Ex Parte 6513088 et alDownload PDFPatent Trial and Appeal BoardJul 10, 201495000459 (P.T.A.B. Jul. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/000,459 05/15/2009 6513088 379922-459RX (105402) 3741 37509 7590 07/10/2014 DECHERT LLP P.O. BOX 390460 MOUNTAIN VIEW, CA 94039-0460 EXAMINER LEE, CHRISTOPHER E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/10/2014 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 ____________ INNOLUX CORPORATION Requester and Respondent v. MONDIS TECHNOLOGY, LTD. Patent Owner and Appellant ____________ Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 Technology Center ____________ Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and GREGG I. ANDERSON, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 2 I. STATEMENT OF THE CASE A. SUMMARY Mondis Technology, Ltd. (“Mondis” or “Patent Owner”) appealed under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1, 2, 5 and 9-33. 1 The appeal is submitted on the briefs. 2 In Patent Owner’s Appeal Brief (“PO App. Br.”), Patent Owner “does not appeal rejection of claim 9.” PO App. Br. 5, 9. 3 Third-Party Requester InnoLux Corp. (“InnoLux” or “Requester”) withdrew its appeal of the Examiner’s final decision not to enter certain rejections. 4 In its Notice of Withdrawal, Requester specifically waived “its right to appeal under the provisions of 35 U.S.C. §§ 134, 141-144, and 315(b).” In its Decision Dismissing Petition (“Decision”), dated April 11, 2014 the Office of Patent Legal Administration denied Patent Owner’s Petition under 37 C.F.R. § 1.182 to Transfer Jurisdiction Over, and Consider on the Merits, Patent Owner’s Petition to Terminate Inter Partes Reexamination to Terminate Inter Partes Reexamination, dated December 23, 2013. The Decision withdrew claims 9 and 25 from consideration in this reexamination based on a final decision in Mondis Technology, Ltd. v. LG Electronics, Inc., et al., No. 2:07-cv-565 (E.D. Tex.). Decision 9. The Decision concluded 1 Patent Owner’s Notice of Appeal dated May 11, 2012. 2 Order Cancelling Oral Hearing dated June 26, 2014. 3 Patent Owner has expressed a clear intent not to pursue claim 9 and that claim is not appealed. Ex Parte Ghuman, No. 2008-1175, 2008 WL 2109842 (BPAI May 1, 2008) (precedential). 4 InnoLux Notice of Appeal dated May 11, 2012, Notice of Withdrawal (“Notice of Withdrawal”) dated March 12, 2013 and Confirmation of Withdrawal dated July 24, 2013. InnoLux represented it will no longer participate in this reexamination in any way. Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 3 prosecution will continue with respect to claims 1-8, 10-24, and 26-33. Decision 10. The Examiner confirmed the patentability of claims 3, 4, and 6-8 and rejected claims 1, 2, 5, and 9-33. 5 As a result of the preceding, claims 1, 2, 5, 10-24 and 26-33 are subject to appeal. The ’088 patent issued on January 28, 2003 to Ikuya Arai and Kouji Kitou, from Application Serial No. 09/732,292, filed on December 8, 2000. The ’088 patent claims priority to a Japanese patent application filed on February 10, 1993. B. THE INVENTION The ’088 patent describes a display unit that is capable of displaying images from video signals based, at least in part, on display unit information sent by the display unit. ’088 patent, 6:30-7:7. The display unit information, such as user adjustment data, delivery adjustment data, identification (“ID”) numbers, and/or factory preset values, is stored in memory. Id. at Fig. 2; 5:15-29. A communication controller of the display sends and receives data into and out of the display. Id. at 4:20-31, 7:53-57. The communication controller can send the contents of the display's memory, including ID numbers, to the computer. Id. at Fig. 1, 3:14-16, 5:64-65. The data can include the display’s ID number, which the computer can use to uniquely identify a particular display unit from among others. ’088, 5:64-6:7, 7:25-47, Fig. 5. The ability to identify a display can, for example, facilitate security by preventing the display of information on an 5 See Right of Notice of Appeal (“RAN”) dated March 23, 2012, page 1, incorporated into Examiner’s Answer dated January 7, 2014. Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 4 unauthorized display unit. Id., 2:35-39, 6:26-29, 10:41-45. Transmission of the display's ID number to the computer can also inform the computer that the monitor supports certain features, such as being able to receive control instructions to adjust the image. Id.,5:64-6:7. Claim 1, which is illustrative of the appealed subject matter, reads as follows: 1. A display unit comprising: means for receiving video signals for video display from a video source; memory means for storing at least display unit information, wherein the display unit information includes identifying information of the display unit; and a communication controller capable of bi-directionally communicating with the video source; wherein the communication controller communicates the display unit information to the video source and the display unit receives a signal from the video source that is generated based on at least a portion ofthe display unit information. (PO App. Br., Claims App’x. 1). C. THE PRIOR ART The following prior art references are relied on in the rejections of pending claims 23, 25, 27, 28 and 37. RAN, 3, 5-29. REFERENCE PATENT NO. FILING DATE Moriconi US 5,262,759 Jul. 27, 1992 Schmidt US 5,285,197 Aug. 28, 1991 Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 5 D. THE REJECTIONS The following rejections were adopted by the Examiner and are relevant to the claims on appeal: 1. Claims 1, 2, 5, 10-24, and 26-33 as anticipated by Moriconi under 35 U.S.C. § 102(e). RAN, 4-14. 2. Claims 1, 2, 5, 10-24, and 26-33 as anticipated by Schmidt under 35 U.S.C. § 102(e). RAN, 4, 19-29. II. ANALYSIS A. MORICONI-REJECTION OF CLAIMS 1, 2, 5, 10-24, AND 26-33 UNDER 35 U.S.C. § 102 (e) The ’088 patent claims the benefit of an application filed February 3, 1994 and thus the patent expired no later than February 3, 2014. 35 U.S.C. § 154(a)(2). While claims are generally given their broadest possible scope during prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), the Board's review of the claims of an expired patent is similar to that of a district court's review. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); see also MPEP § 2258 I.G (directing Examiners to construe claims pursuant to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), during reexamination of an expired patent). 1. “communication controller” We begin by construing the first disputed limitation of claim 1 which recites, in pertinent part, “a communication controller capable of bi- directionally communicating with the video source.” The limitation is a part of all claims on appeal. PO App. Br. 10. Whether Moriconi discloses the limitation turns on the construction of “communication controller.” Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 6 Patent Owner argues for a construction based on the Specification’s description of the functions of the “communication controller.” PO App. Br. 10-12. Patent Owner contends “communication controller” is more than a communication interface, which is separately described in the ’088 patent. Id. at 10 (citing ’088 Patent, 6:13-16). One of the specific functions Patent Owner points out from the Specification is routing a communication to the correct one of multiple possible destination devices. Id. at 11 (citing ’088 patent, Figs. 1, 4, 7, 10, and 11). Patent Owner argues communication controller 8 routes messages to and from computer 1, microcomputer 7, and memory 9. Id. (citing ’088 patent, Fig. 6). Patent Owner points to communication controller 25 and argues, based on Figure 2, the communication controller routes messages between computer 1, microcomputer 7, memory 9, and another display device. Id. Patent Owner concludes by arguing: Hence, as the term is used in the ’088 patent, a communication controller provides functionality beyond merely sending and receiving information. Such functionality includes, for example, routing messages to the correct destination by dividing the communications lines or relaying the messages as appropriate. Id. Further, according to Patent Owner, a “communication controller” should perform at least basic controlling functions to control the flow of messages between the display unit and the computer so that successful “bi-directional communication” between the display unit, and the intended component within the display unit, can occur. Patent Owner Rebuttal Brief (“PO Resp. Br.”), at 2, dated February 7, 2013. Patent Owner Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 7 contends that the fact that the Specification describes “communication controller” as including a communications interface “does not prevent the communication controller from carrying out its functions.” Id. Finally, a “communication controller” is “simply different” from a “communication interface.” Id. The claim language does not include the limitations Patent Owner argues from the Specification regarding the functions of a “communication controller.” Specifically, all that is required by the claim language is that the communication controller “is capable of bi-directionally communicating with the video source.” Although an inventor is free to define the specific terms used to describe the invention, “this must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citations omitted). Further, our reviewing court has repeatedly warned against confining the claims to specific embodiments described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). Thus Patent Owner’s arguments which cite to the Specification are not persuasive. The Specification does not define the terms “processor” Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 8 and “control” but rather describes them. As such, importing the descriptions into the interpretation of the claim terms is improper. We are not persuaded that the limitations Patent Owner argues should be incorporated into “communication controller.” See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As recited in the claim, the “communication controller” need only function to send the identification number to the computer and enable bi-directional communication between the display and the video source. Patent Owner’s argument that a “communication controller” should perform “at least basic controlling functions to control the flow of messages between the display unit and the computer[.]” does not alter our conclusion. PO Resp. Br. 2. That the “communication controller” might perform additional functions does not mean that the basic claimed function is ignored. While the ’088 patent does separately discuss “communication controller” and communications interface, Patent Owner’s argument that this means Moriconi does not meet the limitation is not persuasive. The ’088 patent states “the communication controller 5 controls a communication interface such as RS-232C which is installed in the standard type.” ’088 patent, 4:37-42. The communication interface is part of the “communication controller.” Further, Moriconi is not just a communication interface. The Examiner points to Moriconi’s disclosure of the EEPROM for controlling serial I/O communication to the display and the EEPROM. RAN, 5 (citing Moriconi pin assignments SDE, SD1, and SD2 in Fig. 5; 5:24-27). As the Examiner found, such I/O, i.e., input/output, communication is also bi- directional. Id. To the extent some “control” of the signals directed to the Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 9 display is required, the EEPROM provides such control. As an example, the EEPROM matches driver routines to the particular requirement of the display module. Moriconi, 5:35-38. Based on the description in the Specification, Moriconi discloses the “communication controller” limitation. 2. “externally connected” We now turn to the second disputed limitation, which appears in claim 10, and which recites, in pertinent part, “a video circuit adapted to display video signals sent by an externally connected video source.” The limitation is included in appealed claims 9-24 and 30-33. PO App. Br. 12. Patent Owner argues that though claims 1, 2, 5, and 26-29 do not recite “externally connected,” “the display unit must necessarily be configured to receive signals from an externally connected video source.” Id. Whether Moriconi discloses the limitation turns on the construction of “externally connected.” 6 Patent Owner argues the display module of Moriconi is not “externally connected” because it is attached by “secure attachment” to the computer body. PO App. Br. 14 (citing Moriconi, 2:1-3, 60-62). Patent Owner goes on to argue the result is “a single rigid unit” and not an external connection. Id. Further, Patent Owner contends the display of Moriconi must be physically attached and mounted to the notebook computer and cannot work in an externally connected configuration. Id. (citing Moriconi, 6 In a reexamination proceeding between these parties with a patent claim of similar scope, “external computer” was not given patentable weight. Chimei Innolux Corp. v Mondis Technology, Ltd., Appeal No. 2011-006035, at 5 (BPAI July 11, 2011), Requester’s Appeal Brief, dated July 11, 2012, Appendix RP-2. Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 10 Fig. 3A, 3:57-60). While acknowledging the display of Moriconi is selectively connected and disconnected from the notebook, Patent Owner argues the display is “connected” only when physically attached to the notebook. Id. We are not persuaded that a separate display module that is selectively connectable to a computer body is not “externally connected.” Indeed, the display of Moriconi, as a separate component, is “external” to the video source, the notebook. Once physically connected, it is both external and connected, i.e., “externally connected.” The Examiner so concluded in finding the display of Moriconi was “detachable” from the computer body. RAN 8. Patent Owner does not propose any construction for “externally connected” which precludes the Moriconi disclosure from showing the element. The distinction Patent Owner attempts to draw is that a separate but physically connected display is not “externally connected.” Patent Owner’s argument is the only support for this position. Attorney argument and conclusory statements that are unsupported by factual evidence is not persuasive. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). To the extent “externally connected” is a limitation; the limitation is met by the disclosure in Moriconi that the display is separate prior to being connected. Based on the plain and ordinary meaning of “externally connected,” Moriconi discloses the “externally connected” limitation. Even if claims 1, 2, 5, and 26-29 “inherently require an externally connected video source” (PO Resp. Br. 5), which we need not decide, the claim limitation is met by Moriconi. Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 11 3. “identification number” Dependent claim 12 depends from claim 10 and recites a “wherein the identifying information includes an identification number for identifying the display unit.” The limitation is included in claims 12, 16, 20, 24, 28, and 32. PO App. Br. 14. Patent Owner argues Moriconi does not teach the limitation because Moriconi identifies only the “type” of display and not a specific display. Id. Patent Owner concedes Moriconi discloses an “identity code,” i.e., an “identification number,” but argues that the number is not associated with a particular display, only a type of display. Id. at 15. Patent Owner relies on the Specification of the ’088 Patent to construe identification number as differentiating between “individual display units even when they are the same type (i. e., ‘having the same structure’).” Id. at 15 (citing ’088 patent, Fig. 1; 7:14-39). As previously discussed, limitations from the Specification are not read into the claims. Furthermore, Moriconi is not so limited. Moriconi discloses “a portable computer with a physical interface for attaching and detaching a display panel, and a means of recognizing on power-up the specific display attached.” Moriconi, 1:51-54. Even if this portion of Moriconi is interpreted to indicate the type of display, a particular display is identified and identification of a specific display by type falls within the scope of the claim language. Based on the plain and ordinary meaning of “identification number,” Moriconi discloses the “identification number” limitation. 4. “information that identifies a function of the display unit” Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 12 Dependent claim 13 depends from claim 10 and recites “wherein the display unit information includes information that identifies the function of the display unit.” The limitation is included in claims 13, 17, 21, 25, 29, and 33. PO App. Br. 16. Patent Owner argues Moriconi identifies only the type of display and not its function. Id. at 16. Conversely, Patent Owner states the ordinary meaning of “function of the display unit" would include “the display unit's ability to receive and apply control instructions from a computer to adjust the display image.” Id. (citing ’088 Patent, 4:64-67). The Examiner points to Moriconi’s teaching of matching the identity code to display features such as color availability and range. RAN, 14, 36. According to the Examiner, this disclosure meets the “identifying a function of the display unit” limitation because different display types have “different display driving functions related to said color availability and range, and said display driving functions ... are ultimately chosen by the identified display module.” Id. Patent Owner counters by noting Moriconi’s “display driving functions” are basic information for generating signals. PO App. Br. 17 (citing Moriconi, 2:18-19, 5:24-26). As such, no function is identified. Id. That different display types are disclosed in Moriconi does not preclude those types from identifying functions. Different types can have different functions related to back-lighting of the display, the power consumption of the display, and the color availability and range of the display. Moriconi, 1:36-39. The Examiner found the broad claim language Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 13 did not recite any specific function and the technical aspects of the display, specifically including driver routines, met the limitation. RAN, 14, 36. Based on the plain and ordinary meaning of “information that identifies the function of the display unit,” Moriconi discloses the “information that identifies the function of the display unit” limitation. B. SCHMIDT-REJECTION OF CLAIMS 1, 2, 5, 10-24 AND 26-33 UNDER 35 U.S.C. § 102 (e) Patent Owner appeals the rejection based on Schmidt making the some of the same arguments it made in appealing the rejection based on Moriconi. Specifically, Patent Owner argues Schmidt does not disclose: a “communication controller” (PO App. Br. 18-19, PO Resp. Br. 13-14); an “identification number” (PO App. Br. 19-22, PO Resp. Br. 14-15); or “information that identifies a function of the display unit” (PO Resp. Br. 15). To the extent construction of the terms is argued, we refer to our previous analysis. The disclosure of Schmidt with respect to the disputed terms is analyzed below. 1. “communication controller” Patent Owner argues the “communication controller” is a limitation present in claims 1, 2, 5, 10-24, and 26-33 and not disclosed in Schmidt. PO App. Br. 18. The Examiner finds a “communication controller” in Schmidt’s processor 106 of Figure 1. RAN 19. Schmidt’s processor sends an identification number stored in said memory to the computer microprocessor enters monitor identifying information to the graphics controller. Id. at 19-20 (citing Schmidt, 8:40-9:13). The Examiner finds bi- directional communication between the display unit and the computer, i.e., Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 14 video source, upon the microprocessor’s receipt “of a certain number of signals from the graphics controller.” Id. Patent Owner makes the same arguments made above, i.e., that functions of the “communication controller” are beyond a mere “communications interface.” PO App. Br. 18-19. We agree with Requester that requiring that the “communication controller” to function in a certain manner “beyond simply being capable of sending information within the memory (i.e., the display unit information) to the video source and enabling bi-directional communication is an impermissible narrowing of the claims.” Req. Resp. Br. 9. Based on the description in the Specification, Schmidt discloses the “communication controller” limitation. 2. “identification number” Patent Owner argues the “identification number” is a limitation present in claims 12, 16, 20, 24, 28, and 32 and not disclosed in Schmidt. PO App. Br. 19. The Examiner finds Schmidt discloses a memory which stores an identification number. RAN 28. Specifically, Schmidt discloses a plurality of bits used to uniquely identify the video display monitor type. Id. (citing Schmidt, 1:8-14, 4:32-38, 8:59-64, and Table 2). Patent Owner argues against the construction we reached above and again argues that the identification number must identify a specific display. PO App. Br. 19-20. It is argued the type of display does not identify the display. Id. at 18. Patent Owner also contends the bits identify monitor specifications or “raw information,” like horizontal sync frequency and video rate or bandwidth. Id. at 19. Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 15 The claim language requires an identification number and the bits disclosed in Schmidt are a number. Patent Owner acknowledges such bits define a monitor type. PO App. Br. 19. That the “type” includes technical specifications does not alter the fact that a number identifies a type of display. Neither are we persuaded by Patent Owner’s argument that the “functional limitations” preclude Schmidt from meeting the element. PO Resp. Br. 15. The “functional limitation” is that the number is “for identifying the display unit.” A display unit is identified in Schmidt and the identification is based on a number. That the identification is not the identification described in the Specification does not limit the scope of the claim language, which is broad enough to include that which is disclosed in Schmidt. Based on the plain and ordinary meaning of “identification number,” Schmidt discloses the “identification number” limitation. 3. “information that identifies a function of the display unit” Patent Owner argues the “information that identifies a function of the display unit” is a limitation present in claims 13, 17, 21, 25, 29, and 33 and is not disclosed in Schmidt. PO Resp. Br. 15. This argument regarding Schmidt does not appear in Patent Owner’s Appeal Brief. PO App. Br. 18- 22. As such, the argument is waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“The reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Notwithstanding the waiver, we will address the argument, as we did in connection with Moriconi above. Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 16 The Examiner found the display unit information includes information that identifies a function of the display. RAN 28. Schmidt’s display unit, i.e., byte 2, feature byte of Table 2, provides a list of features of the display monitor. Id. (citing Schmidt, 11:31-37). Patent Owner’s argument is based, in part, on a dictionary definition of “function,” that the word includes an “action.” PO Resp. Br. 1. Patent Owner proceeds to allege that “byte 2 of Schmidt does not disclose any action that could be performed by its monitor.” PO Resp. Br. 2. Further, Patent Owner contends byte 2 of Schmidt indicates whether a certain feature is supported by its monitor, and if so, the corresponding bit is set to one. Id. (citing Schmidt, 11:31-37, Table 2)(setting the monitor to “portrait or landscape display”). That the bytes of Schmidt control a feature of the display, does not require a conclusion that the feature is not a “function.” The fact that “feature” is not the same word as “function” is not the test. “Function” is sufficiently broad to include features of the display. Beyond resorting to the dictionary definition of “function,” Patent Owner makes no argument that persuade us that a selected feature of a display unit is a function of the display unit. Even if the argument is not waived, based on the plain and ordinary meaning of “information that identifies the function of the display unit,” Schmidt discloses the “information that identifies the function of the display unit” limitation. Appeal 2013-007676 Reexamination Control 95/000459 Patent 6,513,088 B2 17 III. CONCLUSION The Examiner’s decision to reject claims 1, 2, 5, 10-24, and 26-33 as unpatentable under 35 U.S.C. § 102(e) over Moriconi is affirmed. The Examiner’s decision to reject claims 1, 2, 5, 10-24, and 26-33 as unpatentable under 35 U.S.C. § 102(e) over Schmidt is affirmed. IV. ORDER The Examiner’s decision to reject claims 1, 2, 5, 10-24, and 26-33 is affirmed. AFFIRMED alw Patent Owner: Dechert LLP P.O. Box 390460 Mountain View, CA 94039-0460 Third Party Requester: Scott Talbot, Esq. Cooley Godward Kronish LLP Attn: Patent Group 777 6 th Street, NW, Suite 1100 Washington, DC 20001 Copy with citationCopy as parenthetical citation