Thomas et al.v.Pippin

Patent Trial and Appeal Board

Jan 26, 2015

13786274 (P.T.A.B. Jan. 26, 2015)

BoxInterferences@uspto.gov Paper 297
Telephone: 571-272-4683 Entered: January 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,956 McK
Patent Interference 105,957 McK
Patent Interference 105,958 McK
Patent Interference 105,959 McK
Technology Center 2100
____________________

C. DOUGLASS THOMAS and ALAN E. THOMAS

Patent 7,506,190 C1
Patent 7,937,599
Application 12/321,798
Application 13/727,433
Junior Party

v.

JACK D. PIPPIN

Application 13/786,274
Senior Party
____________________

Before FRED E. McKELVEY, RICHARD E. SCHAFER, and
HUNG H. BUI, Administrative Patent Judges.

PER CURIAM.

JUDGMENT
37 C.F.R. §41.127(a)
Interferences 105,956 through 105,959
Judgment

2

In view of the Decision on Motions (Paper 295), it is 1
ORDERED that judgment on priority as to all Counts be entered 2
against junior party C. Douglass Thomas and Alan E. Thomas, and real 3
party in interest Ip Venture, Inc.; 4
FURTHER ORDERED that with respect to Interference 105,956, 5
claims 1-17, 20, and 22-26 of Thomas involved U.S. Patent 7,506,190 are 6
CANCELLED, 35 U.S.C. 135(a);1 7
FURTHER ORDERED that with respect to Interference 105,957, 8
claims 1-28 of Thomas involved U.S. Patent 7,937,599 are CANCELED, 9
35 U.S.C. 135(a); 10
FURTHER ORDERED that with respect to Interference 105,958, 11
claims 1-27 of Thomas involved application 12/321,798 are FINALLY 12
REFUSED; and 13
FURTHER ORDERED that with respect to Interference 105,959, 14
claim 1-24 of Thomas involved application 13/727,433 are FINALLY 15
REFUSED; 16
FURTHER ORDERED that a copy of the Decision on Motions 17
(Paper 295) and this Judgment be entered in the administrative records of 18
(1) involved Thomas U.S. Patent 7,506,190, 19
(2) involved Thomas U.S. Patent 7,937,599, 20
(3) involved Thomas application 12/321,798, 21
(4) involved Thomas application 13/727,433, 22
(5) involved Pippin application 13/786,274, 23

1 Claims 18, 19, and 21 were cancelled as a result of a reexamination
involving Thomas ʼ190.

Interferences 105,956 through 105,959
Judgment

3

(6) Interference 105,956, 1
(7) Interference 105, 957, 2
(8) Interference 105,958, and 3
(9) Interference 105,959; 4
FURTHER ORDERED that a party seeking judicial review timely 5
serve notice on the Director of the United States Patent and Trademark 6
Office (37 C.F.R. §§ 90.1 and 104.2); and 7
FURTHER ORDERED that attention is directed to Biogen Idec MA, 8
Inc., v. Japanese Foundation for Cancer Research, 2014 WL 2167677 (D. 9
Mass. 2014). 10

NOTICE: "Any agreement or understanding between parties to an 11
interference, including any collateral agreements referred to therein, made in 12
connection with or in contemplation of the termination of the interference, 13
shall be in writing and a true copy thereof filed in the Patent and Trademark 14
Office before the termination of the interference as between the said parties 15
to the agreement or understanding." 35 U.S.C. 135(c); see also Bd.R. 205 16
(settlement agreements). 17

Interferences 105,956 through 105,959
Judgment

4

cc (electronic delivery):
Attorney for Junior Party – Thomas:
Richard Neifeld
Robert Hahl
Neifeld IP Law, PC
neifeld@neifeld.com
rhahl@neifeld.com

C. Douglas Thomas
IpVenture, Inc.
doug@ipventure.com

Attorney for Senior Party – Pippin:
R. Danny Huntington
William N. Hughet
Rothwell, Figg, Ernst & Manbeck, PC
dhuntington@rfem.com
whughet@rfem.com

BoxInterferences@uspto.gov Paper 295
Telephone: 571-272-4683 Entered: January 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,956 McK
Patent Interference 105,957 McK
Patent Interference 105,958 McK
Patent Interference 105,959 McK
Technology Center 2100
____________________

C. DOUGLASS THOMAS and ALAN E. THOMAS

Patent 7,506,190 C1
Patent 7,937,599
Application 12/321,798
Application 13/727,433
Junior Party

v.

JACK D. PIPPIN

Application 13/786,274
Senior Party
____________________

Before FRED E. McKELVEY, RICHARD E. SCHAFER, and
HUNG H. BUI, Administrative Patent Judges.

PER CURIAM.

DECISION ON MOTIONS
37 C.F.R. §41.125
Interferences 105,956 through 105,959
Decision on Motions

2

I. Introduction
The case before us relates to four consolidated interferences involving 1
(1) two Junior Party1 Thomas patents and two Junior Party Thomas 2
applications versus (2) Senior Party2 Pippin application 13/786,2743 (Pippin 3
’274): 4
(1) Interference 105,956 between claims 1-17, 20, 22-264 of 5
Thomas Patent 7,506,1905 (Thomas ’190) and claim 1 of Pippin 6
’274 (Paper 1, pp. 6-8); 7
8
(2) Interference 105,957 between claims 1–28 of Thomas 9
Patent 7,937,5996 (Thomas ’599) and claim 1 of Pippin ’274 10
(Paper 1, pp. 6-8); 11
12

1 Real Party in Interest is Ip Venture, Inc.

2 Real Party in Interest is Intel Corporation.

3 US Application 13/786,274 filed 5 March 2013, entitled “Method and
Apparatus for Programmable Thermal Sensor for an Integrated Circuit.”

4 When initially declared, Claims 1-26 of Thomas ʼ190 were designated as
corresponding to the Count. Claims 18, 19, and 21 have since been
cancelled as a result of a reexamination involving Thomas ʼ190. See also
n.9, infra.

5 US Patent 7,506,190 issued 17 March 2009 based on application
11/821,142 filed 22 June 2007, entitled “Thermal and Power Management
for Computer Systems.”

6 US Patent 7,937,599 issued 3 May 2011 based on application 12/229,637
filed 25 August 2008, entitled “Thermal and Power Management for
Computer Systems.”

Interferences 105,956 through 105,959
Decision on Motions

3

(3) Interference 105,958 between claims 1–27 of Thomas 1
application 12/321,7987 (Thomas ’798) and claim 1 of Pippin ’274 2
(Paper 1, pp. 6-8); and 3
4
(4) Interference 105,959 between claims 1–24 of Thomas 5
application 13/727,4338 (Thomas ’433) and claim 1 of Pippin ’274 6
(Paper 1, pp. 6-8). 7
8
The terminology “this interference” as used in this opinion should be 9
construed as referring collectively to Interferences 105,956 through 105,959. 10
All post-declaration papers in this interference have been filed in 11
administrative record of Interference 105,956. Order (Paper 3); First 12
Redeclaration9 (Paper 215). 13
Pending are the following motions: 14
(1) Thomas Motion 1 (Paper 177) seeks entry of judgment against 15
claim 1 of Pippin ’274 based on: 16
(i) an alleged lack of written description under 35 U.S.C. § 112, 17
first paragraph, and 18

7 US Application 12/321,798 filed 25 January 2009 entitled “Configurable
Thermal and Power Management for Portable Computer.”

8 US Application 13/727,433 filed 26 December 2012 entitled
“Configurable Thermal and Power Management for Portable Computer.”

9 Interference 105,956 was redeclared (Paper 215) to take into account a
result of a Reexamination Certificate (Ex. 2077) issued in connection with
reexamination of Thomas ʼ190:
(1) Claims 1-17—patentability confirmed;
(2) Claims 18, 19, and 21—cancelled;
(3) Claims 20, 22, and 25—patentable as amended; and
(4) Claims 23, 24, and 26—dependent on an amended claim and
patentability confirmed.

Interferences 105,956 through 105,959
Decision on Motions

4

(ii) an alleged indefiniteness under 35 U.S.C. § 112, second 1
paragraph. 2
Paper 177, pp. 1-17. 3
Pippin opposes (Paper 197). 4
Thomas did not file a reply. 5
(2) Thomas Motions 5.1 through 5.4 (Papers 193-196) seek entry 6
of judgments of no interference-in-fact between the subject matter of certain 7
Thomas claims and the subject matter of claim 1 of Pippin ‘274: 8
(i) Thomas Motion 5.1 (Paper 193) seeks 9
entry of judgment of no interference-in-fact between 10
claims 1-17, 20, 22-26 of Thomas ’190 (all the remaining 11
claims) and claim 1 of Pippin ’274. Pippin opposes 12
(Paper 226). Thomas has replied (Paper 274). 13
14
(ii) Thomas Motion 5.2 (Paper 194) seeks entry 15
of judgment of no interference-in-fact between 1–28 of 16
Thomas ’599 (all the claims) and claim 1 of Pippin ’274. 17
Pippin opposes (Paper 227). Thomas did not reply. 18
19
(iii) Thomas Motion 5.3 (Paper 195) seeks 20
entry of judgment of no interference-in-fact between 21
claims 1-27 of Thomas ’798 (all the claims) and claim 1 22
of Pippin ’274. Pippin opposes (Paper 228). Thomas did 23
not reply. 24
25
(iv) Thomas Motion 5.4 (Paper 196) seeks entry 26
of judgment of no interference-in-fact between claims 27
1-24 of Thomas ’433 (all the claims) and claim 1 of 28
Pippin ’274. Pippin opposes (Paper 229). Thomas did 29
not reply. 30
31
Interferences 105,956 through 105,959
Decision on Motions

5

(3) Thomas Motion 6 (Paper 178) seeks to designate claims 10 1
and 18–26 of Thomas ’190 as not corresponding to the Count. Pippin 2
opposes (Paper 230). Thomas has replied (Paper 278). 3
(4) Thomas Motion 7 (Paper 179) seeks to designate claims 26-27 4
of Thomas ’798 as not corresponding to the Count. Pippin opposes 5
(Paper 231). Thomas has replied (Paper 277). 6
(5) Pippin Miscellaneous Motion 4 (Paper 96) seeks entry of an 7
order vacating authorization for Thomas to file Motion 1 and Motions 8
5.1-5.4. Thomas opposes (Paper 98). Pippin has replied (Paper 100). An 9
opinion in support of our decision with respect to Pippin Motion 4 has been 10
entered as a separate paper (Paper 296). 11
II. Background 12
Pippin requested an interference between (1) claim 1 of Pippin ‘274 13
and (2) claims of the Thomas patents and applications. Interference Request 14
(Ex. 1003, pp. 8–60). 37 C.F.R. § 41.202(a) 15
The involved Thomas patents and applications are part of a family of 16
related patents and pending continuation applications (“the Thomas 17
family”). 18
All the claims of seven patents10 of the Thomas family have been 19
canceled as a result of adverse final decisions in Interferences 105,801, 20
105,802 and 105,803. 21

10 The seven patents are:

(1) Patent 5,752,011 (May 12, 1998) (“Thomas ’011”) (Ex. 1018);
(2) Patent 5,974,557 (Oct. 26, 1999) (“Thomas ’557”) (Ex. 1019);
(3) Patent 6,216,235 (Apr. 10, 2001) (“Thomas ’235”) (Ex. 1020);
(4) Patent 6,487,668 (Nov. 26, 2002) (“Thomas ’668”) (Ex. 1021);
Interferences 105,956 through 105,959
Decision on Motions

6

The interfering subject matter is directed to methods and systems 1
for power and thermal management in computer systems including a 2
microprocessor having a clock speed. 3
During operation of the system, the microprocessor temperature is 4
sensed. 5
If a predetermined temperature is reached, an active cooling device 6
(fan) is activated and the clock speed of the microprocessor is reduced to 7
decrease the heat generated. 8
The interfering subject matter is represented by Count 1, which is the 9
same as claim 1 of Pippin ’274. 10
Claim 1 of Pippin ’274 is (1) identical to claim 34 of Pippin’s parent 11
application 10/464,482 (“Pippin ’482”) filed on June 19, 2003 and (2) was 12
the Count in each of the three prior interferences: 105,801, 105,802, and 13
105,803. 14
Count 1 (identical to Pippin claim 1) reads [matter in brackets added]: 15
A computer system comprising: 16
[1] an active cooling device; 17
[2] a microprocessor comprising: 18
[2.1] a register storing a register value 19
corresponding to a threshold temperature; 20
21
[2.2] a programmable thermal sensor receiving 22
the register value, wherein the programmable 23

(5) Patent 7,167,993 (Jan. 23, 2007) (“Thomas ’993”) (Ex. 1022);
(6) Patent 7,293,186 (Nov. 6, 2007) (“Thomas ’186”) (Ex. 1023); and
(7) Patent 7,418,611 (Aug. 26, 2008) (“Thomas ’611”) (Ex. 1024).

Interferences 105,956 through 105,959
Decision on Motions

7

thermal sensor generates a first interrupt signal if a 1
microprocessor temperature exceeds the threshold 2
temperature, 3
4
wherein the active cooling device is activated in response 5
to the first interrupt signal, and 6
wherein the active cooling device comprises a fan, and 7
[3] clock circuitry for providing a clock signal for the 8
microprocessor, 9
wherein a frequency of the clock signal is reduced in 10
response to the first interrupt signal. 11
Paper 215, pp. 3-4 (Count 1); Paper 15, p. 3 (clean copy of Pippin Claim 1). 12
All Thomas claims have been designated as corresponding to the 13
Count: 14
(1) claims 1–17, 20, and 22–26 of Thomas ’190 15
(2) claims 1–28 of Thomas ’599, 16
(3) claims 1–27 of Thomas ’798, and 17
(4) claims 1–24 of Thomas ’433. 18
Paper 215, pp. 4–10. 19
With respect to Count 1, the parties have been accorded an earlier 20
constructive reduction to practice date (i.e., benefit for the purpose of 21
priority) of: 22
Earliest Thomas date: 20 June 1994 23
Earliest Pippin date: 21 September 1993 24
25
Thomas has not contested the September 21, 1993 benefit date 26
accorded to Pippin. Paper 64, p. 19. 27
Interferences 105,956 through 105,959
Decision on Motions

8

Moreover, Thomas does not allege a date of invention prior to the 1
earliest date accorded to Pippin (21 September 1993). 2
Accordingly, there was no need to authorize motions based on 3
priority. Paper 64, p. 19. 4
Assuming that Thomas does not prevail on its motions, Pippin 5
prevails on the issue of priority and all Thomas claims designated to 6
corresponding to the Count would be unpatentable. 7
A. Witnesses 8
Thomas relies on the testimony of Dr. Jose Renau. See 9
(1) First Declaration of Jose Renau, Ph.D., in support of 10
Thomas Motion 1 (Paper 177). Ex. 2009 (Renau CV), Ex. 2010. 11
(2) Second Declaration of Jose Renau, Ph.D., in support of 12
Thomas Motion 5.1 (Paper 193), Ex. 2019. 13
(3) Third Declaration of Jose Renau, Ph.D., in support of 14
Thomas Motion 5.2 (Paper 194), Ex. 2020. 15
(4) Declaration of Jose Renau, Ph.D., in support of Thomas 16
Motion 5.3 (Paper 195), 37 C.F.R. § 41.202(a). 17
(5) Fifth Declaration of Jose Renau, Ph.D., in support of 18
Thomas Motion 5.4 (Paper 196), Ex. 2023. 19
(6) Sixth Declaration of Jose Renau, Ph.D., in support of 20
Thomas Motion 6 (Paper 178), Ex. 2047. 21
(7) Seventh Declaration of Jose Renau, Ph.D., in support of 22
Thomas Motion 7 (Paper 179), Ex. 2050. 23
24
Pippin relies on the testimony of Dr. John H. F. Scott-Thomas. See 25
(1) Ex. 1061: Declaration of John H. F. Scott-Thomas, Ph.D., in support of 26
Interferences 105,956 through 105,959
Decision on Motions

9

Pippin Background, (2) Paper 222—Invention Background, (3) Paper 223—1
Level of Skill Background, (4) Paper 224—Prior Art Background, and 2
(5) Ex. 1060 Scott-Thomas CV. 3
1. Dr. Jose Renau 4
Dr. Renau is an Assistant Professor at the University of California and 5
has a Ph.D. degree in computer science as well as master degrees in 6
computer science and computer engineering from University of Illinois at 7
Urbana Champaign. 8
He has over 14 years of experience in research pertaining to computer 9
systems, including thermal and power management of computers. 10
Dr. Renau has published many papers in the field of design of 11
integrated circuits for computers, including power and thermal management 12
aspects of such circuits. 13
Dr. Renau is qualified to express opinions regarding the technology 14
involved in this case. 15
2. Dr. John H. F. Scott-Thomas 16
Dr. Scott-Thomas is an architect at TechInsights. 17
He has a Ph.D. degree in Physics and Electrical Engineering from 18
Massachusetts Institute of Technology (MIT). 19
Dr. Scott-Thomas has 24 years of experience in device research and 20
integrated circuit (IC) design. 21
Dr. Scott-Thomas is qualified to express opinions regarding the 22
technology involved in this case. 23
Interferences 105,956 through 105,959
Decision on Motions

10

3. Witness credibility 1
To the extent that there is a conflict between the testimony of 2
Dr. Renau and Dr. Scott-Thomas, we credit the testimony of Dr. Scott-3
Thomas over that of Dr. Renau. 4
In our view, the testimony of Dr. Scott-Thomas is more consistent 5
with the teachings of the prior art and the information contained in the 6
respective specifications of the parties. 7
III. Thomas Motion 1 8
Thomas Motion 1 (Paper 177) moves for judgment as to claim 1 of 9
Pippin ’274 based on: 10
(1) lack of a written description under 35 U.S.C. § 112, first 11
paragraph, and 12
(2) indefiniteness under 35 U.S.C. § 112, second paragraph. 13
Specifically, Thomas argues: (1) Pippin’s involved application does 14
not provide an adequate written description for “clock circuitry for providing 15
a clock signal for the microprocessor” recited in Pippin claim 1 and 16
(2) Pippin claim 1 is indefinite. Paper 177, pp. 1–19 (emphasis added). 17
A. Analysis 18
1. 19
Whether the descriptive portion of a specification contains a written 20
description of claimed subject matter is an issue of fact. Chen v. Bouchard, 21
347 F.3d 1299, 1304 (Fed. Cir. 2003); In re Alton, 76 F.3d 1168, 1171-72 22
(Fed. Cir. 1996). 23
In order to satisfy the adequate written description requirement, an 24
applicant does not have to utilize any particular form of disclosure to 25
describe the subject matter claimed, but "the description [in the descriptive 26
Interferences 105,956 through 105,959
Decision on Motions

11

portion of the specification] must clearly allow persons of ordinary skill in 1
the art to recognize that [the applicant] invented what is claimed." In re 2
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)(citation omitted); In re Alton, 3
at 1172. 4
The language in the written description portion of a specification does 5
not have to be in ipsis verbis as the language of a claim. In re Wertheim, 6
541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 7
1971). 8
2. 9
Whether a claim is indefinite is an issue of law. Credle v. Bond, 10
25 F.3d 1566, 1576 (Fed. Cir. 1994). 11
The second paragraph of 35 U.S.C. § 112 requires that a patent’s 12
claims, viewed in light of the specification and prosecution history, inform 13
those skilled in the art about the scope of the invention with reasonable 14
certainty. See Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120, 2129-30 15
(2014): 16
The standard we adopt accords with opinions of this 17
Court stating that “the certainty which the law requires in 18
patents is not greater than is reasonable, having regard to 19
their subject-matter.” Minerals Separation, Ltd. v. Hyde, 20
242 U.S. 261, 270 (1916). See also United Carbon, 317 21
U.S., at 236 (“claims must be reasonably clear-cut”); 22
Markman, 517 U.S., at 389 (claim construction calls for 23
“the necessarily sophisticated analysis of the whole 24
document,” and may turn on evaluations of expert 25
testimony”). 26
27
Interferences 105,956 through 105,959
Decision on Motions

12

Indefiniteness is to be evaluated from the perspective of a person with 1
ordinary skill in the relevant art at the time of the invention—when the 2
patent application was filed. Id. 3
3. 4
An action taken in an interference, including declaration of the 5
interference, is presumed correct and represents the status quo in the 6
interference. 7
A party wishing to change the status quo must seek authorization to 8
file, and thereafter file, a motion. 37 C.F.R. §§ 41.120(a) and 41.121(a). 9
A moving party has the burden of proof to demonstrate entitlement to 10
the relief requested. 37 C.F.R. § 41.121(b). 11
In general, the applicable standard of proof is a preponderance of the 12
evidence. See, e.g., Bilstad v. Wakalopulos, 386 F.3d 1116, 1129 (Fed. Cir. 13
2004); Bruning v. Hirose, 161 F.3d 681, 685 (Fed. Cir. 1998). 14
4. 15
Thomas has identified a limitation of Pippin claim 1 said not to be 16
described: “clock circuitry for providing a clock signal for the 17
microprocessor.” Paper 177, pp. 1–15. 18
In an interference, as part of mandatory discovery, a party is required 19
to file an annotated copy of its claims. 37 C.F.R. § 41.110(b). 20
Pippin filed the required annotated copy of its involved claim 1. 21
Paper 22. 22
Pippin’s annotated copy of its claim 1 sets out the basis for Pippin’s 23
belief that its claim 1 is supported by the descriptive portion of Pippin’s 24
specification. 25
Interferences 105,956 through 105,959
Decision on Motions

13

An opponent’s annotated claim document should be the starting point 1
for a party’s motion for judgment based on an alleged lack of a written 2
description, i.e., the opponent should make out a case why the information in 3
the party’s annotated claims are not correct. 4
Instead of addressing Pippin’s explanation why Pippin believes it has 5
support to the “clock circuitry for providing a clock signal for the 6
microprocessor” limitation, Thomas bases its “written description” 7
arguments on (1) a proffered narrow claim construction, and (2) a selective 8
reading of Pippin’s disclosure, all the while ignoring what Pippin set out in 9
its annotated claim paper. 10
Thomas requests the Board to construe the limitation: “clock circuitry 11
for providing a clock signal for the microprocessor” narrowly and require 12
any “clock circuitry” to be structural distinct from the microprocessor, i.e., 13
not within the microprocessor. Paper 177, pp. 3-5. 14
Based on the proffered narrow claim construction, Thomas argues that 15
(1) Pippin’s claimed “clock circuitry” constitutes new matter that cannot 16
provide written description, and (2) Pippin’s claimed “clock circuitry” is not 17
consistent with Pippin’s disclosure that is said to expressly limit “clock 18
circuitry for providing a clock signal for the microprocessor” to mean part of 19
its microprocessor. Paper 177, pp. 5-15. 20
As part of its case, Thomas relies on the disclosures of numerous 21
parent cases. 22
We reject Thomas’ approach to challenging Pippin’s claim 1 on 23
written description grounds based on disclosure in Pippin’s earlier 24
applications. 25
Interferences 105,956 through 105,959
Decision on Motions

14

Thomas argues: 1
(1) “Pippin’s involved application 13/786,274 claims to be a: 2
continuation of 10/464,482, and that 10/464,482 is a continuation of 3
08/636,024, and that 08/636,024 is a continuation of application 4
08/401,473, and that the 08/401,473 application is a division of the 5
08/124,980 application,” 6
(2) the 08/124,980 [Pippin] application does not describe the 7
concept of the “clock circuitry” residing outside the microprocessor,11 8
and 9
(3) the claims of the 10/464,482 applications do not recite such 10
“clock circuitry,” 11
According to Thomas, Pippin’s claimed “clock circuitry” constitutes “new 12
matter” and therefore lacks written description support in the specification of 13
the involved Pippin application. Paper 177, pp. 5-7. 14
However, the only appropriate specification for the determination of 15
adequate written descriptive support is the specification of which the 16
involved claims form a part, i.e., Pippin ʼ274. See Reiffin v. Microsoft 17
Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). 18
Claims should be construed consistent with the written description 19
portion of the specification. Claim terms are to be accorded their ordinary 20
and accustomed meaning as those terms would be understood by one of 21
ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 22
(Fed. Cir. 2005) (en banc). 23

11 Thomas has not file a motion seeking entry of an order vacating benefit
accorded to Pippin for its earlier applications.

Interferences 105,956 through 105,959
Decision on Motions

15

Pippin’s claim 1 requires “clock circuitry” to provide a clock signal 1
for the “microprocessor.” The plain language of Pippin’s claim 1 does not 2
require the “clock circuitry” be structurally distinct from the 3
“microprocessor.” Rather, the plain language of Pippin’s claim 1 only 4
requires “clock circuitry” to provide a clock signal for the “microprocessor.” 5
An interpretation of Pippin’s claim 1 to cover various embodiments is 6
consistent with Pippin’s written description portion of the specification 7
describing different embodiments of “clock circuitry” vis-à-vis the 8
“microprocessor” as shown in Fig. 7, Fig. 9, Fig. 10, and Fig. 11of Pippin’s 9
drawing. Ex. 2051. 10
For example, Pippin Fig. 7, reproduced below, shows an example 11
embodiment of “clock circuitry for providing a clock signal for the 12
microprocessor.” 13
14
Pippin Fig. 7 15
16
Depicted is a block diagram of a first embodiment of a 17
microprocessor incorporating a programmable thermal sensor. 18
Interferences 105,956 through 105,959
Decision on Motions

16

1
Pippin, in describing FIG. 7, states: 2
External to the microprocessor 700 is an external clock 3
710. The external clock 710 provides a clock signal to 4
the PLL [phase lock loop] circuit 720. The PLL circuit 5
720 permits fine tuning and variable frequency 6
adjustment of the input clock signal. Specifically, the 7
PLL circuit 720 receives a value, and increases or 8
decreases the frequency based on the value received. The 9
PLL circuit 720 is intended to represent a broad category 10
of frequency adjustment circuits, which are well known 11
in the art and will not be described further. The output of 12
the PLL circuit 720 is the microprocessor system clock, 13
and is input to the processor unit 705. 14
15
Ex. 2051, ¶ 47 (emphasis added). 16
An external clock 710, as shown in Fig. 7, can serve as the claimed 17
“clock circuitry for providing a clock signal for the microprocessor,” as 18
recited in Pippin’s claim 1. 19
Similarly, Pippin Fig. 9, reproduced below, shows another example 20
embodiment of “clock circuitry for providing a clock signal for the 21
microprocessor” — which is either inside or outside a microprocessor. 22
Interferences 105,956 through 105,959
Decision on Motions

17

1
Pippin Fig. 9 2
Fig. 9 depicts a block diagram of a second embodiment 3
of a microprocessor incorporating a programmable thermal sensor. 4
5
Pippin’s disclosure, in describing FIG. 9, states: 6
[A]n external clock 945 is input to a counter 950, and the output 7
of the counter 950 is input to a clock circuit 930. The clock 8
circuit 930 buffers the input clock frequency to generate the 9
microprocessor clock for the processor unit 905. 10
11
Ex. 2051, ¶ 53 (emphasis added). 12
Either a clock circuit 930 inside the microprocessor 900 or a 13
combination of an external clock 945, a counter 950 and a clock circuit 930 14
can serve as the claimed “clock circuitry for providing a clock signal for the 15
microprocessor” as recited in Pippin’s claim 1. 16
Pippin Fig. 10 and Pippin Fig. 11, both reproduced below, show yet 17
another example embodiment of “clock circuitry for providing a clock signal 18
for the microprocessor” — which is external to a microprocessor. 19
Interferences 105,956 through 105,959
Decision on Motions

18

1
Pippin Fig. 10 depicts a block diagram of a microprocessor 2
incorporating a fail-safe thermal sensor 3
4
5
Pippin Fig. 11 depicts a computer system incorporating 6
a microprocessor comprising thermal sensing 7
8
Either a clock circuit 1020 shown in Pippin Fig. 10 or a clock circuit 9
1107 shown in Pippin Fig. 11 can serve as the claimed “clock circuitry for 10
providing a clock signal for the microprocessor” as recited in Pippin’s 11
Interferences 105,956 through 105,959
Decision on Motions

19

claim 1. Both clock circuit 1020 and clock circuit 1107 are external to a 1
microprocessor. Ex. 2051. 2
The Pippin disclosure does not indicate that the location of the “clock 3
circuitry” relative to the “microprocessor” is considered an essential element 4
of the invention. Cf. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 5
1479 (Fed. Cir. 1998). 6
Pippin’s disclosure does not limit “clock circuitry for providing a 7
clock signal for the microprocessor” to mean part of its microprocessor. 8
Rather, the “clock circuitry” can cover circuitry: (1) in the 9
microprocessor, (2) partially in the microprocessor, as shown in Pippin 10
Fig. 7 and Pippin Fig. 9, and (3) not in the microprocessor, as shown in 11
Pippin Fig. 10 and Pippin Fig. 11. 12
For the reasons given, we decline to confine the claimed “clock 13
circuitry” of Pippin claim 1 to any specific Pippin embodiment. Phillips, 14
415 F.3d at 1323. Consequently, we reject the proffered Thomas claim 15
construction maintaining that the “clock circuitry” must be structural distinct 16
from the microprocessor, i.e., not within the microprocessor. 17
Thomas relies on testimony of Dr. Renau in support of its no written 18
description argument. Ex. 2010. 19
Dr. Renau testified that: 20
(1) clock circuitry for providing a clock signal for the 21
microprocessor is part of its microprocessor; 22
(2) an artisan of ordinary skill would understand from Pippin’s 23
disclosure that Pippin’s specification defines “clock circuitry” as only 24
the “PLL Circuit 720” of Fig. 7 and the “Clock Circuit 930” of Fig. 9; 25
and 26
Interferences 105,956 through 105,959
Decision on Motions

20

(3) the existence of “Clock Circuit 1020” of Fig. 10 would not 1
have suggested to an artisan of ordinary skill that “clock circuitry” 2
means “Clock Circuit 1020.” 3
Ex. 2010, ¶¶22, 40, 58-69. 4
We decline to accord Dr. Renau’s testimony much weight because it 5
overlooks other embodiments. 6
Dr. Renau does not present any credible scientific basis why Pippin 7
Fig. 7, Fig. 9, Fig. 10, and Fig. 11 do not provide a written description for 8
“clock circuitry for providing a clock signal for the microprocessor” as 9
broadly recited in Pippin’s claim 1. 10
Nor has Dr. Renau provided a credible scientific reason (1) why one 11
having ordinary skill in the art would not have been considered as part of the 12
claimed “clock circuitry” the external clock 710, shown in Pippin Fig. 7; 13
(2) why the external clock 945 and the counter 950, shown in Pippin Fig. 9, 14
would not have been considered as part of the claimed “clock circuitry”; or 15
(3) why the existence of “Clock Circuit 1020” shown in Pippin Fig. 10 16
would not have been considered as the claimed “clock circuitry.” 17
Dr. Renau has not satisfactorily explained why Pippin’s written 18
description, especially when considered in light of Pippin Fig. 7, Fig 9, 19
Fig. 10, and Fig. 11 would be viewed by one skilled in the art as being 20
insufficient to convey disclosure of the limitation: “clock circuitry for 21
providing a clock signal for the microprocessor.” 22
Thomas has not satisfied its burden of establishing that the written 23
description portion of Pippin does not describe the “clock circuitry for 24
providing a clock signal for the microprocessor” within the meaning of 25
Pippin’s claim 1. 26
Interferences 105,956 through 105,959
Decision on Motions

21

5. 1
Indefiniteness 2
Thomas asserts that Pippin Claim 1 is unpatentable under 35 U.S.C. 3
§ 112, second paragraph, as being indefinite. Paper 177, pp. 15-17. 4
Thomas’ assertion of indefiniteness is predicated on Ex parte 5
Miyazaki, Appeal 2007-3300 (BPAI 2008) (precedential) (a claim may be 6
indefinite if the claim is amenable to two or more plausible claim 7
constructions). 8
Thomas argues because the “clock circuitry for providing a clock 9
signal for the microprocessor” is amenable to a claim construction that 10
permits the “clock circuitry” to be (1) inside of, (2) partly inside and partly 11
outside of, or (3) not inside of the microprocessor, Pippin claim 1 must 12
therefore be indefinite under 35 U.S.C. § 112, second paragraph. 13
Thomas’ argument confuses breadth with indefiniteness. 14
First, the plain meaning of “clock circuitry for providing a clock 15
signal for the microprocessor” does not require such circuitry to be 16
(1) external to, (2) internal to, or (3) partially external and internal to a 17
microprocessor. 18
Rather, the plain meaning of the claimed clock circuitry covers all 19
possible locations ((1) external to, (2) internal to, or (3) partially external 20
and internal to a microprocessor) as shown, for example in Pippin Fig. 7, 21
Fig. 9, Fig. 10, and Fig. 11. 22
We find no plausible basis for narrowly construing the claim 23
limitation to read on one particular embodiment to the exclusion of other 24
embodiments in Pippin’s disclosure. 25
Interferences 105,956 through 105,959
Decision on Motions

22

Pippin claim 1 is broadly worded to encompass multiple 1
embodiments, but that does not make its scope indefinite. Cf. In re Miller, 2
441 F.2d 689, 693 (CCPA 1971). 3
Second, Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120 (2014), 4
held that a claim is indefinite if, read in light of the written description 5
portion of the specification and prosecution history fails to reasonably 6
inform with reasonable certainty those skilled in the art with respect to the 7
scope of the invention. Id. at 2129-30. 8
When “clock circuitry for providing a clock signal for the 9
microprocessor” of Pippin Claim 1 is read in light of Pippin Fig. 7, Fig. 9, 10
Fig. 10, and Fig. 11, we see no reason why a person having ordinary skill 11
would not understand the scope and meaning of the disputed limitation with 12
reasonable certainty. 13
Thomas has not satisfied its burden of establishing that Pippin claim 1 14
is indefinite under 35 U.S.C. § 112, second paragraph. 15
B. Decision 16
Thomas has failed to prove that Pippin claim 1 lacks a written 17
description support. 35 U.S.C. § 112, first paragraph. 18
Thomas also has failed to prove that Pippin claim 1 is indefinite. 19
35 U.S.C. § 112, second paragraph. 20
Therefore, Thomas Motion 1 is denied. 21
IV. Thomas Motions 5.1–5.4 22
A. Introduction 23
Thomas Motions 5.1–5.4 (Papers 193-196) seek entry of judgment for 24
no interference-in-fact between (1) the subject matter of the claims of the 25
Interferences 105,956 through 105,959
Decision on Motions

23

Thomas involved patents and applications and (2) the subject matter of 1
Pippin ʼ274 claim 1. 2
B. Thomas Motion 5.1 3
Thomas Motion 5.1 (Paper 193) moves for judgment that there is 4
no interference-in-fact between the subject matter of claims 1-17, 20, and 5
22-26 of Thomas ’190 12 and the subject matter of claim 1 of Pippin ’274. 6
Paper 193, pp. 1-19. 7
Thomas contends that (1) the subject matter of its claims (i.e., 8
independent claims 1 and 11) differ in scope from Pippin claim 1, and 9
(2) the subject matter of the Thomas claims does not anticipate or render 10
obvious the subject matter of Pippin claim 1. Id. 11
1. 12
An interference exists if the subject matter of a claim of 13
one party would, if prior art, have anticipated or rendered 14
obvious the subject matter of a claim of the opposing 15
party and vice versa. 16
17
37 C.F.R. § 41.203(a). 18
When an interference is declared, an interference-in-fact is presumed 19
to exist. 20
The “test” for determining whether there exists an interference-in-fact 21
is a “two-way” test. Id. 22
Thomas must show that the “two-way” test is not satisfied in order to 23
establish that there is no interference-in-fact. 24

12 As noted earlier, claims 18, 19, and 21 of Thomas ʼ190 were cancelled in
Reexamination No. 90/012,909. Ex. 2077.
Interferences 105,956 through 105,959
Decision on Motions

24

Thomas has elected to base its no interference-in-fact case 1
maintaining only that the subject matter of the subject matter of Thomas 2
ʼ190 claims 1 and 11 would not have rendered obvious the subject matter of 3
Pippin claim 1. Accordingly, Thomas has waived any argument based on 4
the subject matter of Thomas claim 1 would not have anticipated or rendered 5
obvious the subject matter of the Thomas ʼ190 claims. 6
2. 7
Relying on Dr. Renau’s testimony (Ex. 2019), Thomas acknowledges 8
Pippin’s claim 1 recites a computer system comprising a microprocessor and 9
that microprocessor includes: (1) “a register storing a register value 10
corresponding to a threshold temperature,” (2) “a programmable thermal 11
sensor receiving the register value,” and (3) “wherein the programmable 12
thermal sensor generates a first interrupt signal if a microprocessor 13
temperatures exceeds the threshold temperature.” Paper 193, p. 4 (citing 14
Ex. 2019 ¶ 11). 15
The first interrupt signal is then used to activate an active cooling 16
device (e.g., a fan), as well as to reduce the frequency of a clock signal for 17
the microprocessor. Id. (citing Ex. 2019 ¶ 11). 18
Thomas then argues its independent claims 1 and 11 do not claim the 19
computer system of Pippin claim 1, a system which is said to include 20
Pippin’s microprocessor containing: (1) “a register storing a register value 21
corresponding to a threshold temperature, (2) “a programmable thermal 22
sensor receiving the register value” and (3) “wherein the programmable 23
thermal sensor generates a first interrupt signal if a microprocessor 24
temperature exceeds the threshold temperature.” Id. at 5 (citing Ex. 2019 25
¶¶ 12-15). Thomas further contends that the subject matter of Thomas 26
Interferences 105,956 through 105,959
Decision on Motions

25

independent claims 1 and 11 do not describe, suggest, or claim Pippin’s 1
claimed “interrupt … to activate an active cooling device (fan) and reduce 2
the frequency of a clock signal for the microprocessor. Id. at 6. 3
According to Thomas, these Pippin features are the differences 4
between the subject matter of the claims of Thomas ’190 and the subject 5
matter of Pippin ʼ274 claim 1. Id. Further according to Thomas nothing in 6
the prior art13 suggests modifying the subject matter of any of the Thomas 7
claims to define Pippin missing features. Id. at 7. Still further according to 8
Thomas, none of the art teaches or suggests any of Pippin missing features, 9
including: 10
(1) Morikawa, U.S. Patent 5,379,230 (Ex. 2033); 11
(2) Kenny, U.S. Patent 5,287,292 (Ex. 2035); 12
(3) Swamy, U.S. Patent 5,623,594 (Ex. 1029); 13
(4) Dinh, U.S. Patent 5,526,298 (Ex. 1027); and 14
(5) Pippin’s prosecution history (Ex. 2064-2068). 15
Id. at 8–17 (citing Ex. 2019 ¶¶ 20-40). 16
Thomas acknowledges that Morikawa (Ex. 2033) and Kenny 17
(Ex. 2035) describe a temperature sensor provided internal to an integrated 18
circuit (IC) to monitor a temperature of the integrated circuit. Id. at 8-10 19
(citing Ex. 2033, col. 2:19-31, col. 3:11-35, Figs. 1-3; and Ex. 2035, 20
col. 1:51-56, col. 2:5-7, col. 9:38-45). 21
However, Thomas argues that Morikawa (Ex. 2033) and Kenny 22
(Ex. 2035) do not teach or suggest a programmable thermal sensor that 23
(1) receives a threshold temperature from a register as a register value, 24

13 Prior art cited by Pippin in support of the Request for an Interference.
Ex. 1003.
Interferences 105,956 through 105,959
Decision on Motions

26

(2) generates an interrupt signal (all internal to a microprocessor), and 1
(3) uses the generated interrupt signal to not only activate an active cooling 2
device (fan) but also reduce clock frequency for the microprocessor. 3
Id. at 11 (citing Ex. 2019 ¶ 29). 4
Thomas also acknowledges that (1) Swamy (Ex. 1029) describes a 5
computing a temperature and then controlling a fan to provide cooling as 6
well as CPU clock, and (2) Dinh (Ex. 1027) describes a fan cooling 7
subsystem for a personal computer (PC) to provide fan control based on the 8
computer housing temperature. Id. at 15-16 (citing Ex. 1029, col. 7:29-37, 9
Fig. 2; and Ex. 1027, col. 1:10-13, 29-35, 44-51). However, Thomas argues 10
none of these references teaches or suggests to person having ordinary skill 11
the use of a generated interrupt signal not only to activate an active cooling 12
device (fan) but also reduce clock frequency of a clock signal for the 13
microprocessor. Id. at 17 (citing Ex. 2019 ¶ 37). Based on these features, 14
Thomas argues there is no reason for one skilled in the art to combine 15
Thomas claims with the teachings of Morikawa (Ex. 2033), Kenny 16
(Ex. 2035), Swamy (Ex. 1029) or Dinh (Ex. 1027), let alone any other art, in 17
order to arrive at the subject matter of Pippin claim 1. Id. (citing Ex. 2019 18
¶¶ 38-40). 19
Based on the record before us, we are not persuaded that the subject 20
matter of Pippin claim 1, as a whole, would not have been obvious over the 21
subject matter of the Thomas ʼ190 claims (presumed to be prior art for the 22
purpose of an interference-in-fact analysis) and other prior art. 23
Thomas has identified the following differences: 24
(1) “a register storing a register value corresponding to a 25
threshold temperature, 26
Interferences 105,956 through 105,959
Decision on Motions

27

(2) “a programmable thermal sensor receiving the register 1
value” and 2
(3) “wherein the programmable thermal sensor generates a first 3
interrupt signal if a microprocessor temperature exceeds the threshold 4
temperature.” 5
(a) Feature 1 6
Pippin claim 1 recites a “programmable thermal sensor.” Ex. 1001. 7
None of the Thomas ’190 claims recite a “programmable thermal 8
sensor” as in Pippin’s claim 1. Ex. 1013. 9
Thomas concedes that (1) thermal sensors were known in the art, and 10
(2) are described by Morikawa (Ex. 2033) and Kenny (Ex. 2035), both of 11
describing a temperature sensor provided internal to an integrated circuit 12
(IC) to monitor a temperature of the integrated circuit. Paper 193, p. 8-10 13
(Ex. 2033, col. 2:19-31, col. 3:11-35, Figs. 1-3; and Ex. 2035, col. 1:51-56, 14
col. 2:5-7, col. 9:38-45). 15
Thomas argues that thermal sensors described by Morikawa 16
(Ex. 2033) and Kenny (Ex. 2035) are not a programmable thermal sensor 17
and, as such, would not have been obvious to those skilled in the art. Id. at 18
10–11 (citing Ex. 2019 ¶ 29). 19
However, the prior art cited by Pippin is more relevant to Pippin’s 20
claim 1, and better reflects the level of ordinary skill in the art at the time. 21
See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). 22
For example, Thomas ’190 claim 25 recites a method for controlling 23
an operational speed for a processor of a computing device [including a fan 24
for cooling at least the microprocessor] comprising “monitoring a 25
temperature of [a] processor” and “controlling an operational speed of the 26
Interferences 105,956 through 105,959
Decision on Motions

28

processor based on [an] appropriate one of [a] first power management 1
policy [including at least a first condition based on a temperature of the 2
processor], [and a] second power management policy [including at least a 3
second condition based on a temperature of the processor].” Ex. 2077. 4
According to the Thomas ʼ190 specification, the limitation 5
“monitoring a temperature of [a] processor” refers to “accurate temperature 6
monitoring of a microprocessor, via a temperature sensor that is integrated 7
with the microprocessor” and such “[t]emperature sensing circuitry is well 8
known and therefore not further described.” Paper 226, p. 4:12-16 (citing 9
Ex. 1013, col. 4:1-11; col. 8:11-13; and Ex. 1061, ¶ 52). 10
The limitation is further described in Fig. 9 of Thomas ’190, 11
reproduced below, as a temperature sensor integrated within a 12
microprocessor to sense a temperature of the microprocessor. 13
14
Thomas ʼ190 Fig. 9 15
16
Thomas ʼ190 Fig. 9 depicts a diagram describing the use 17
of a temperature sensor integrated in a microprocessor 18
for sensing processor temperature. 19
Interferences 105,956 through 105,959
Decision on Motions

29

1
As shown in Fig. 9 of Thomas ’190, temperature sensor 4 is integrated 2
within a microprocessor 2 and generates a digital output (i.e., “1” or “0”) in 3
response to temperature changes of the microprocessor 2. Ex. 1013, Fig. 14, 4
col. 5:47-50. 5
With respect to “monitoring a temperature of [a] processor,” 6
according to Dr. Renau one of ordinary skill in the art would have 7
understood that the processor temperature is monitored using threshold 8
temperatures to carry out certain “conditions:” Id. at 5 (citing Ex. 1061, 9
¶ 53): 10
the specification discloses to . . . [(a person having 11
ordinary skill in the art)] * * * different modes of 12
operation, whose conditions at a given temperature of the 13
microprocessor differ from one another. The example in 14
the * * * paragraph [at Ex 1013, page 16, col. 8, 15
lines 24-40] is, that at a given temperature: one mode 16
activates the fan (in the desk-top case), and another mode 17
reduces the fast clock (in the portable case). 18
19
Paper 178, p. 7:10-14 (emphasis added); also see (1) claim 21 of Thomas 20
’433 (Ex. 2004); (2) claims 1, 13, and 18 of Thomas ’599 (Ex. 2002); 21
(3) claims 26 and 32 of Thomas ’557 (Ex. 1019); (4) claims 7, 24, and 37 of 22
Thomas ’235 (Ex. 1020); (5) claim 49 of Thomas U.S. Patent No. 6,487,668 23
(Ex. 1021); and (6) claim 24 of Thomas ’611 (Ex. 1024). 24
Dr. Renau understood that power management policies are the same 25
as operational modes and agreed that programming thresholds for an 26
operational mode “would be a logical way to do it” and what he “would do 27
as an engineer, but there are other possible ways to it.” Ex. 2078, 28
p. 33:4-23; Ex. 1061 ¶ 55. 29
Interferences 105,956 through 105,959
Decision on Motions

30

Based on the relevant prior art teachings, we agree with Pippin that it 1
would have been obvious to use a programmable thermal sensor (instead of 2
a thermal sensor) to monitor a processor temperature in connection with the 3
subject matter of Thomas claim 25. Why? Because (1) Thomas’ 4
“temperature sensing circuitry is well-known and therefore [need] not 5
further described” and (2) Dr. Renau’s testimony shows that temperature 6
sensor at least suggests use of a programmable sensor that can be 7
programmed with thresholds. Id. at 7 (citing Ex. 1013, col. 4:10-11; and 8
Ex. 2078, p. 34:8- p. 35:12). We have not been given a convincing reason 9
why a thermal sensor would not have been recognized by one skilled in the 10
art to be programmed to respond to different temperature thresholds within a 11
microprocessor and why programming of such a thermal sensor based on 12
different temperatures would have been uniquely challenging or otherwise 13
beyond the level of skill of an ordinarily skilled artisan. See KSR, 550 U.S. 14
at 421 (a product would have been obvious if that “product [is] not [one] of 15
innovation but of ordinary skill and common sense”); Leapfrog Enters., Inc. 16
v. Fisher-Price, Inc., 485 F.3d 1157, 1161-62 (Fed. Cir. 2007). 17
(b) Feature 2 18
Pippin’s claim 1 recites a “register storing a register value 19
corresponding to a threshold temperature” and recites the “programmable 20
thermal sensor” as “receiving the register value.” Ex. 1001; Ex 1061 at ¶ 63. 21
None of the claims of Thomas ’190 recites a “register storing a 22
register value corresponding to a threshold temperature” as in Pippin’s 23
claim 1. Ex. 1013. 24
Thomas argues such “a register storing a register value corresponding 25
to a threshold temperature” is not disclosed anywhere in Thomas ’190 patent 26
Interferences 105,956 through 105,959
Decision on Motions

31

and, as such, would not have been obvious to those skilled in the art. Id. at 1
5–6 (citing Ex. 2019 ¶ 12-15). 2
However, differences alone do not establish non-obviousness. Dann 3
v. Johnston, 425 U.S. 219, 230 (1976). The references cited by Pippin – 4
Dictionary definition of “register” and Dr. Renau’s testimony are more 5
relevant to Pippin’s claim 1. For example, “registers” were well-known as 6
defined by Microsoft Dictionary (Ex. 1050) as: 7
A small, named region of high-speed memory 8
located within a microprocessor * * * capable of storing 9
binary data. A register is usually large enough to hold 10
only a few bytes of information * * *. It is used as a 11
holding area for specific, sometimes critical, pieces of 12
data or information related to activities going on within 13
the system. 14
15
Paper 226, pp. 7-9 (citing Ex. 1050, p. 3; Ex 1061 at ¶ 66). 16
“The use of registers has been [known] since the ‘50s” and that it was 17
known at the time of Pippin’s application to use thresholds with registers for 18
controlling the output of the temperature sensor, as acknowledged by 19
Dr. Renau. Id. at 8 (citing Ex. 2078, p. 34:6–17; p. 37:10–20; p. 52:20- 20
p. 53:14; Ex. 1061 at ¶ 67). 21
Because these registers are located within a microprocessor, we agree 22
with Pippin that it would have been obvious to an artisan of ordinary skill at 23
the time to use a register to store a threshold temperature for monitoring 24
processor temperature in Thomas claim 25. Id. at 8 (citing Ex. 1013, 25
col. 4:10-11; and Ex. 2078, p. 34:18-p. 35:12). 26
Interferences 105,956 through 105,959
Decision on Motions

32

(c) Feature 3 1
2
Pippin’s claim 1 further recites that “the programmable thermal sensor 3
generates a first interrupt signal if a microprocessor temperature exceeds the 4
threshold temperature.” Ex. 1001. In response to the interrupt signal, an 5
active cooling device (fan) is activated and a frequency of a clock signal for 6
the microprocessor is reduced. Ex. 1001; Ex. 1061 at ¶ 70. 7
None of the claims of Thomas ’190 mention the use of an interrupt 8
signal generated by the programmable thermal sensor to both activate an 9
active cooling device (fan) and reduce clock frequency of a clock signal for 10
the microprocessor as in Pippin’s claim 1. Ex. 1013. 11
Thomas identifies Swamy (Ex. 1029) and Dinh (Ex. 1027) as the 12
closest art teaching or suggesting use of an interrupt signal to provide fan 13
control and CPU clock control. Paper 193, pp. 15–17. Thomas then argues 14
that Swamy is not prior art to Pippin, and acknowledges Dinh teaches a fan 15
cooling subsystem for a computer system wherein the speed of the fan is 16
adjusted based on the temperature within the housing. Id. at 16 (citing 17
Ex. 1027, col. 1:10-13, 29-35, and 44-51). Thomas further argues that Dinh 18
(Ex. 2027) provides no teaching or suggestion for controlling a computer 19
system’s fan and a clock frequency of a microprocessor, let alone controlling 20
clock frequency via an interrupt signal and, as such, would not have been 21
obvious to those skilled in the art. Id. at 16-17 (citing Ex. 2019 ¶¶ 36–37). 22
However, the references cited by Pippin — Dao, U.S. Patent 23
5,115,225 (Ex. 1051), Hwang, U.S. Patent 5,319,772 (Ex. 1052), Canova, 24
U.S. Patent 5,230,074 (Ex. 1026), and Kannan, U.S. Patent 5,423,045 25
Interferences 105,956 through 105,959
Decision on Motions

33

(Ex. 1053) —reflect the level of ordinary skill in the art. See In re GPAC 1
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). 2
For example, Dao describes generation of an interrupt signal to a 3
microprocessor when the temperature of disk drives for a computer system 4
exceeds a threshold. Ex. 1051, col. 1:49-65. 5
Hwang describes a CPU that executes instructions to lower its clock 6
frequency in response to an interrupt signal. Ex. 1052, col. 2:55-col. 3:40. 7
Likewise, Canova and Kannan also teach that it was known to 8
generate an interrupt signal when a computer’s temperature exceeds a 9
threshold in order to invoke a power management routine. Ex. 1070, pp. 10
2-3. 11
Canova describes generation of an interrupt to control power 12
consumption when a computer’s ambient temperature goes beyond or out of 13
range. Ex. 1026, Abstract; Fig. 4, elements 170, 174; col. 3:38-47; 14
col. 5:6-11; and col. 7:16-21. 15
Kannan describes generation of a power control unit interrupt power 16
management event when a computer’s ambient temperature is excessive. 17
Ex. 1053, col. 11: 62-67. 18
A person having ordinary skill in the art is presumed to know all the 19
relevant art, including, for example: (1) the generation of an interrupt signal 20
when a microprocessor/computer’s temperature exceeds a certain threshold, 21
as described by Dao (Ex. 1051), Canova (Ex. 1026), and Kannan (Ex. 1053), 22
and (2) the use of such an interrupt signal to control the operational speed 23
(clock frequency) of a processor as described by Hwang (Ex. 1052) and/or to 24
control the speed of a fan as disclosed by Dinh (Ex. 1027). In re GPAC, 57 25
F.3d at 1579. If these techniques have been used to improve a processor, 26
Interferences 105,956 through 105,959
Decision on Motions

34

using these techniques to improve a similar process in the same way would 1
have been obvious unless its actual application is beyond the skill of an 2
artisan. See KSR, 550 U.S. at 417. 3
Based on these teachings and the knowledge of those skilled in the art, 4
we agree with Pippin that it would have been obvious to an artisan of 5
ordinary skill to generate an interrupt signal if a processor temperature 6
exceeds a threshold in order to control the fan speed and/or the operational 7
speed of the processor. Paper 226, pp. 10-11 (citing Ex. 1005, p. 20:7-11; 8
Ex. 1061 at ¶ 77) 9
For these reasons, we conclude that Thomas has failed to meet its 10
burden of proof and provide credible evidence to show that there is no 11
interference-in-fact between Thomas claims and Pippin’s claim 1. 12
Accordingly, Thomas Motion 5.1 is denied. 13
C. Thomas Motion 5.2 14
Thomas Motion 5.2 (Paper 194) moves for judgment that there is 15
no interference-in-fact between the subject matter of claims 1–28 of Thomas 16
’599 and the subject matter of claim 1 of Pippin ’274. Paper 194, pp. 1–20. 17
Thomas also contends its claims (i.e., independent claims 1, 13 and 18) are 18
of different scope than that of Pippin’s claim 1. Id. at 4–12. 19
1. 20
Thomas identifies the differences between the subject matter of all 21
claims 1–28 of Thomas ’190 patent (as prior art) and the subject matter of 22
claim 1 of Pippin ’274 application as including the same features discussed 23
in connection with Thomas Motion 5.1 (Paper 193). 24
The differences are: (1) “a register storing a register value 25
corresponding to a threshold temperature, (2) “a programmable thermal 26
Interferences 105,956 through 105,959
Decision on Motions

35

sensor receiving the register value” and (3) “wherein the programmable 1
thermal sensor generates a first interrupt signal if a microprocessor 2
temperature exceeds the threshold temperature.” Paper 194, pp. 2–5. 3
Thomas argues these differences would have rendered the subject 4
matter of Pippin claim 1 nonobvious to those skilled in the art for the same 5
reasons presented in Thomas Motion 5.1 (Paper 193). Id. at 6–12. For the 6
reasons discussed above with respect to that motion, we conclude that 7
Thomas has failed to meet its burden of proof and provide credible evidence 8
to show that there is no interference-in-fact between Thomas claims and 9
Pippin’s claim 1. 10
2. 11
Taking the subject matter of Pippin claim 1 as presumed prior art, 12
Thomas identifies the following differences: (1) a comparison circuit that 13
produces comparison data (by comparing a temperature indication of the 14
microprocessor with a temperature value) which is then provided via a 15
second electrical connection for managing the temperature of the 16
microprocessor; (2) the temperature value used “differs depending on an 17
operational mode”; (3) “wherein in one operational mode the fan is activated 18
when needed to maintain high processing power, and wherein in another 19
operational mode the fan is activated when necessary to maintain reasonable 20
processing power, which is lower than the high processing power”; and 21
(4) fan control circuitry configured to control the speed of the fan based at 22
least in part on a remote temperature indication pertaining to the temperature 23
of the processor integrated circuit. Paper 194, pp. 13-15. 24
Thomas argues that the claimed subject matter, as a whole, would 25
have been nonobvious notwithstanding those differences. Id. at 15–20. 26
Interferences 105,956 through 105,959
Decision on Motions

36

Thomas relies upon Dr. Renau to demonstrate that Thomas is not 1
aware of any other relevant art that would have suggested modifying the 2
subject matter of Pippin’s claim 1 to arrive at the subject matter of the 3
Thomas claims as per SO ¶ 208.1. In particular, Dr. Renau testifies: 4
(1) he has reviewed all of the references cited in the prosecution of 5
Pippin and Thomas file histories, and also conducted an 6
independent search for additional relevant prior art; and 7
8
(2) he knows of no prior art references or teachings that would 9
have suggested modifying the Pippin’s claim 1 to provide for 10
different operational modes to manage temperature of the 11
microprocessor/computer system at different temperature values, 12
wherein a fan can be controlled differently depending on 13
operational modes such that fan speed control used to manage 14
temperature of a microprocessor/computer system is dependent on 15
operational mode. 16
17
Paper 194, p. 20 (citing Ex. 2020 ¶ 66). 18
However, Thomas does not convincingly address how the subject 19
matter of claims 1-28 of Thomas ’599 would have been nonobvious over the 20
subject matter of Pippin claim 1, alone or in combination with other 21
applicable prior art14 including, for example: Morikawa (Ex. 2033); Kenny 22
(Ex. 2035); Swamy (Ex. 1029); Dinh (Ex. 1027); Pippin ’578 patent 23
(Ex. 1028); Canova (Ex. 1026); Dao (Ex. 1051); Hwang (Ex. 1052); 24
Kannan (Ex. 1053); Smith (Ex. 2039); Moyal, U.S. Patent 5,442,832 25
(Ex. 2069); Yamaki, EP 0474963 (Ex. 2025); Arai, U.S. Patent 6,014,611 26
(Ex. 1063); and Atkinson, U.S. Patent 6,029,119 (Ex. 1064). Id. at 7-19 27
(citing Ex. 2020 ¶¶ 18-62). 28

14 Prior art cited by Pippin in support of the Request for an Interference.
Paper 1003.
Interferences 105,956 through 105,959
Decision on Motions

37

Instead, Thomas lodges an attack of Pippin’s interference request 1
(Ex. 1003) for failing to make a prima facie showing that Thomas’ claims 2
1-28 would have been obvious in view of Pippin’s claim 1 and, as such, 3
Pippin should bear the burden of showing why there is an interference-in-4
fact. Id. at 3–4, 6, 15-17 (citing Ex. 1003 at 26-35). 5
3. 6
Thomas argues that the subject matter of claims 1–28 of Thomas ’599 7
would have been nonobvious over the subject matter of Pippin claim 1 8
solely in view of the Examiner’s reasons for allowance (Ex. 2072) of 9
Thomas’ involved application. 10
First, the Examiner’s reasons for allowance were based on 11
consideration of Pippin and other references of record. Id. at 17-18 (citing 12
Ex. 2072, pp. 6–7). 13
Second, the Examiner concluded that all claims of Thomas ’599 14
patent were patentable over Pippin’s parent patent (which is the same 15
disclosure as Pippin’s involved application) in Reexamination Proceeding 16
No. 90/012,911: 17
Pippin and Moyal prior art alone or in combination does 18
not discloses “… at least one of the plurality of 19
temperature values to be utilized by the comparison 20
circuit differs depending on an operational mode, 21
wherein in one operational mode the fan is activated 22
when needed to maintain high processing power, and 23
wherein in another operational mode the fan is activated 24
when necessary to maintain reasonable processing power, 25
which is lower than the high processing power” as in 26
claim independent claim 1…. 27
28
Id. at 18-19 (citing Ex. 2070, pp. 9-11; Ex. 2071). 29
Interferences 105,956 through 105,959
Decision on Motions

38

Thomas has not met its burden of showing that the subject matter of 1
all claims of Thomas ’599 would not have been obvious in view of the 2
subject matter of Pippin claim 1. The Examiner’s reasons for allowance are 3
not dispositive of there being no interference-in-fact. 4
Third, the Examiner did not have the benefit of Pippin’s additional 5
evidence and explanations of obviousness as presented in this interference. 6
Fourth, the Examiner was later convinced that an interference was 7
warranted, and the Board declared an interference based on the Examiner’s 8
recommendation for an interference. 9
For these reasons, the Examiner’s reasons for allowance do not satisfy 10
Thomas’ burden of showing all claims of Thomas ’599 patent would have 11
been nonobvious in view of Pippin’s claim 1. 12
Likewise, we find Thomas’ attacks on the deficiencies of Pippin’s 13
interference request misplaced. An interference is declared when the 14
Director, through an APJ on recommendation of a Primary Examiner, is of 15
the opinion that a pending application “would interfere” with another 16
pending application or an unexpired patent. 35 U.S.C. § 135(a); 37 C.F.R. 17
§ 41.203(b). When an interference is declared, an interference-in-fact is 18
presumed to exist—otherwise the interference would not have been 19
declared. 37 C.F.R. § 41.203(a) & (b)(1). 20
A party alleging that there is no interference-in-fact has the burden of 21
proof. 37 C.F.R. § 41.121(b); see also Case v. CPC International, Inc., 730 22
F.2d 745, 750 (Fed. Cir. 1984); Bilstad v. Wakalopulos, 386 F.3d 1116, 23
1120-21 (Fed. Cir. 2004); Kubota v. Shibuya, 999 F.2d 517, 522 (Fed. Cir. 24
1993) (“[O]nce an interference has been declared and a party seeks to 25
Interferences 105,956 through 105,959
Decision on Motions

39

change the status of the parties by motion, the burden is then on the 1
movant”). 2
Thomas—not Pippin—has the burden of showing that there is no 3
interference-in-fact. 4
For these reasons, we conclude that Thomas has failed to meet its 5
burden of proof to establish that there is no interference-in-fact between 6
the subject matter of the Thomas claims and the subject matter of Pippin 7
claim 1. Moreover, while it was not Pippin’s burden to prove obviousness, 8
we agree with Pippin that the art cited by Pippin supports a holding of 9
obviousness. 10
Accordingly, Thomas Motion 5.2 (Paper 194) is denied. 11
D. Thomas Motions 5.3 and 5.4 12
Thomas Motions 5.3–5.4 (Papers 195–196) move for judgment that 13
there is no interference-in-fact between: 14
(1) the subject matter of all of Thomas claims 1-27 and the 15
subject matter of Pippin claim 1, and 16
(2) the subject matter of all of Thomas claims 1-24 of and the 17
subject matter of Pippin claim 1. 18
Thomas contends its claims (i.e., independent claims 1, 13 and 18 of 19
Thomas ’798 and independent claims 1, 6, 10, and 21 of Thomas ’433) 20
differ in scope from Pippin claim 1, and addresses only one of the two 21
prongs of the two-way test, i.e., Thomas’ claimed subject matter, treated as 22
prior art, does not anticipate or render obvious the subject matter of Pippin 23
claim 1—essentially for the same reasons presented in connection with 24
Thomas Motion 5.1 (Paper 193). Paper 195, pp. 1-19; Paper 196, pp. 1-19. 25
Interferences 105,956 through 105,959
Decision on Motions

40

Thomas identifies the differences between the subject matter of the 1
claims of Thomas ’798 and Thomas ’433 (as prior art) relative to the subject 2
matter of Pippin ʼ274 claim 1 as including the same features discussed in 3
connection with Thomas Motion 5.1 (Paper 193). 4
Thomas argues that because of these differences the claimed subject 5
matter of Thomas would not have rendered obvious the subject matter of 6
Pippin claim 1. Paper 193, at 7-19. 7
Thomas has failed to meet its burden of proof with convincing 8
evidence to show that there is no interference-in-fact between Thomas 9
claims and Pippin’s claim 1 for the reasons stated in connection with 10
Thomas Motion 5.1. 11
V. Thomas Motion 6 12
Thomas Motion 6 (Paper 178) seeks to designate claims 10 and 20, 13
and 22-26 (claims 18, 19, and 21 having been cancelled) of Thomas ‘190 as 14
not corresponding to the Count. Paper 178, p. 2. 15
A claim corresponds to a count if the subject 16
matter of the count, treated as prior art to the claim, 17
would have anticipated or rendered obvious the subject 18
matter of the claim. 19
20
37 C.F.R. § 41.207(b)(2). 21
Thomas as the moving party bears the burden of proof to establish 22
entitlement to the relief requested. 37 C.F.R. § 41.121(b). 23
To prevail in its motion, Thomas must demonstrate by a 24
preponderance of the evidence that each of the subject matter of the claims it 25
seeks to designate as not corresponding to the Count would not have been 26
Interferences 105,956 through 105,959
Decision on Motions

41

obvious when considered in view of the subject matter of the Count 1
(Pippin’s claim 1) and any other applicable art. 2
Thomas argues that Pippin, as opposed to Thomas, should bear the 3
burden of proof, relying Kubota v. Shibuya. Paper 178, p. 2. However, as 4
correctly recognized by Pippin, Thomas’ reliance on Kubota is misplaced. 5
Paper 230, pp. 19-20. Thomas’ argument is directly at odds with the 6
applicable rule. 37 C.F.R. § 41.121(b). 7
In addition according to Thomas, placing the burden of proof on 8
Pippin is said to be “consistent with . . . [35 U.S.C. § 282], as discussed in 9
Microsoft v. i4iLtd. P’ship, 131 S.Ct. 2238 (2011).” Paper 178, p. 2:20. 10
The § 282 presumption of validity does not apply to patents involved 11
interference proceedings. Bruning v. Hirose, 161 F.3d 681, 685-686 (Fed. 12
Cir. 1998) (presumption of validity is inapplicable in an interference 13
involving a patent issued from an application that was co-pending with the 14
interfering application). See also Apotex USA, Inc. v. Merck & Co., 254 15
F.3d 1031, 1037 n.1 (Fed. Cir. 2001); Stamps.com, Inc. v. Endicia, Inc., 16
437 Fed. Appx. 897, 907 n.2 (Fed. Cir. 2011). 17
With respect to the merits, Thomas identifies several features in its 18
claims15 that are said to distinguish the subject matter of those claims from 19
the subject matter of the Count in combination with other applicable prior 20
art. 21

15 In Thomas Motion 6 (Paper 178), Thomas did not separately argue claims
19-26 apart from claim 10. Claims 19-26 stand or fall with Thomas claim
10. Cf. In re Van Geuns, 988 F.2d 1181, 1186 (Fed. Cir. 1993) (if a party
chooses not to argue the claims separately, the claims stand or fall together).

Interferences 105,956 through 105,959
Decision on Motions

42

For example, Thomas claim 10 recites a method for managing 1
operation of a computer including at least a processor and a fan for cooling 2
at least the processor, comprising: 3
configuring the computer to utilize a first power 4
management policy [including at least a first condition 5
based on a temperature of the processor] when the 6
computer is powered by a battery; 7
8
configuring the computer to utilize a second power 9
management policy [including at least a second condition 10
based on a temperature of the processor] when the 11
computer is not powered by a battery; 12
13
setting an operational speed of the fan based on 14
the appropriate one of the first and second power 15
management policies; 16
17
monitoring a temperature of the processor; and 18
19
setting an operational speed of the processor based 20
on the appropriate one of the first and second power 21
management policies and based on the temperature of the 22
processor. 23
24
Ex 2001, pp. 1, 3-4 (italics and matter in brackets added). 25
Thomas claim 10 covers configuring a computer to use one (first or 26
second) power management policy based on a temperature of a processor 27
depending on whether the computer is powered by a battery (i.e., when the 28
computer operates in a portable mode as “a portable computer”) or not 29
powered by a battery (i.e., when the computer operates in a desktop mode as 30
“a desktop computer”). Ex. 1001, pp. 11-13, 17-20, 23; Ex. 1013, col. 31
8:24-40; Ex. 1061 ¶¶ 94-96. 32
Interferences 105,956 through 105,959
Decision on Motions

43

In contrast, the Count defines a computer system in which a 1
microprocessor includes a register that (1) stores a threshold temperature, 2
(2) a programmable sensor that receives the stored threshold value and 3
generates an interrupt signal if a microprocessor temperature exceeds the 4
threshold temperature, and (3) clock circuitry that provides the 5
microprocessor’s clock signal, wherein an active cooling device (fan) is 6
activated and a frequency of the clock signal is reduced in response to the 7
interrupt signal. 8
According to Thomas, the features in claim 10 that distinguish over 9
the Count include operating a computer system having two power 10
management policies16 and configuring the computer system to utilize one or 11
the other policy, depending upon both: (1) temperature of a microprocessor, 12
and (2) whether or not the computer system is configured to run on battery 13
power (i.e., when the computer system operates in either a portable mode 14

16 Pippin Opposition 6 (Paper 230) argues that Thomas claim 10 defines a
single computer but, when read in light of Thomas’ own Specification, that
single computer is configured to use only a first power management policy
when that computer is a portable computer (“is powered by a battery”) and is
configured to use only a second power management policy when that
computer is a desktop computer (“is not powered by a battery” and not both.
As such, Pippin contends: (1) Thomas claim 10 should be interpreted to
cover a computer configured with only one power management policy, and
(2) there is no written description support in Thomas’ Specification for a
single computer having two power management policies, as advanced by
Thomas. Paper 230, pp. 5-11, 14-18. For purposes of this decision, we need
not address Pippin’s contentions and will consider the plain reading of
Thomas claim 10 as reciting a single computer as having two power
management policies, including: “a first power management policy when the
computer is powered by a battery” and “a second power management policy
when the computer is not powered by a battery.”
Interferences 105,956 through 105,959
Decision on Motions

44

as “a portable computer” or a desktop mode as “a desktop computer”). 1
Paper 178, p. 5:6-21; p. 9:3-5. 2
Thomas, however, does not substantively address how these features 3
render the subject matter of Thomas claim 10 nonobvious over the subject 4
matter of the Count, alone or in combination of any other applicable prior 5
art. 6
Instead, Thomas relies primarily on (1) the Examiner’s reasons for 7
allowance of Thomas ‘190 and (2) alleged deficiencies of Pippin’s request 8
for interference. Id. at 8-17. 9
Thomas’ arguments are not convincing. 10
As previously discussed, the Examiner’s reasons for allowance are not 11
controlling because: (1) the Examiner did not have the benefit of Pippin’s 12
additional evidence and explanations of obviousness, and (2) the Examiner 13
was later convinced that an interference was warranted, and an interference 14
was declared based on the Examiner’s recommendation. 15
The Examiner’s reasons for allowance do not satisfy Thomas’ burden 16
of showing that the subject matter of Thomas claim 10 would not have been 17
obvious in view of the subject matter of the Count. 18
Likewise, we find Thomas’ alleged deficiencies of Pippin’s 19
interference request misplaced. Once an interference is declared, the party 20
can seek relief through a motion to have a claim designated as not 21
corresponding to the Count. 22
We are also not persuaded that features recited in claim 10 of Thomas 23
‘190 would have been nonobvious over the subject matter of the Count. 24
Rather, we find Thomas’s alleged distinguishing features do not serve to 25
establish non-obviousness in view of the Count and applicable art. 26
Interferences 105,956 through 105,959
Decision on Motions

45

For example, Thomas admits in its Background Section of the 1
Invention (“Thomas’s Admitted Prior Art”) that it was known to control 2
temperature of a microprocessor by using a fan or reducing or reducing the 3
clock frequency: 4
Another problem is that with portable computers, 5
manufacturers have to either use a lower clock frequency 6
(lower than would be used in a comparable desk top 7
computer) for processing or provide a fan for cooling. A 8
lower clock frequency is not satisfactory as users want 9
maximum processing power just as they get with a desk 10
top computer. Requiring a portable computer to use a fan 11
for cooling is also unsatisfactory because it consumes 12
battery energy. 13
14
Ex. 1013, col. 2:35-42. 15
Similarly, Yamaki, EP Publication 0474963 (Ex. 1025), describes a 16
computer having a sleep mode function that can be enabled when the 17
computer is powered by a battery and disabled when the computer is 18
powered by an external power supply such as an AC adapter (i.e., is not 19
powered by a battery). Ex 1025, col. 1:15-col. 2:24; col. 2:43-48; 20
col. 6:52-col. 7:6; Fig. 6A, steps S5, S9, and S17. When enabled, the sleep 21
mode function decreases a processing speed of a CPU to prolong battery life 22
by reducing power consumption. Ex 1025, col. 1:1-24; col. 1:57-col. 2:1. 23
When the sleep mode function is disabled, the high-speed operation of the 24
CPU can be maintained. Ex 1025, col. 2:19-24, 43-48; col. 7:55-col. 8:4. 25
Likewise, Canova (Ex. 1026) describes running a processor of a 26
computer at 20 MHz for high speed and at 5 MHz for low speed under a 27
“long battery life” option when the computer is powered by a battery. 28
Ex 1026, col. 5:52-60; col. 7:47-49. Canova also describes running the 29
Interferences 105,956 through 105,959
Decision on Motions

46

processor at 20 MHz rate when the computer is powered by an AC power 1
source. Ex 1026, col. 2:46-48; col. 5:50-52. 2
Arai U.S. Patent No. 6,014,611 (Ex. 1063) describes “a computer 3
wherein an optimal cooling function can be selected according to the 4
environment of use of a computer and overheat of a CPU is efficiently 5
prevented without degrading the environment of use of the computer.” 6
Ex. 1063, col. 1:36-40. According to Arai, the computer uses (1) a 7
performance mode when the main power supply is an external AC power 8
supply and (2) a quiet mode when the main power supply is a battery. 9
Ex. 1063, Fig. 12; col. 8:1-10; col. 12:31-56. A power supply (PS) 10
microcomputer 16 is used to monitor the temperature of CPU 11, via a 11
temperature sensor 21 on an LSI package of a CPU 11. Ex. 1063, Fig. 1; 12
col. 6:9-13, 48-50. In the performance mode, the fan is activated at first, 13
when the CPU temperature reaches a threshold temperature Ta2, and the 14
CPU performance is then reduced when the CPU temperature reaches a 15
higher threshold temperature Tb2. Ex. 1063, Fig. 12; col. 12:5-18. In the 16
quiet mode, the CPU performance is reduced at first, when the CPU 17
temperature reaches a threshold temperature Tb2, and the fan is activated 18
when the CPU temperature reaches a threshold temperature Ta2. Ex. 1063, 19
col. 12:19-23. The threshold temperature values Ta2 and Tb2 can be freely 20
set. Ex. 1063, col. 12:24-26; col. 13:16-22. 21
Similarly, Atkinson U.S. Patent No. 6,029,119 (Ex. 1064) teaches that 22
it is advantageous: 23
to use multiple cooling options and to adjust the order of 24
implementing the cooling options depending upon the 25
operating condition of the computer. For example, since 26
the fan itself requires a significant amount of power, it 27
Interferences 105,956 through 105,959
Decision on Motions

47

can be advantageous to slow down the CPU before 1
activating the fan while on battery power, but request full 2
CPU power with the fan activated while under AC 3
power. 4
5
Ex. 1064, col. 2:17-25. 6
According to Atkinson, indirect inputs 20 include whether the 7
computer is under AC power or battery power. Ex. 1064, col. 3:25-31. 8
Cooling options include activating a fan, setting the fan speed, and 9
setting the frequency of CPU 12. Ex. 1064, col. 4:14-18. Fan speed is 10
controlled using pulse width modulation. Ex. 1064, col. 2:64-col. 3:1; 11
col. 3:22-24. CPU frequency is set using a variable speed input clock 14. 12
Ex. 1064, col. 2:50-54. It can be advantageous to slow down the CPU 13
before activating the fan while on battery power, but request full CPU power 14
with the fan activated while under AC power. Ex. 1064, col. 2:21-25. 15
Based on these teachings, we conclude that it would have been 16
obvious to a person having ordinary skill to configure a computer system to 17
utilize: (1) a first power management policy including at least a first 18
condition based on processor temperature, when the computer system is 19
powered by a battery, i.e., when in a portable computer as disclosed by 20
Thomas’ admitted prior art (Ex. 1013, col. 1:25-col. 2:23), Yamaki at 21
col. 1:57-col. 2:1; col. 6:52-col. 7:6 (Ex. 1025), Canova at col. 5:52-60; 22
col. 7:47-49 (Ex. 1026), Arai at col. 12:31-56 (Ex. 1063), and Atkinson 23
at col. 2:21-25 (Ex. 1064), and (2) a second power management policy 24
including at least a second condition based on processor temperature, when 25
the computer system is not powered by a battery, i.e., when in a desktop 26
computer as disclosed by Thomas’ admitted prior art (Ex. 1013), Yamaki 27
Interferences 105,956 through 105,959
Decision on Motions

48

at col. 2:19-24, 43-48 (Ex. 1025), Canova at col. 5:50-52 (Ex. 1026), Arai 1
at col. 12:31-56 (Ex. 1063), and Atkinson at col. 2:21-25 (Ex. 1064). 2
We find that the subject matter of Thomas claim 10, when considered 3
in light of the subject matter of the Count and the other cited art, is nothing 4
more than “[t]he combination of familiar elements according to known 5
methods” that do “no more than yield predictable results.” KSR, 550 U.S. at 6
415–16. In particular: 7
When a work is available in one field of endeavor, 8
design incentives and other market forces can prompt 9
variations of it, either in the same field or a different one. 10
If a person of ordinary skill can implement a predictable 11
variation, § 103 likely bars its patentability. For the same 12
reason, if a technique has been used to improve one 13
device, and a person of ordinary skill in the art would 14
recognize that it would improve similar devices in the 15
same way, using the technique is obvious unless its 16
actual application is beyond his or her skill. 17
Id. at 417. 18
Thomas has not presented convincing evidence that an artisan would 19
not have found these features obvious, in light of the Count, and other 20
applicable art discussed supra, to manage operation of a computer system 21
to utilize a first or second management policy depending upon both: 22
(1) temperature of a microprocessor, and (2) whether or not the computer 23
system is configured to run on battery power (i.e., when the computer 24
system operates in either a portable mode as “a portable computer” or a 25
desktop mode as “a desktop computer”). A person of ordinary skill in the art 26
would have appreciated that these features would conserve battery life, 27
reduce heat generation, and maximize performance speed of a computer 28
Interferences 105,956 through 105,959
Decision on Motions

49

system, as taught, for example, by Morikawa (Ex. 2033); Kenny (Ex. 2035); 1
Swamy (Ex. 1029); Dinh (Ex. 1027); Pippin ’578 patent (Ex. 1028); Canova 2
(Ex. 1026); Dao (Ex. 1051); Hwang (Ex. 1052); Kannan (Ex. 1053); 3
Yamaki (Ex. 1025), Arai (Ex. 1063) or Atkinson (Ex. 1064). 4
Likewise, Thomas has not presented convincing evidence or argument 5
that the alleged distinguishing features of Thomas claim 10 would have been 6
“uniquely challenging or difficult for one of ordinary skill in the art” or 7
otherwise beyond the level of an ordinarily skilled artisan and “represented 8
an unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-9
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 10
418-19). 11
For these reasons, we conclude that Thomas has failed to meet its 12
burden of proof. Accordingly, Thomas Motion 6 (Paper 178) is denied. 13
VI. Thomas Motion 7 14
Thomas Motion 7 (Paper 179) seeks to designate claims 26-27 of 15
Thomas ‘798 application as not corresponding to the Count. Paper 179, p. 2. 16
Thomas as the moving party bears the burden to prove that the subject 17
matter of the Count, treated as prior art, would not have anticipated or 18
rendered obvious the subject matter of Thomas claims 26-27. 19
To support this motion, Thomas relies on Kubota and argues Pippin 20
should bear the burden of proof. Paper 178, p. 2. However, as previously 21
discussed, Thomas’s reliance on Kubota is misplaced. Paper 230, pp. 19-20. 22
Likewise, Thomas’s argument is contrary to the rules. 23
The burden of proof is always on Thomas, as the movant. 37 C.F.R. 24
§ 41.121(b). 25
Interferences 105,956 through 105,959
Decision on Motions

50

Thomas’ motion identifies features in claims 26–2717 of Thomas ‘798 1
that allegedly distinguish the claims from the Count and other applicable art. 2
For example, Thomas claim 26, as incorporated into independent 3
claim 25, recites a computing apparatus comprising: 4
a processing unit configured to operate at an 5
operational speed; 6
7
a temperature sensor configured to monitor a 8
temperature of said processing unit; 9
10
a fan for cooling at least said processing unit; and 11
12
a power management apparatus operatively 13
connected to said processing unit, said temperature 14
sensor and said fan, said power management apparatus 15
being configured to operate in accordance with at least 16
one of a first power management configuration or a 17
second power management configuration, and said power 18
management apparatus being operable to 19
(i) receive the temperature of the processing unit using 20
said temperature sensor, 21
22
(ii) control a speed of the fan based on the configured 23
one of the first and second power management 24
configurations and based on the temperature of the 25
processing unit, and 26
27
(iii) control a speed of the processing unit based on the 28
configured one of the first and second power 29
management configurations and based on the temperature 30
of the processing unit, 31
32

17 In Motion 7 (Paper 179), Thomas did not separately argue claim 27 apart
from claim 26. Claim 27 stands or falls with claim 26. In re van Geuns,
supra.
Interferences 105,956 through 105,959
Decision on Motions

51

wherein each of the first and second power 1
management configurations is associated with at least 2
one condition concerning a speed of the processing unit 3
and at least one condition concerning a speed of the fan, 4
5
wherein the at least one condition concerning the 6
speed of the processing unit is dependent on a 7
temperature of the processing unit, and 8
9
wherein the at least one condition concerning the 10
speed of the fan is dependent on a temperature of the 11
processing unit. 12
13
Ex 2003, pp. 7-8 (some indentation and italics added). 14
According to Thomas, the features of Thomas claim 26 that 15
distinguish over the Count include a power management apparatus 16
configured to have two power management configurations18 and to operate 17
in accordance with at least one of the first and second power management 18
configurations, as well as to control: (1) a speed of a fan, and (2) a speed of 19
a processing unit based on the configured power management configuration 20
and a temperature of the processing unit. Paper 179, p. 3. 21

18 In Pippin Opposition 7 (Paper 231) Pippin argues that Thomas claim 26
defines a single computer but, when read in light of Thomas’s own
Specification, that single computer is configured to use only one power
management configuration because the term “at least one” refers to either a
first or a second power management configuration. As such, Pippin
contends: (1) Thomas claim 26 should be interpreted to cover a computer
configured with only one power management policy, and (2) there is no
written description support from Thomas’s own Specification for a single
computer having two power management policies, as advanced by Thomas.
Paper 231, pp. 2-4, 8-11. For purposes of this decision, we need not address
Pippin’s contentions and will consider the plain reading of Thomas claim 26
as reciting a single computer as having two power management
configurations.
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Decision on Motions

52

Thomas, however, does not convincingly address how these features 1
of Thomas claim 26 render nonobvious the subject matter of the Count, 2
alone or in combination of any other applicable prior art. Instead, Thomas 3
relies primarily on the Examiner’s reasons for allowance of Thomas ‘190 4
patent and attacks on alleged deficiencies of Pippin’s request for 5
interference. Id. at 8-17. 6
As previously discussed, the Examiner’s reasons for allowance are not 7
controlling. 8
Likewise, for reasons already given in connection with Thomas 9
Motion 6, we find Thomas’ attacks on the deficiencies of Pippin’s 10
interference request misplaced. 11
We are not persuaded that distinguishing features recited in claim 26 12
of Thomas ‘798 render the subject matter of that claim nonobvious over the 13
subject matter of the Count. Rather, we find the subject matter of Thomas 14
claim 26 would have been obvious notwithstanding the distinguishing 15
features. 16
For example, based on all the teachings discussed, we conclude that it 17
would have been obvious to an artisan of ordinary skill at the time to 18
configure a computer system to operate in accordance with: (1) a first power 19
management configuration [associated with at least one condition 20
concerning a speed of the processing unit and a speed of the fan and 21
dependent on processing unit temperature] when the computer system is 22
powered by a battery in order to prolong battery life, i.e., when in a portable 23
computer as disclosed by Thomas’s admitted prior art (Ex. 1013), Yamaki at 24
col. 1:57-col. 2:1; col. 6:52-col. 7:6 (Ex. 1025), Canova at col. 5:52-60; 25
col. 7:47-49 (Ex. 1026), Arai at col. 12:31-56 (Ex. 1063), and Atkinson at 26
Interferences 105,956 through 105,959
Decision on Motions

53

col. 2:1–25 (Ex. 1064), and (2) a second power management configuration 1
[associated with at least one condition concerning a speed of the processing 2
unit and a speed of the fan and dependent on processing unit temperature] 3
when the computer system is not powered by a battery in order to reduce 4
temperature while maintaining high speed operation, i.e., when in a desktop 5
computer as disclosed by Thomas’s admitted prior art (Ex. 1013), Yamaki 6
at col. 2:19-24, 43-48 (Ex. 1025), Canova at col. 5:50-52 (Ex. 1026), Arai 7
at col. 12:31-56 (Ex. 1063), and Atkinson at col. 2:21-25 (Ex. 1064). 8
Moreover, Thomas has not presented convincing evidence that an 9
artisan would not have found these features obvious, in light of the Count, 10
and other applicable art to manage operation of a computer system to 11
operate in accordance with either a first or second management 12
configuration and to control: (1) a speed of a fan, and (2) a speed of a 13
processing unit based on the configured power management configuration 14
and a temperature of the processing unit. A person of ordinary skill in the 15
art would have appreciated that these features would conserve battery life, 16
reduce heat generation, and improve performance speed of a computer 17
system, as disclosed, for example, by Morikawa (Ex. 2033); Kenny 18
(Ex. 2035); Swamy (Ex. 1029); Dinh (Ex. 1027); Pippin ’578 patent 19
(Ex. 1028); Canova (Ex. 1026); Dao (Ex. 1051); Hwang (Ex. 1052); 20
Kannan (Ex. 1053); Yamaki (Ex. 1025), Arai (Ex. 1063) or Atkinson 21
(Ex. 1064). 22
Likewise, Thomas has not presented a convincing case that the 23
alleged distinguishing features of Thomas claims 26-27 would have been 24
“uniquely challenging or difficult for one of ordinary skill in the art” or 25
otherwise beyond the level of an ordinarily skilled artisan and “represented 26
Interferences 105,956 through 105,959
Decision on Motions

54

an unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-1
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 2
418-19). 3
For these reasons, we conclude that Thomas has failed to meet its 4
burden of proof. 5
Accordingly, Thomas Motion 7 (Paper 179) is denied. 6
VI. ORDER 7
For the reasons discussed above, it is: 8
ORDERED that Thomas Motion 1 (Paper 177); Thomas Motion 5.1 9
(Paper 193); Thomas Motion 5.2 (Paper 194); Thomas Motion 5.3 10
(Paper 195); Thomas Motion 5.4 (Paper 196); Thomas Motion 6 11
(Paper 178); Thomas Motion 7 are denied. 12
FURTHER ORDERED that since Thomas does not allege a date of 13
invention prior to Pippin, that judgment on the issue of priority will be 14
awarded against Thomas. 15
FURTHER ORDERED that Judgment is entered as a separate paper 16
(Paper 297). 17
18
Interferences 105,956 through 105,959
Decision on Motions

55

cc (electronic delivery): 1
Attorney for Junior Party – Thomas: 2
Richard Neifeld 3
Robert Hahl 4
Neifeld IP Law, PC 5
neifeld@neifeld.com 6
rhahl@neifeld.com 7
8
C. Douglas Thomas 9
IpVenture, Inc. 10
doug@ipventure.com 11
12
Attorney for Senior Party – Pippin: 13
R. Danny Huntington 14
William N. Hughet 15
Rothwell, Figg, Ernst & Manbeck, PC 16
dhuntington@rfem.com 17
whughet@rfem.com 18