OMEGA PATENTS, LLC et al.Download PDFPatent Trials and Appeals BoardDec 4, 201990014122 - (D) (P.T.A.B. Dec. 4, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 90/014,122 04/19/2018 6346876 C13-04173.RE2 5791 27975 7590 12/04/2019 ADD&G - 27975 1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE P.O. BOX 3791 ORLANDO, FL 32802-3791 EXAMINER DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/04/2019 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 ____________ Ex parte OMEGA PATENTS, L.L.C. Patent Owner and Appellant ____________ Appeal 2019-006299 Reexamination Control 90/014,122 Patent 6,346,876 B1 Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s decision to reject claims 1–11, 13–26, 29–32, and 42–50. We have jurisdiction under 35 U.S.C. §§ 134 and 306, and we heard the appeal on November 7, 2019. We REVERSE. 1 Appellant identifies the real party in interest as Omega Patents, L.L.C. Appeal Br. 8. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 2 STATEMENT OF THE CASE This proceeding arose from a request for ex parte reexamination filed on April 11, 2018 of United States Patent 6,346,876 (“the ’876 patent”), issued to Kenneth E. Flick on February 12, 2002. The ’876 patent describes a controller that is compatible with multiple vehicles. The controller generates command signals on a data communications bus for at least one vehicle device. Multiple signals or codes can be generated on the bus, and only that code for a given vehicle will cause an operation or response from the vehicle device. See Abstract. Claim 1 is illustrative of the invention and is reproduced below: 1. A control system for a vehicle comprising a data communications bus and at least one vehicle device connected to the data communications bus, the control system comprising: a transmitter and a receiver for receiving signals from said transmitter; and a multi-vehicle compatible controller at the vehicle and cooperating with said transmitter and receiver, said multivehicle compatible controller generating at least one set of command signals on the data communications bus for the at least one vehicle device, the at least one set of command signals comprising at least one working command signal and at least one non-working command signal for a given vehicle to thereby provide command compatibility with a plurality of different vehicles. RELATED PROCEEDINGS This appeal is said to be related to various proceedings. First, Appellant informs us of two related appeals in connection with reexamination proceedings involving U.S. Patents 8,032,278 (“the ’278 Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 3 patent”) and 6,756,885 (“the ’885 patent”). Appeal Br. 8–11.2 In the appeal involving the ’278 patent in connection with Reexamination Control No. 90/013,851, we reversed the Examiner’s anticipation and obviousness rejections based on Chou—a prior art reference that is also at issue here.3 See Ex parte Omega Patents, L.L.C., Appeal No. 2018-008119 (PTAB Nov. 13, 2018) (“Bd. Dec.”). Appellant, however, informs us that the ’278 patent is now involved in another reexamination proceeding (Control No. 90/014,309) based on different prior art that is also at issue here. See Reply Br. 3–4. The appeal in connection with the reexamination of the ’885 patent (Reexamination Control No. 90/014,038) noted on pages 10 and 11 of the Appeal Brief is no longer pending in view of the Reexamination Certificate that issued on September 28, 2019. Appellant also informs us of a related litigation involving Appellant and Requester (CalAmp Corporation) (“CalAmp litigation”). Appeal Br. 11–12; Reply Br. 4. This litigation includes a case where the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), among other things, affirmed a jury’s verdict in a case from the Middle District of Florida that the ’876 patent’s asserted claims were valid. See Omega Patents, LLC v. CalAmp Corp., 920 F.3d 1337, 1353 (Fed. Cir. 2019). 2 Throughout this opinion, we refer to (1) the Final Rejection mailed November 16, 2018 (“Final Act.”); (2) the Appeal Brief filed May 15, 2019 (“Appeal Br.”); (3) the Examiner’s Answer mailed June 18, 2019 (“Ans.”); and (4) the Reply Brief filed August 19, 2019 (“Reply Br.”). 3 The Chou reference is cited in full below. The Examiner’s obviousness rejections that were reversed were based on Chou alone and in combination with other references that are not at issue here. See Bd. Dec. 3–4. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 4 Appellant also informs us of seven other ex parte reexamination proceedings involving four patents (Appeal Br. 12–14), one of which (Control No. 90/014,038) resulted in issuing a reexamination certificate as noted above. Lastly, Appellant informs us that a second trial involving Appellant and Requester concluded on September 30, 2019 with a Jury Verdict finding that Requester infringed the related ’278 and ’727 patents. See Filing Under 37 C.F.R. § 1.565 filed Oct. 29, 2019. THE REJECTIONS The Examiner rejected claims 1, 3, and 4 on the ground of nonstatutory double patenting as unpatentable over claim 1 of U.S. Patent 6,275,147 B1 (“the ’147 patent”) in view of SAE ON-BOARD DIAGNOSTICS FOR LIGHT AND MEDIUM DUTY VEHICLES STANDARDS MANUAL, SAE HS- 3000, Soc’y of Automotive Engineers (SAE) (1994 & 1997 eds.) (“the 1994/1997 HS-3000 Manuals”). Final Act. 4–5. The Examiner rejected claim 5 on the ground of nonstatutory double patenting as unpatentable over claim 8 of the ’147 patent.4 Final Act. 6. 4 Although the Examiner rejects independent claims 1 and 42 over the combination of the ’147 patent’s claimed invention and the 1994/1997 HS- 3000 Manuals, the Examiner nonetheless rejects dependent claims 5, 13–16, and 46 over the ’147 patent’s claims alone. Compare Final Act. 4, 9–10, 12 with Final Act. 6, 14. Similarly, the Examiner rejects dependent claims 29– 31 solely over the ’147 patent’s claims despite their including limitations commensurate with the independent claims that were rejected based on the combination of references that includes the 1994/1997 HS-3000 Manuals. See Final Act. 11–12. Despite these inconsistencies, we nevertheless present Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 5 The Examiner rejected claim 6 on the ground of nonstatutory double patenting as unpatentable over claim 19 of the ’147 patent in view of the 1994 HS-3000 Manual. Final Act. 6–7. The Examiner rejected claim 7 on the ground of nonstatutory double patenting as unpatentable over claim 5 of the ’147 patent in view of the 1994 HS-3000 Manual. Final Act. 7–8. The Examiner rejected claim 8 on the ground of nonstatutory double patenting as unpatentable over claim 3 of the ’147 patent in view of the 1994 HS-3000 Manual. Final Act. 8–9. The Examiner rejected claims 13–16 and 29–31 on the ground of nonstatutory double patenting as unpatentable over claims 6 and 7 of the ’147 patent. Final Act. 9–12.5 The Examiner rejected claims 42, 44, and 45 on the ground of nonstatutory double patenting as unpatentable over claims 1, 6, and 7 of the ’147 patent in view of the 1994/1997 HS-3000 Manuals. Final Act. 12–14. The Examiner rejected claim 46 on the ground of nonstatutory double patenting as unpatentable over claim 8 of the ’147 patent. Final Act. 14. The Examiner rejected claim 47 on the ground of nonstatutory double patenting as unpatentable over claim 19 of the ’147 patent in view of the 1994 HS-3000 Manual. Final Act. 15. the Examiner’s articulation of the rejections here as they appear in the Final Office Action. 5 Although the Examiner rejects various claims of this grouping separately (see Final Act. 9–12; Ans. 4), we nonetheless consolidate those rejections here for clarity and brevity. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 6 The Examiner rejected claim 48 on the ground of nonstatutory double patenting as unpatentable over claim 5 of the ’147 patent in view of the 1994 HS-3000 Manual. Final Act. 16. The Examiner rejected claim 49 on the ground of nonstatutory double patenting as unpatentable over claim 3 of the ’147 patent in view of the 1994 HS-3000 Manual. Final Act. 16–17. The Examiner rejected claims 1–9, 16, 18–26, 29, and 42–50 under 35 U.S.C. § 103 as unpatentable over CellPort Delivers Wireless, Vehicle- Based Applications Platform; Announces CP2100 Mobile Network Server, CellPort Labs, Inc., PRNewswire, July 26, 1999 (“CellPort”), Philip F. Spelt & Allan M. Kirson, A Demonstration for the ITS Data Bus Prototype, PROC. DIGITAL AVIONICS SYS. CONF., Inst. of Electrical and Electronics Engineers (IEEE) (1998) (“Spelt”), and the 1994 HS-3000 Manual. Final Act. 18–31. The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103 as unpatentable over CellPort, Spelt, POWERPC™ MPC823 USER’S MANUAL, Motorola, Inc. (1998) (“the ’823 Manual”), and the 1994 HS-3000 Manual. Final Act. 31–32. The Examiner rejected claims 13–15, 17, and 30–32 under 35 U.S.C. § 103 as unpatentable over CellPort, Spelt, the 1994 HS-3000 Manual, and Nathanson (US 6,263,268 B1; issued July 17, 2001). Final Act. 33–36. The Examiner rejected claims 1–11, 14, 16, 18–26, 29, 31, and 42–50 under 35 U.S.C. § 103 as unpatentable over Jones (US 6,430,164 B1; issued Aug. 6, 2002) and the 1994 HS-3000 Manual. Final Act. 36–50. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 7 The Examiner rejected claims 13, 15, 17, and 30–32 under 35 U.S.C. § 103 as unpatentable over Jones, the 1994 HS-3000 Manual, and Nathanson. Final Act. 50–52. The Examiner rejected claims 1–11, 14, 16, 18–26, 29, 31, and 42–50 under 35 U.S.C. § 103 as unpatentable over Chou (US 6,330,499 B1; issued Dec. 11, 2001) and the 1994 HS-3000 Manual. Final Act. 52–70. The Examiner rejected claims 13, 15, 17, and 30–32 under 35 U.S.C. § 103 as unpatentable over Chou, the 1994 HS-3000 Manual, and Nathanson. Final Act. 70–72. SUBSTANTIAL NEW QUESTION OF PATENTABILITY (SNQ) Appellant argues that the present reexamination was improperly granted due to the alleged inequities of multiple reexamination requests that are said to not only waste USPTO resources, but are also said to be unfair to Appellant. Appeal Br. 110–17; Reply Br. 25–27. According to Appellant, we should apply a standard similar to that used by the Board in deciding to institute trials for follow-on petitions in inter partes review proceedings. See Appeal Br. 111–13, 117. We decline to do so here. Not only are Appellant’s procedural grievances petitionable matters,6 they do not show error in the Examiner’s SNQ determination. Leaving aside Appellant’s failure to comply with the 6 See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 8 procedural requirements of Manual of Patent Examining Procedure (MPEP) § 2274(VI) (9th ed. Rev. 08.2017, Jan. 2018) to challenge the SNQ determination properly as the Examiner indicates (Ans. 25), we see no error in that determination in any event. Although there is some overlap in the references cited in the related proceedings that are said to preclude an SNQ (see Appeal Br. 114–17; Reply Br. 22), the rejections are not the same, for they involve different evidence, findings, and conclusions. Moreover, these rejections are based on different combinations of prior art references—a distinction that further establishes that these rejections constitute different grounds of rejection despite citing some overlapping references. See In re McDaniel, 293 F.3d 1379, 1384 (Fed. Cir. 2002) (noting that an obviousness rejection that added a prior art reference (Grot) to a combination of other prior art references did not share a common ground of rejection with claims rejected as obvious over those other references). As the Examiner explains, the present reexamination not only involves newly-cited prior art, namely CellPort, Jones, Chou, and the ’823 Manual, but the overlapping references, namely Nathanson and the 1994/1997 HS-3000 Manuals, are presented in a new light when considered in combination with the cited prior art. See Ans. 25; see also Office Action Ordering Reexamination mailed May 2, 2018, at 8–18. Because of these new and non-cumulative teachings, as well as those in various other cited prior art references, an SNQ was deemed to be raised and, therefore, reexamination was ordered. See Ans. 25; see also Office Action Ordering Reexamination mailed May 2, 2018, at 8–18. Accord Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 9 MPEP § 2216 (noting that an SNQ may be based on prior art considered previously if a reference is presented in a new light or a different way that escaped review during earlier examination). Accordingly, we are unpersuaded of error in the Examiner’s SNQ determination. THE DOUBLE PATENTING REJECTIONS The Examiner finds that claims 1, 3–8, 13–16, 29–31, 42, and 44–49 of the ’876 patent are similar, but not identical to, various claims of the ’147 patent, which are said to differ mainly with respect to the recited “working” and “non-working” command signals. See Final Act. 4–17. The Examiner, however, cites section 6.5.2 of the 1994 HS-3000 Manual that details steps used by an On-Board Diagnostics (OBD) II Scan Tool to determine the type of interface used in a given vehicle to support OBD II functions. According to the Examiner, it would have been obvious to combine this teaching with the ’147 patent to determine which set of signals to use for a specific vehicle because these signal types and bus interfaces were specified in the HS-3000 Manuals, and the results would have been predictable. Final Act. 4–5; Ans. 7–8. Appellant argues that there is not only no proper motivation to combine the ’147 patent with the HS-3000 Manuals as the Examiner proposes, but also that evidence of secondary considerations of non- obviousness of the claimed invention, including licensing, commercial success, and copying by others, further demonstrates the impropriety of the Examiner’s rejections. See Appeal Br. 24–34, 61–85; Reply Br. 8–9, 20–22. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 10 ISSUE Has the Examiner erred in rejecting claims 1, 3–8, 13–16, 29–31, 42, and 44–49 under the doctrine of obviousness-type double patenting by finding these claims would have been obvious over various claims of the ’147 patent and the 1994/1997 HS-3000 Manuals? ANALYSIS We begin by noting key inconsistencies in the Examiner’s articulation of the double patenting rejections. Although the Examiner rejects independent claims 1 and 42 over the combination of the ’147 patent’s claimed invention and the 1994/1997 HS-3000 Manuals, the Examiner nonetheless rejects dependent claims 5, 13–16, and 46 over the ’147 patent’s claims alone. Compare Final Act. 4, 9–10, 12 with Final Act. 6, 14. Similarly, the Examiner rejects dependent claims 29–31 solely over the ’147 patent’s claims despite their including limitations commensurate with the independent claims that were rejected based on the combination of references that includes the 1994/1997 HS-3000 Manuals.7 See Final Act. 11–12. Leaving these inconsistencies aside, we still find the Examiner’s rejection problematic on this record. In determining obviousness of the claimed invention, objective evidence of secondary considerations pertaining to non-obviousness must be considered, including commercial 7 Although independent claim 28 was cancelled, its dependent claims are nevertheless pending and, therefore, include the limitations from that independent claim. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 11 success and copying. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). “If rebuttal evidence of adequate weight is produced, the holding of prima facie obviousness . . . is dissipated. Regardless of whether the prima facie case could have been characterized as strong or weak, the examiner must consider all of the evidence anew.” In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). While evidence of secondary considerations must be considered and “may often be the most probative and cogent evidence in the record,” Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed. Cir. 1985), it does not, however, control the obviousness conclusion. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Indeed, a strong case of obviousness cannot be overcome by a far weaker showing of objective indicia of non-obviousness. Tokai Corp. v. Easton Enter., Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011). Nevertheless, “[o]bjective indicia of nonobviousness play a critical role in the obviousness analysis.” Leo Pharm. Products, Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013). These indicia are not just a cumulative or confirmatory part of the obviousness analysis, but rather constitute independent evidence of non-obviousness that can be the most probative evidence in that regard “in avoiding the trap of hindsight when reviewing, what otherwise seems like, a combination of known elements.” Id. Here, even if the ’147 patent’s claimed invention and the 1994/1997 HS-3000 Manuals would have been combinable as the Examiner proposes, we nonetheless find Appellant’s evidence of secondary considerations of Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 12 non-obviousness of the claimed invention, including licensing, commercial success, and copying by others, outweighs the evidence of obviousness on this record. First, it is well settled that recognition and acceptance of a patent by competitors who take licenses under it to avail themselves of the merits of the invention is evidence of non-obviousness. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). As indicated by Appellant and Mr. Joseph McAlexander, a key witness in the related CalAmp litigation, Appellant has eight licenses that include the ’876 patent that have received over $50 million in licensing revenue, much of which resulted from the ’876 patent and other asserted patents in that litigation. Appeal Br. 61–68; Declaration By Joseph C. McAlexander, III Under 37 C.F.R. § 1.132 dated Oct. 15, 2018 (“McAlexander Decl.”) ¶ 23(b)–(c). Notably, the jury in the related CalAmp litigation found these licenses to be a key factor indicating non-obviousness because the licenses were accepted because of the merits of the claimed invention. See Appeal Br. 62 (reproducing the affirmative answer to Question 5 of the Jury Verdict form indicating licensing as a factor for non-obviousness in the related CalAmp litigation); see also Verdict Form, Omega Patents, LLC v. CalAmp Corp., No. 6:13-cv-1950- Orl-40DAB (M.D. Fla. 2016) (Evid. App’x Ex. 2) (“Jury Verdict Form”), at 9. Accord McAlexander Decl. ¶ 23(d) (noting that the ’876 patent is one of three patents asserted in the related CalAmp litigation providing features for multi-vehicle compatibility that is important for Appellant’s licensing program). That the Federal Circuit affirmed the jury’s verdict regarding the ’876 patent’s validity as Appellant indicates (Reply Br. 4) only further Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 13 weighs in favor of non-obviousness based on this secondary consideration. See Omega Patents, 920 F.3d at 1353. To be sure, a successful licensing program does not necessarily mean that an associated patent’s claimed invention would have been non-obvious. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907–08 (Fed. Cir. 1985). That is, licenses may be taken for reasons other than the non- obviousness of claimed invention, such as providing a cheaper alternative to litigation, or because licenses would be mutually beneficial to the licensed group. See id. But the record here suggests otherwise, particularly given the jury’s finding that the above-noted eight licenses were key factors indicating non-obviousness of the’876 patent’s claimed invention because the licenses were accepted due to the merits of the claimed invention—a clear nexus to that invention. See Jury Verdict Form, at 9. Accord McAlexander Decl. ¶ 23(a) (noting this nexus). That the Examiner did not address this key finding from the jury, let alone explain why it does not overcome the countervailing evidence of obviousness when considered with the other evidence of record (see Ans. 16–21), only further weighs against the Examiner, particularly given the Federal Circuit’s affirmance of the jury’s verdict of the ’876 patent’s validity and CalAmp customer infringement. See Omega Patents, 920 F.3d at 1353. We reach a similar conclusion regarding Appellant’s evidence of commercial success. Appeal Br. 69–72; Reply Br. 22. It is well settled that where, as here, commercial success is asserted to support non-obviousness, there must be a nexus (i.e., a legally and factually sufficient relationship) between the commercial success and the claimed invention. Demaco Corp. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 14 v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A prima facie case of nexus is generally established when Appellant shows that (1) there is commercial success, and (2) the thing (product or method) that is commercially successful is the invention disclosed and claimed. Id. Such evidence, however, “must be commensurate in scope with the claims which the evidence is offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). A prima facie case of nexus can be rebutted by showing that the commercial success was due to extraneous factors other than the claimed invention, such as advertising, superior workmanship, etc. Demaco, 851 F.2d at 1392. Furthermore, the commercial success of a claimed embodiment may be due entirely to improvements or modifications made by others; such success, however, is inapposite to non-obviousness. In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985). The record here, however, suggests otherwise. As Appellant indicates (Appeal Br. 69–72), CalAmp’s products that infringed the ’876 patent’s asserted claims were commercially successful due to the merits of the claimed invention—not advertising, promotion, salesmanship, or product features other than those claimed. See Jury Verdict Form, at 9. Accord McAlexander Decl. ¶ 23(e) (noting this nexus). At the time of trial, these very products that embodied Appellant’s claimed invention sold over 466,000 units, earning over $4.1 million in gross profits. Id. ¶ 23(g); Appeal Br. 71–72. Notably, the jury found this commercial success was due to the claimed invention’s merits—not other factors. See Jury Verdict Form, at 9. That the Examiner did not address these key findings, let alone explain why Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 15 they do not overcome the countervailing evidence of obviousness when considered with the other evidence of record (see Ans. 16–21), only further weighs against the Examiner, particularly given the Federal Circuit’s affirmance of the jury’s verdict of the ’876 patent’s validity and CalAmp customer infringement. See Omega Patents, 920 F.3d at 1353–54. We reach a similar conclusion regarding Appellant’s evidence of copying by others. Appeal Br. 72–73; Reply Br. 22. It is well settled that copying a claimed invention can evidence non-obviousness. Pentec, 776 F.2d at 317. Such copying, however, must be limited to the claimed invention, rather than one in the public domain. Specialty Composites v. Cabot Corp., 845 F.2d 981, 991 (Fed. Cir. 1988). Evidence of copying can be especially probative where the copyist tried and failed to develop a device embodying the claimed invention. See Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285–86 (Fed. Cir. 2000) (citations omitted); see also Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984). The mere fact of copying by another, however, is itself not determinative of non-obviousness. Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985), overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999). Copying may be attributable to other factors, such as a general lack of concern or contempt for patents, the ability or willingness of the patentee to enforce the patent right, or the accepted practices in the industry. Genmark, 770 F.2d at 1028. “Even widespread copying could weigh toward opposite conclusions . . . .” Id. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 16 The record here, however, suggests otherwise. As Appellant indicates (Appeal Br. 72–73), the jury found that others copied Appellant’s claimed invention—a key factor indicating non-obviousness of that invention. Jury Verdict Form, at 9. Accord McAlexander Decl. ¶ 23(h) (noting this finding). Moreover, Mr. McAlexander explains that not only did CalAmp copy Appellant’s claimed invention, but it was used to obtain a patent. Id. ¶ 23(i). That CalAmp was unable to make a successful product before copying the ’876 patent’s claimed invention as Appellant indicates (Appeal Br. 74) is telling in this regard, for evidence of copying can be especially probative where the copyist tried and failed to develop a device embodying the claimed invention. See Adv. Display, 212 F.3d at 1285–86; see also Vandenberg, 740 F.2d at 1567. Notably, the testimony of CalAmp’s employees regarding the limited value of the infringing products but for the claimed invention’s multi-vehicle capability, and the fact that these products were developed due to an apparent customer need for this capability, only further bolsters the probative value of Appellant’s evidence of copying as a key factor indicating the claimed invention’s non-obviousness. See McAlexander Decl. ¶ 23(i)–(l) (quoting the District Court’s final order and CalAmp employee testimony). Therefore, Appellant’s contention that the claimed invention was copied not out of some lack of concern or contempt for Appellant’s patents, see Genmark, 770 F.2d at 1028, but rather due to the criticality of the claimed features that were needed to satisfy CalAmp’s customer base (Reply Br. 22), has at least some evidentiary basis on this record. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 17 That the Examiner did not address these key facts, let alone explain why they do not overcome the countervailing evidence of obviousness when considered with the other evidence of record (see Ans. 16–21), only further weighs against the Examiner, particularly given the Federal Circuit’s affirmance of the jury’s verdict of the ’876 patent’s validity and CalAmp customer infringement. See Omega Patents, 920 F.3d at 1353. Although the Examiner finds that there is ostensibly no evidence that (1) the “alleged copying is identical,” and (2) “the other manufacturer had not expended great effort to develop its own solution” (Ans. 21), these findings are undercut by countervailing evidence that others copied the claimed invention—evidence of non-obviousness that includes the affirmed jury verdict. In short, we find Appellant’s evidence of secondary considerations of non-obviousness of the claimed invention, including licensing, commercial success, and copying by others, outweighs the evidence of obviousness on this record. That we found similar evidence of secondary considerations weighed in Appellant’s favor in reversing the Examiner’s obviousness rejections in connection with an appeal in a related reexamination proceeding as Appellant indicates (Appeal Br. 82 (citing Bd. Dec. 14)) only further weighs in favor of Appellant here. Therefore, we are persuaded that the Examiner’s obviousness-type double patenting rejections of claims 1, 3–8, 13–16, 29–31, 42, and 44–49 are erroneous. Because this issue is dispositive regarding our reversing the Examiner’s rejections of these claims, we need not address Appellant’s other associated arguments. Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 18 THE OBVIOUSNESS REJECTIONS For the reasons noted previously, we are also persuaded of error in the Examiner’s obviousness rejections of claims 1–11, 13–26, 29–32, and 42– 50. Final Act. 6–72. On this record, we find Appellant’s evidence of secondary considerations of non-obviousness of the claimed invention, including licensing, commercial success, and copying by others, outweighs the relied-upon evidence of obviousness from the cited prior art references. Because this issue is dispositive regarding our reversing the Examiner’s rejections of these claims, we need not address Appellant’s other associated arguments. CONCLUSION The Examiner’s decision rejecting claims 1–11, 13–26, 29–32, and 42–50 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4 ’147 patent (claim 1), 1994/1997 HS- 3000 Manuals; Obviousness-type Double Patenting 1, 3, 4 5 ’147 patent (claim 8); Obviousness- 5 Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 19 type Double Patenting 6 ’147 patent (claim 19), 1994 HS-3000 Manual; Obviousness-type Double Patenting 6 7 ’147 patent (claim 5), 1994 HS-3000 Manual; Obviousness-type Double Patenting 7 8 ’147 patent (claim 3), 1994 HS-3000 Manual; Obviousness-type Double Patenting 8 13–16, 29– 31 ’147 patent (claims 6, 7); Obviousness- type Double Patenting 13–16, 29– 31 42, 44, 45 ’147 patent (claims 1, 6, 7), 1994/1997 HS-3000 Manuals; Obviousness-type Double Patenting 42, 44, 45 46 ’147 patent (claim 8); Obviousness- type Double Patenting 46 47 ’147 patent (claim 19), 1994 HS-3000 Manual; Obviousness-type Double Patenting 47 48 ’147 patent (claim 5), 1994 HS-3000 Manual; 48 Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 20 Obviousness-type Double Patenting 49 ’147 patent (claim 3), 1994 HS-3000 Manual; Obviousness-type Double Patenting 49 1–9, 16, 18– 26, 29, 42– 50 103 CellPort, Spelt, 1994 HS-3000 Manual 1–9, 16, 18– 26, 29, 42– 50 10, 11 103 CellPort, Spelt, ’823 Manual, 1994 HS-3000 Manual 10, 11 13–15, 17, 30–32 103 CellPort, Spelt, 1994 HS-3000 Manual, Nathanson 13–15, 17, 30–32 1–11, 14, 16, 18–26, 29, 31, 42– 50 103 Jones, 1994 HS- 3000 Manual 1–11, 14, 16, 18–26, 29, 31, 42– 50 13, 15, 17, 30–32 103 Jones, 1994 HS- 3000 Manual, Nathanson 13, 15, 17, 30–32 1–11, 14, 16, 18–26, 29, 31, 42– 50 103 Chou, 1994 HS- 3000 Manual 1–11, 14, 16, 18–26, 29, 31, 42– 50 13, 15, 17, 30–32 103 Chou, 1994 HS- 3000 Manual, Nathanson 13, 15, 17, 30–32 Overall Outcome 1–11, 13– 26, 29–32, 42–50 REVERSED Appeal 2019-006299 Reexamination Control 90/014,122 Patent US 6,346,876 B1 21 cdc PATENT OWNER: ADD&G – 27975 1401 Citrus Center 255 South Orange Avenue P.O. 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