OMEGA PATENTS, LLC et al.

Patent Trials and Appeals Board

Dec 4, 2019

90014122 - (D) (P.T.A.B. Dec. 4, 2019)

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.
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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
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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.
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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
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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.
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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.
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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 . . . .”).

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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
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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.
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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.
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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
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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
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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.
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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
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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.
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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.
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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
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P.O. BOX 3791
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THIRD PARTY REQUESTER:

ANDY PHO: LISA HYSKA CALAMP
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