Ex Parte 7,120,462 et alDownload PDFPatent Trial and Appeal BoardJul 2, 201895002075 (P.T.A.B. Jul. 2, 2018) Copy Citation 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) Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 2 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”). Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 3 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. Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 4 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- Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 5 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. Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 6 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 Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 7 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 Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 8 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 Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 9 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 Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 10 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. Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 11 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 Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 12 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 Appeal 2017-005641 Reexamination Control No. 95/002,075 Patent US 7,120,462 B2 13 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 sl Copy with citationCopy as parenthetical citation