Ex Parte 7133293 et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201695001319 (P.T.A.B. Feb. 25, 2016) 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. 95/001,319 03/29/2010 7133293 MOUNT-00100 1333 32361 7590 02/26/2016 GREENBERG TRAURIG (NY) MET LIFE BUILDING 200 PARK AVENUE NEW YORK, NY 10166 EXAMINER DOERRLER, WILLIAM CHARLES ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 02/26/2016 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 ____________ ANTEC, INC. Requester v. STREAK PRODUCTS, INC. Patent Owner and Appellant ____________ Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293B2 Technology Center 3900 ____________ Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and MICHAEL L. HOELTER, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 2 This is a decision under 37 C.F.R. § 41.77(f). On March 4, 2014, we affirmed the Examiner’s decision to reject claims 1-9 on various grounds. (Decision on Appeal, Appeal No. 2013-004126, mailed March 4, 2014, hereinafter, “Decision” at 31.) Specifically, we affirmed the rejection of claims 1-9 under 35 U.S.C. § 103(a) as obvious over the combination of Performance PC's Modular Power Supply, 5-26-03, Wolfman, Virtual Hideout (“Performance”) in view of Seasonic SSR-400 User's Manual, 1998-2000, Seasonic (“SSR-400”) (Decision 17-26), and the rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as obvious over the combination of Performance and Silentpcreview forum discussion “detachable cables on psu’s,” 1/2003, Various authors posting on website (“SPCR Forum”) (Decision 26-29.) However, because our rationale differed from that of the Examiner, we designated our affirmance as a new ground of rejection under 37 C.F.R. § 41.77(b). (Decision 2, 17-20, 31-33.) In response to the Previous Decision, Patent Owner Streak Products, Inc. exercised its option under 37 C.F.R. § 41.77(b)(1) to file a request to reopen prosecution, presenting documents including: a decision of the Beijing High People's Court of the People's Republic of China No. 5840 (“Chinese High Court Decision”) (“Exhibit A”); Chinese Utility Model Patent No. ZL 200420005481.7 (“Chinese Patent”) (“Exhibit B” and “Exhibit C”); the certificate from the State Intellectual Property Office (SIPO) (“Certificate”) (“Exhibit D”); and a September 27, 2013 decision of the Beijing Higher People’s Court of the People's Republic of China (“Exhibit E”) (“Chinese Patent Validity Decision”). Patent Owner alleges Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 3 that the documents provided support to its allegations of copying. (Patent Owner’s Request to Reopen Prosecution Pursuant to 37 C.F.R. § 41.77(b)(1), filed April 4, 2014, hereinafter “PO 41.77(b)(1) Resp.” 4-9.) Requester Antec, Inc. filed a response under 37 C.F.R. § 41.77(c) including documents in response to the documents provided by Patent Owner. (Third Party Requester’s Comments Pursuant to 37 C.F.R. § 41.77(c), filed May 5, 2014, hereinafter “Req. 41.77(c) Resp.”) Specifically, Requester’s response included: a decision by the Taiwan Intellectual Property Office (“TIPO”) on Taiwan Patent No. M253980 (“the ’980 Patent”) dismissing an invalidation request on June 6, 2008 (Exhibit A “the decision for Validation,” TIPO Announcement No. 09720292390, “the ’390 Decision”); a decision by the Petitions and Appeals Committee under the Taiwan Ministry of Economic Affairs, (Exhibit B “The decision from Petitions and Appeals Committee,” Retrieval of Ministry Decisions No. 09706115590, “the ’590 Decision”); a decision by Taiwan's Intellectual Property Court (“IP Court”) (Exhibit C “Administrative Judgment from IP Court”); a decision form the Taiwan Supreme Administrative Court (Exhibit D “Administrative Judgment,” Supreme Administrative Court Verdict No. 1301); and a listing of evidence reviewed and considered by the Taiwan Supreme Administrative Court (Exhibit E). Requester contends that the submitted documents provide evidence that Patent Owner’s copying arguments have been rejected by different tribunals in Taiwan. (Req. 41.77(c) Resp. 5-7.) An order granting Patent Owner’s request to reopen and remanding the inter partes reexamination to the Examiner was issued. (“ORDER Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 4 REMANDING INTER PARTS REEXAMINATION UNDER 37 C.F.R. § 41.77(d) TO THE EXAMINER”, hereinafter “Remand Order” mailed June 27, 2014.) The Remand Order also entered Requester’s Comments for consideration by the Examiner. (Remand Order 3.) An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued on August 4, 2014. (Hereinafter, “Ex. Det.”) The Examiner’s Determination limits the discussion therein to the rejection of claims 1-9 as obvious over Performance in view of SSR-400 (Ex. Det. 3), while noting that the rejection of claims 1 and 4 as obvious over Performance in view of the SPCR Forum was affirmed (Ex. Det. 2). Because the evidence associated with Patent Owner’s request to reopen prosecution relates only to copying, we take the Examiner’s analysis regarding the rejection of the claims over Performance in view of SSR-400 to be equally applicable to the rejection over Performance in view of the SPCR Forum. In the Examiner’s Determination, the Examiner maintained the rejection of claims 1-9 under 35 U.S.C. § 103 over Performance in view of SSR-400. (Ex. Det. 4.) Specifically, the Examiner determined that “[t]he new evidence presented is not a persuasive showing of copying that will overcome the prima facie obviousness presented by the references.” (Ex. Det. 4-6.) Patent Owner filed a response to the Examiner’s Determination (Patent Owner’s Comments in Response to August 4, 2014 Determination after Board’s Decision with New Grounds of Rejection filed September 3, 2014 (hereinafter, “PO 41.77(e) Resp.”)). Requester filed a response to the Examiner’s Determination (Third Party Requester’s Comments Pursuant to 37 C.F.R. § 41.77(e) filed Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 5 September 4, 2014 (hereinafter, “Req. 41.77(e) Resp.”)). Requester also filed a response to Patent Owner’s Comments under 37 C.F.R. § 41.77(e) to the Examiner’s Determination (Third Party Requester’s Comments Pursuant to 37 C.F.R. § 41.77(e) filed October 3, 2014 (hereinafter, “2nd Req. 41.77(e) Resp.”)). Pursuant to 37 C.F.R. §41.77(f), this decision is deemed to incorporate our earlier decision, except as indicated. DISCUSSION As discussed above, the documents provided by Patent Owner as new evidence are stated by Patent Owner to relate to copying of the claims and submitted as further objective evidence of non-obviousness. As an initial matter, we emphasize that our findings and conclusions with respect to the evidence previously of record both weighing in favor of and against a conclusion of obviousness as stated in the Decision are incorporated herein. 37 C.F.R. § 41.77(f). Thus, the question is whether the documents presented by Patent Owner in its response under 37 C.F.R. § 41.77(b)(1) and the documents provided by Requester in its response under 37 C.F.R. § 41.77(c) change our previous conclusion. Notwithstanding the question of whether certain documents were timely presented, we agree with the Examiner that the additional documents provided by Patent Owner are insufficient to change the overall determination that the claims would have been obvious over the prior art of record, particularly in view of the additional documents presented by Requester in response. We observe that the underlying evidentiary Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 6 documents that formed the basis of Courts’ Decisions in China and Taiwan have not been made of record in this proceeding.1 In our Decision, we stated that there was insufficient evidence of copying in the record to support a finding of non-obviousness. (Decision 25-26.) As part of that analysis, we observed that there was insufficient evidence to support Patent Owner’s contention that the invention was disclosed to Requester. (Decision 26.) The additional documents provided by both the Patent Owner and Requester do not alter our conclusion. That is, the Chinese High Court Decision and the Taiwan Supreme Administrative Court Decision, which allegedly relate to foreign counterparts of the ’293 Patent under reexamination, reached different conclusions on what appears to be similar evidence. (PO 41.77(b)(1) Resp. Ex. A at 12, E; Req. 41.77(c) Resp. Ex. D at VII (5.), VIII, E.) Specifically, the Taiwan Supreme Administrative Court found that there was insufficient evidence to prove that Requester was not the inventor of the Taiwanese Patent in dispute, whereas the Chinese High Court determined that Patent Owner was the inventor of the Chinese Patent in dispute. (Req. 41.77(c) Resp. Ex. D at VII (5.) and VIII; PO 41.77(b)(1) Resp. Ex. A at 12.) Without being able to review the original evidentiary documents forming the basis of these decisions and to assess in detail the exact substance of the disclosures of any communications between the involved 1 The “STATEMENT PURSUANT TO 37 C.F.R. § 1.985 and 37 C.F.R. § 11.18” submitted by Patent Owner on September 3, 2014 and including a fully redacted version of a deposition transcript of Requester’s President Mr. Andrew Lee, even if properly of record in this case, is of little value as there is no visible text. Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 7 parties, we accord little weight to the summary of facts provided in each of the submitted documents related to the proceedings in China and Taiwan, as each reflects an assessment of the facts presented in relation to the applicable legal standards of those countries, rather than an assessment of facts related to claims at issue in the ’293 Patent and the applicable U.S. law. In this regard, we are of the opinion that the claim chart provided by Patent Owner that allegedly shows correspondence between the claims of the ’293 Patent and a Chinese Patent that the Chinese High Court found disclosed the “same technological solution” as the ’293 Patent (PO 41.77(b)(1) Resp. 5-9) is insufficient to provide any further evidence of copying. A showing of copying requires evidence of efforts to replicate a specific product. Wyers v. Master Lock, 616 F.3d 1231, 1246 (Fed. Cir. 2010) (citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).) As discussed by the Requester and the Examiner, the documents submitted by Patent Owner address an ownership dispute over a “technical solution” disclosed in two different foreign patents, and not whether Requester copied a particular product. (Req. 41.77(c) Resp. 7-9; Ex. Det. 6.) Therefore, the documents submitted by Patent Owner do not provide sufficient additional evidence of copying. We refer to the Decision pages 20-26 expressly, where we discussed the evidence of secondary considerations and the evidence of obviousness. Specifically, we adhere to our original view that “the strong desire expressed in Performance for eliminating excess cables combined with the known use of pinouts in conjunction with metal chassis containing power supplies as Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 8 disclosed in SSR-400 outweighs the evidence of industry praise, long-felt need and copying presented by Patent Owner for the deficiencies identified supra.” (Decision 26.) The additional documents considered herein, do not, in our assessment, alter the balance of this inquiry for the reasons expressed above. Accordingly, after re-considering the evidence of record, both for and against a conclusion of obviousness, we remain of the opinion that claims 1-9 would have been obvious over the prior art of record. CONCLUSION As a result, we have considered the submissions by Patent Owner and Requester in response to the new grounds of rejection set forth in the Decision, and modify the Decision to the extent discussed above. However, we decline to otherwise modify the Decision, and maintain the Decision’s affirmance of: The Examiner’s decision to reject claims 1-9 as obvious over Performance in view of SSR-400; and The Examiner’s decision to reject claims 1 and 4 as obvious over Performance in view of the SPCR Forum. In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 9 accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008). 37 C.F.R. § 41.77(f) Appeal 2015-008003 Reexamination Control 95/001,319 Patent 7,133,293 B2 10 PATENT OWNER: GREENBERG TRAURIG (NY) MET LIFE BUILDING 200 PARK AVENUE NEW YORK, NY 10166 THIRD-PARTY REQUESTER: STEVEN LAW GROUP 1754 TECHNOLOGY DRIVE SUITE 226 SAN JOSE, CA 95110 ack Copy with citationCopy as parenthetical citation