiment where the
PPM “does not contain human interface input/output devices
and/or devices such a[s] a keyboard, display, printer and the like”
(Kobayashi, 3:53-55) does not discourage the use of interface
devices in the PPM in every embodiment and, in particular, does
not discourage the PPM from having a connection for an external
headphone, an optical transmitter, or a GPS receiver.
[Decision 8–9] Rather, Kobayashi describes that “[t]he most
important facet of the PPM for its users is that it is easy to move
from docking station to docking station because of its small size”
which could still be achieved if the PPM included a connection
for an external headphone connection. Kobayashi, 3:32-34.
TPR Comments 13. As such, we disagree that Kobayashi teaches away
from the combination with Toshiba.
Accordingly, for the reasons discussed above and in the Decision, we
maintain the rejection of claims 8 and 9 as unpatentable over the
combination of Kobayashi, Smith, and Toshiba.

Combination of Kobayashi, Smith, and Tao
We are unpersuaded of error in the rejection of claim 10 as
unpatentable over Kobayashi, Smith, and Tao. Patent Owner asserts that
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Tao’s Global Positioning System (GPS) receiver is a peripheral device that
is not included within Tao’s portable computer and, as such, skilled artisan
would not recognize at the time of the invention to include the GPS received
within Kobayashi’s modified PPM. PO Resp. 36–38.
As Requester points out, though, Tao expressly teaches a GPS
receiver that can be used with a portable device, and it was well known at
the time of the invention to include a GPS receiver within a portable device
to “allow the portable telephone to know its location thereby providing
greater convenience, ease of use, and functionality.” TPR Comments 15–16;
see also Loomis, 1:46-51. Patent Owner’s contention that Kobayashi
teaches away from the combination with Tao is also unconvincing for the
same reasons discussed above and in the Decision.
Accordingly, for the reasons discussed above and in the Decision, we
maintain the rejection of claim 10 as unpatentable over the combination of
Kobayashi, Smith, and Tao.

CONCLUSION
For the foregoing reasons, Patent Owner has not provided sufficient
arguments and evidence to overcome the new grounds of rejection for claims
2, 3, and 8–10 based on the various references presented in the Decision. As
such, claims 2, 3, and 8–10 remain rejected.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.304, 1.956, and 41.79(e). See 37
C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
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appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Patent Owner:

NOVAK DRUCE & QUIGG LLP
1000 Louisiana Street
53rd Floor
Houston, TX 77002

For Third-Party Requester:

KILPATRICK TOWNSEND & STOCKTON LLP
Two Embarcadero Center
8th Floor
San Francisco, CA 94111-3834

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