Ex Parte 7072190 et al

Patent Trial and Appeal Board

Feb 3, 2014

95001207 (P.T.A.B. Feb. 3, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,207 08/19/2009 7072190 X42745 6970
7055 7590 02/03/2014
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
TON, MY TRANG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/03/2014 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
________________

SynQor, Inc.
Patent Owner and Appellant

v.

Murata Manufacturing Co., Ltd.
Requester and Respondent
________________

Appeal 2012-012209
Inter partes Reexamination Control No. 95/001,207
United States Patent 7,072,190 B2
Technology Center 3900
________________

Before KARL D. EASTHOM, JUSTIN T. ARBES, and GLENN J. PERRY,
Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2012-012209
U.S. Patent 7,072,190
Reexamination Control No. 95/001,207

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I. INTRODUCTION
Murata Manufacturing Co., Ltd., Third Party Requester (“Requester”),
requests1 rehearing of our Decision dated August 19, 2013 (“Decision”).
That decision reverses Examiner rejections of claims 1-33. According to
Requester, the Board misapprehended or overlooked the following:
A) The 20%-transition limitation is satisfied for a resonant waveform
by a synchronous rectifier with a threshold voltage that is half the peak
voltage of the resonant waveform.
B) Synchronous rectification does not require inductors.
C) The Steigerwald ’090 rejections do not require inductors in the
rectification stages, and any inductors used in the Steigerwald ’090
rejections would be placed in the conduction path of the non-pulsed
voltages.
D) The JP ’446 rejections do not require that the waveform in the
primary windings be altered.
E) Dr. Schlecht has explained that the benefits of intermediate bus
architecture (IBA) are achieved by separating and remotely positioning the
plurality of regulation stages from the isolation stage. RR at 4.
Patent Owner filed responsive comments.2

1 Request for Rehearing (“RR”) filed September 19, 2013.
2 Patent Owner Comments (“PO Comments”) filed October 18, 2013.
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We have reconsidered our Decision in light of the Request for
Rehearing and Patent Owner Comments. We find no need for further oral
argument or briefing. We are not persuaded to change our decision to
reverse the Examiner’s rejection of claims 1-33, and supplement our
Decision as set forth herein.
II. DISCUSSION
A. 20% transition claim limitation
Requester argues that the Decision misapprehends the short transition
limitation of claim 1, set forth below, by failing to give the limitation its
broadest reasonable interpretation.
1. A power converter system comprising:
a DC power source;
a non-regulating isolation stage comprising:
a primary transformer winding circuit having at
least one primary winding connected to the source; and
a secondary transformer winding circuit having at
least one secondary winding coupled to the at least one
primary winding and having plural controlled rectifiers,
each having a parallel uncontrolled rectifier and each
connected to a secondary winding, each controlled
rectifier being turned on and off in synchronization with
the voltage waveform across a primary winding to
provide an output, each primary winding having a
voltage waveform with a fixed duty cycle and transition
times which are short relative to the on-state and off-
state times of the controlled rectifiers; and
a plurality of non-isolating regulation stages, each
receiving the output of the isolation stage and regulating a
regulation stage output while the fixed duty cycle of the
isolation stage is maintained. (emphasis added)

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Requester would have us adopt a construction requiring that any
transition of the primary winding voltage waveform be “shorter” than the
on-state plus the off-state of a controlled rectifier. We decline to adopt that
construction.
It is unfortunate that the record does not provide a clear road map to
the meaning of this disputed claim limitation. We faced the same dearth of
clues as to its construction as did the District Court in carrying out its
Markman construction in the ’497 litigation3 and the same dearth of clues
that the Examiner faced during prosecution of the reexamination. We
adopted the same construction adopted by both the District Court4 and the
reexamination Examiner – that, in the context of the claims at issue, the
upper limit of “short” would be 20% of the overall “on-state” time and “off-
state” time of a synchronized controlled rectifier, arbitrary as that may seem
to Requester. See Dec. 12-13.
The ’190 patent describes technical challenges in using synchronous
rectifiers in high frequency converters as follows:
The use of transistors as synchronous rectifiers in high
switching frequency converters presents several technical
challenges. One is the need to provide properly timed drives to
the control terminals of these transistors. This task is made
more complicated when the converter provides electrical
isolation between its input and output because the synchronous
rectifier drives are then isolated from the drives of the main,
primary side transistors. Another challenge is the need to

3 SynQor, Inc. v. Artesyn Technologies, Inc. et al., Case No. 2:07-cv-497
(E.D. Tex.) (the “’497 litigation”).
4 The District Court decision was affirmed by the Court of Appeals for the
Federal Circuit March 13, 2013 in case numbers 2011-1191, -1192, and -
1194, and 2012-1070, -1071, and -1072.
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minimize losses during the switch transitions of the
synchronous rectifiers. An important portion of these switching
losses is due to the need to charge and discharge the parasitic
capacitances of the transistors, the parasitic inductances of
interconnections, and the leakage inductance of transformer
windings.

’190 patent 1:48-61 (emphasis added).
Synchronizing the controlled rectifiers with the voltage waveform of
the primary winding of the isolating transformer occurs as follows:
Each controlled rectifier is turned on and off in synchronization
with the voltage waveform across a primary winding to provide
an output. Each primary winding has a voltage waveform with a
fixed duty cycle and transition times, which are short relative to
the on-state and off-state times of the controlled rectifiers. A
regulator regulates the output while the fixed duty cycle is
maintained.

’190 patent 2:12-18. The ’190 patent Specification further explains:

A controller turns on the first and second primary switches in
opposition, each for approximately one half of the switching
cycle with transition times which are short relative to the on-
state and off-state times of the first and second controlled
rectifiers. The first and second controlled rectifiers are
controlled to be on at substantially the same times that the first
and second primary switches, respectively, are on.

’190 patent 2:27-34 (emphasis added).
According to the embodiments described by the Specification and
drawings, the primary winding voltage waveform results from high
frequency switching of the primary winding circuit of the isolating
transformer. See e.g. Q1 and Q2 in Figure 5.
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The ’190 patent does not have any waveform drawings illustrating the
shape of the voltage waveform of the primary winding. The claim terms
“transition” and “duty cycle” are suggestive of a voltage waveform that is
more pulse-like (square) than sine wave-like, as these words are typically
used to describe pulse trains rather than sine waves. The ’190 patent tells us
that it is best to avoid driving the transformer into saturation. See ’190
patent 15:60-66.
The ’190 patent does not quantify “short” as used in the context of
claim 1. It only quantifies the word “short” as used in another context.
“Short” is quantified in describing transitions of the controlled rectifiers:
The nearly lossless delivery and recovery of energy is achieved
because the circuit topology permits the synchronous rectifier
switch transitions to proceed as oscillations between inductors
and capacitors. These transitions are short compared to the
overall on-state and off-state portions of the switching cycle
(e.g., less than 20% of the time is taken up by the transition).
This characteristic of nearly lossless and relatively short
transitions, which we will call soft switching, is distinct from
that used in full resonant, quasi-resonant, or multi-resonant
converters where the oscillations last for a large portion, if not
all, of the on-state and/or off-state time. (emphasis added)

’190 patent 8:8-19. Requester is correct in characterizing this portion of the
Specification above as describing transitions that occur at the synchronous
rectifiers and not at the primary winding. We find no portion of the
Specification that speaks directly to the construction of “short” as related to
transitions of the primary winding waveform from one voltage level to
another.
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In the absence of clear guidance, we adopt the only construction of
“short” that we can discern from the record. Although it would have been
more satisfying to find clearer guidance, we find no reason to deviate from
the construction adopted by both the District Court and the Examiner.
The fact finding issue for us with respect to the prior art is whether in
January, 1997 (the priority date of the claims at issue) the prior art would
have suggested to one of only ordinary skill that the primary winding
voltage waveform should be transitioned “short relative to the on-state and
off-state times of the controlled rectifiers” as required by the claim language.
We are not persuaded by this record that the references would have so
suggested.
Requester submits for the first time a mathematical proof purporting
to demonstrate a relationship between on- and off-states of a controlled
rectifier being driven by a resonant (sinusoidal) gate waveform. RR at 4-9.
Requester’s point appears to be that the claim limitation would be satisfied
by prior art references that describe using a sine wave or resonant topology,
thereby rendering the claims obvious.
We note from the passage of the Specification quoted above (’190
patent at 8:8-19) that the inventor specifically distinguishes his invention
from full resonant, quasi-resonant, or multi-resonant converters. As
discussed further below, Requester implies that a sine wave has a transition
time. Requester does not provide evidence that a skilled artisan would have
described a sine wave as having a transition time under ordinary
circumstances or the circumstances involved here. A sine wave is a
continuous wave. It does not transition from one state to another.
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The mathematical proof provided in the Request for Reconsideration
constitutes new argument. Furthermore, it does not establish that the prior
art references would have suggested to one of ordinary skill in 1997 the use
of a short transition primary winding voltage waveform. As such, we are not
persuaded to a different outcome.
We also note that the claim language uses the phrase “short relative
to” rather than the phrase “shorter than.” We infer from this choice of
language a subtle emphasis on “short.” This suggests to us a degree of
shortness beyond being merely “shorter than.”

B. Steigerwald ’090 Rejections
1. Inductors
Requester argues (RR 10-23) that we have misapprehended the
Steigerwald ’090 rejections. These rejections are based on a determination
that one of ordinary skill would have modified Steigerwald ’090 to use
synchronous rectification and driving techniques of Cobos. In reversing the
Examiner’s rejections, we noted a number of incompatibilities between
Steigerwald ’090 and Cobos that would have discouraged one of only
ordinary skill from making the combination in 1997. See Dec. 16-25.
One such incompatibility is that the Cobos circuits have inductors in
their conduction paths, which would have frustrated the objective of
Steigerwald ’090 in providing pulsed current outputs through series
regulators.
Requestor again correctly points out that synchronous rectification
does not require inductors. RR 11-12. We agree. Patent Owner has proven
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that proposition with a topology that has become widely adopted by
industry. Our legal inquiry is not, as Requester suggests, whether
synchronous rectification requires inductors (RR 11). It does not. Rather,
our legal inquiry is whether Steigerwald ’090 and Cobos in 1997 would have
suggested to one of ordinary skill in the power supply arts to make the
claimed invention. Based on this record, we conclude that this combination
of prior art references would not have done so. One of ordinary skill in 1997
would have looked at Steigerwald ’090 and Cobos and been dissuaded from
combining them because of the various incompatibilities listed in our
Decision.
Steigerwald ’090 states a strict prohibition on the use of inductors in
its conduction path. Our conclusion does not suggest that synchronous
rectification requires the use of inductors. Quite the opposite is true − we
recognize that it does not. We concluded that the Steigerwald ’090 use of
inductors in the conduction path of the operative circuits (not the bias
circuits) would have discouraged one of ordinary skill from using the Cobos
synchronous rectification circuits that have inductors in their conduction
paths. See Dec. 21-24.
All inventions that are new arrangements of old elements (most
inventions including this one) can be picked apart and the elements found in
the prior art. A difference between an obvious combination of known
elements and “invention” lies in what the prior art at the time of the
invention would have suggested to one of ordinary skill. We must guard
against hindsight reconstruction, particularly when reviewing claims at a
point in time much later than the invention, as we are now doing.
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2. Non-pulsed bias outputs of Steigerwald ’090
Requester argues that the Decision misapprehends that the
Steigerwald ’090 rejections only require placing inductors in the path for the
non-pulsed voltages. RR 14-15. Our fact-finding includes a determination
that the operative (not bias only) outputs of Steigerwald ’090 prohibited
inductors in the conduction path. Steigerwald ’090 uses series regulators in
the operative output circuits to deliver pulsed currents. We conclude that
one of ordinary skill, in 1997, looking at Steigerwald ’090 and Cobos would
have focused on the pulsed outputs (the operative outputs) of Steigerwald
’090 rather than the bias outputs from which no substantial power is drawn.
The presence of inductors in Cobos would have discouraged combination
with Steigerwald ’090 in that it would have frustrated the primary purpose of
Steigerwald ’090.

3. Efficiency considerations
Among the various incompatibilities between Steigerwald ’090 and
Cobos, we noted that one of ordinary skill likely would not have perceived
an efficiency gain in attempting the combination. See Dec. 17-18.
Requester argues that overall efficiency would have been improved by using
switching regulators in place of the series regulators shown in Steigerwald
’090. This argument applies to claims 2-4 for which the rejection was based
on Steigerwald ’090, Cobos and Pressman.
The issue is not whether overall efficiency could have been improved.
It is now understood (after the Schlecht invention) how to improve overall
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efficiencies by providing separately optimized isolation and regulation
stages. Rather, the inquiry is what would have been perceived by one of
ordinary skill in 1997. Thus, Requester’s argument is not persuasive.

4. Frequency incompatibility
Requester argues that the Decision misapprehends frequency
incompatibility between Steigerwald ’090 and Cobos. RR at 19-20.
Requester argues that we have misunderstood the frequency ranges of the
respective circuits and that one of ordinary skill would have figured out how
to adjust for frequency differences.
Patent Owner argued that Steigerwald ’090, Steigerwald ’539
(referenced by Steigerwald ’090) and the Casey article would have led one
of ordinary skill to the conclusion that Steigerwald ’090 operates at about 5
MHz. PO Comments 7. Patent Owner further argued that one of ordinary
skill would have understood that Cobos had to operate at a frequency below
1 MHz. Id. Patent Owner further argued that Steigerwald ’090 and
Steigerwald ’539 describe using sinusoidal primary winding voltage
waveforms (not short transitions). We find persuasive Patent Owner’s
argument that many factors would have to be taken into account in order to
adapt Steigerwald ’090 to use the the Cobos driving techniques.
Obviousness is about what prior art references would have suggested
to one of ordinary skill in the art at the time of an alleged invention.
Frequency incompatibility is one of many incompatibilities in combining
Steigerwald ’090 and Cobos that would have dissuaded one of ordinary skill
from having made the combination.
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5. Short transitions of Cobos
Requester argues (RR 20) that the Decision misapprehends the short
transitions of Cobos. Requester describes various considerations that one of
ordinary skill in the art would have taken into account in making the
modifications necessary to combine Steigerwald ’090 and Cobos. These
include size, efficiency, switching frequency, complexity. RR 20. We agree
with Requester that there are numerous factors to take into consideration.
However, the preponderance of evidence favors a conclusion that one of
ordinary skill in 1997 would not have made the claimed combinations based
on Steigerwald ’090 and Cobos.

6. Differences beteen IBA and Steigerwald
Requester argues (RR 20) that we misapprehend the differences
between IBA and Steigerwald ’090. According to Requester, the
Steigerwald ’090 rejections have nothing to do with IBA and that the
objective evidence of non-obviousness should be given little weight. Our
decision with regard to the Steigerwald ’090 rejections is based substantially
on our finding that one of ordinary skill in 1997 would have been dissuaded
from combining Steigerwald ’090 and Cobos based on various technical
incompatibilities. The objective evidence of non-obviousness, discussed
below, confirms that view. We agree with Requester than many pieces of
the puzzle were known – including synchronous rectification. However, the
record does not suggest to us that anyone put the puzzle pieces together in
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the manner set forth in the claims at issue. Nor was it obvious to do so in
1997.
Contrary to Requester’s assertion that IBA requires an unregulated
bus converter (UBC) (data sheets A40-A82) to be remotely positioned (RR
21-23) from the point-of-load (POL) converters, our findings are not based
on a “remoteness” requirement. The claims do not require remote
positioning. The ’190 patent recognizes an advantage in separating the
functions of UBC and POL and optimizing the circuit design of each in to
provide practical power supply arrangements for certain applications. One
example of this optimization is the use of a fixed duty cycle in the isolation
stage. See ’190 patent, claim 1 and 2:12-18.

C. JP ’446 and Steigerwald ’539
Requester continues to argue that Steigerwald ’539 teaches the claimed
“short transitions.” RR 25-28. Requester points to Figures 10a-10f of
Steigerwald ’539. Steigerwald ’539 states: “FIGS. 10a-l0f graphically
illustrate[] voltage waveforms useful in understanding operation of the
power system of the present invention.” Steigerwald ’539 2:40-42. The
specification describes Figures 10a-10f as follows:

FIG. 10 graphically illustrates: (a) the drain
voltage waveform for switching device Qa; (b) the
drain volt-age waveform for switching device Qb;
and (c) the sine wave voltage VQa- VQb that appears
between the drain terminals of devices Qa and Qb
and is applied to the primary winding of gate
transformer T4 of FIG. 7.

Steigerwald ’539 5:19-24 (emphasis added).
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Thus, Steigerwald ’539 Figures 10a-10f illustrate a controlled rectifier
gate driving voltage waveform that appears to be substantially sinusoidal.
We are not persuaded that this would have suggested to one of ordinary skill
in 1997 to use the claimed “short transitions.”
Nor does JP ’446 teach the claimed short transitions. JP ’446 operates
in a “resonance” mode (See JP ’446, Abstract) requiring sinusoidal
waveforms in both voltage and current at approximately the same frequency.
Regardless of any incompatibility related to the introduction of noise,
neither Steigerwald ’539 nor JP ’446 teaches the required short transitions.

D. Objective Evidence
1. Nexus
In addition to the technical evidence and arguments discussed above,
the record before us includes substantial objective evidence of non-
obviousness. Much of the objective evidence comes from parallel District
Court litigations including the ’497 and ’545 litigations.
Requester argues that the Board blindly accepts findings of the jury
and District Court in the parallel litigations without making an independent
inquiry and improperly assumes that a jury finding of infringement provides
the requisite nexus. RR 30. In sharp contrast, Patent Owner argues in
reexamination appeal briefing that the Seventh Amendment6 requires that we

5 SynQor, Inc. v. Ericsson, Inc. et al, Case No. 2:11-cv-54 (E.D. Tex.) (“the
′54 litigation”).
6 See In re Construction Equipment, 665 F.3d 1254 (Fed. Cir. 2010) in
which the majority did not adopt the dissent view that reexamination was
constitutionally barred by res judicata or issue preclusion.
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accept the determinations of the District Court. PO App. Br., 66-67. We do
neither.
Evidence from the parallel District Court litigations is available for
our consideration and, based on our review of that evidence, we conclude
that there is a nexus between the claims at issue in this reexamination and
the accused products that were the subject of those litigations. Data sheets
describing those accused products are of record in the reexamination. We
find that the claims at issue in the reexamination are reasonably
commensurate in scope with the accused products as described by those data
sheets.
Based on the record before us,7 the story told by the objective
evidence is as persuasive to us as it was to the District Court and the Federal
Circuit.8
Requester argues (RR 32) there is no nexus between the claims and
the accused products because the claims do not require that the isolation
stage be remotely positioned from the regulation stages. The claims at issue
do not require remote positioning of the isolation and regulation stages − and
neither do the accused products. Although the accused UBCs (isolation
module) and POLs (regulator module) are often positioned remotely from
one another, they are not required to be so positioned. Remoteness is not
precluded, but also is not required.

7 The record before us, established at the Central Reexamination Unit of the
United States Patent and Trademark Office, includes about 6200 pages,
including a substantial number of documents from the parallel litigations.
8 2011-1191, -1192, -1194, 2012-1070, -1071, -1072 (Fed. Cir. March 13,
2013)
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Requester cites the Schlecht Article9 in support of its alleged
remoteness requirement that has not been met. RR 32-33. We reviewed this
article. It does not suggest to us that remoteness is a requirement of the
claimed invention. It describes situations in which IBA is more or less
beneficial vis-à-vis other power supply arrangements. It describes a number
of factors that are to be considered: 1) power level, 2) nature of input
voltage, and 3) whether non-isolated converters will be purchased as
modules or built directly on the printed circuit board (PCB). It describes
that for high power situations, there is advantage in distributing power at
higher voltage to keep current low. Non-isolated converters are used to step
the voltage down to required logic levels near the load. The article further
states that as the distance between the non-isolated converters and the load
increases, the value of using an intermediate bus is diminished. Schlecht
Article p. 1. We gather from this that there is a continuum of benefit based
on degree of separation and other circumstances of a particular application
of the technology.
We conclude that the success of the claimed topology was
substantially derived not from the positional relationship between UBC and
POL modules, but rather from the separation of isolation and regulation
functions and the individual optimizations of each, leading to a circuit
arrangement that was widely adopted. The evidence suggests that by
separating and optimizing the functions of isolation (without regulation) and
regulation (without isolation), it was possible to achieve efficiencies not

9 “Intermediate Bus Architecture: is it for everyone?,” IEEE Power
Engineer, October/November 2003.
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previously achieved and package the devices in smaller size configurations.
That arrangement eventually came to dominate an important segment of the
power supply market.
Requester argues that our Decision overlooks a lack of evidence of
market share in determining that there was commercial success of the
claimed invention. RR 33. As the Decision states, there was ample
evidence supporting our conclusion of commercial success, including trial
evidence leading to a jury award of substantial damages. See Dec. 43-46.

2. Dickens Declaration
Requester argues that the Dickens Declaration should not have been
considered by the Board because its submission exceeded the notice
provisions of 37 C.F.R. § 41.67(c)(l)(x) and the first paragraph of MPEP §
2686, which refers to 37 C.F.R. § 1.985 (RR 36); it was not timely submitted
(RR 36-37); and the declaration does not include a Section 1001 statement
(RR 37-38).
The notice provisions of 37 C.F.R. § 1.985 require that documents
submitted into the record of a reexamination under the guise of a notification
of prior or concurrent proceedings must be limited in their scope by not
discussing issues. It directs that papers not so limited will be returned to the
sender. See 37 C.F.R. § 1.985. Given the development of this
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reexamination record, to the extent necessary, we waive the requirements of
this rule.10 We find the following facts.
The parallel litigations became known to the reexamination Examiner
almost immediately after the request for reexamination was filed by
Requester in July 2009. The Examiner’s own litigation search conducted in
August 2009 resulted in the Examiner adding 57 pages of litigation
documents into the reexamination record including documents from the
parallel litigations. Reexamination was ordered in November 2009. The
Examiner updated the litigation search and added further documents to the
record in April 2010. Patent Owner responded to a non-final office action
dated April 13, 2010 with a response that extensively quoted from various of
the litigation documents of the parallel litigations. Litigation documents
referred to as A1-82 were submitted along with the Schlecht Declaration and
Pellikaan Declaration on July 13, 2010. The record is replete with
arguments made and responded to regarding issues pertaining to the
litigation documents. As noted in the Decision, arguments were made by
Patent Owner that certain trial evidence, previously shielded by a protective
order in litigation, became known to Patent Owner as the jury trial
proceeded and was late submitted because it became known after the
reexamination Examiner issued the ACP.
The Dickens Declaration was entered into the reexamination record
first in March 2011 along with other litigation documents. The Examiner
did not exercise the available option to expunge any documents from the

10 Rule 41.2 allows us to consider a Declaration under Rule 68 and a
“statutory declaration” under 28 U.S.C. § 1746. We conclude that the
declaration at issue meets the statutory declaration requirements.
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record. Arguments continued to be made by both sides related to the
substance of issues documented in the Dickens Declaration. The record
from the reexamination, as it came to the Board, included approximately
6200 pages.
Furthermore, the litigation documents, including the Dickens
Declaration, are a matter of public record in the parallel litigations. As
discussed above, we find a nexus between the claim at issue in the
reexamination and the accused products in those parallel litigations. Data
sheets related to those products were introduced into the reexamination
record. To the extent necessary, we take official notice of the records of
those litigations including the Dickens Declaration.
Requester argues that the Dickens Declaration was untimely. The
Dickens Declaration was submitted for the first time in the reexamination on
March 22, 2011, prior to the ACP dated August 4, 2011. After Requester
raised formality arguments with respect to the Dickens Declaration, it was
re-submitted in response to the ACP and again during appeal briefing.
Given that the Declaration first appeared in the reexamination record prior to
the ACP, we will not disregard it as being untimely.
Requester argues that the Dickens Declaration should be disregarded
because it does not include a proper Section 1001 statement. Requester
argues that although a Section 1001 statement is not necessary in a District
Court (where the Declaration was first submitted) because other procedures
are used to assure the reliability of the evidence, it is required by MPEP §
715.04. RR 37. We will not disregard the Dickens Declaration based on
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this informality. We deem the language actually used in the Declaration to
satisfy the requirements of 37 C.F.R. § 1.68 or 28 U.S.C. § 1746.
37 C.F.R. § 1.68 states:
Any document to be filed in the Patent and Trademark
Office and which is required by any law, rule, or other
regulation to be under oath may be subscribed to by a
written declaration. Such declaration may be used in lieu
of the oath otherwise required, if, and only if, the declarant
is on the same document, warned that willful false
statements and the like are punishable by fine or
imprisonment, or both ( 18 U.S.C. 1001) and may
jeopardize the validity of the application or any patent
issuing thereon. The declarant must set forth in the body of
the declaration that all statements made of the declarant's
own knowledge are true and that all statements made on
information and belief are believed to be true. (emphasis
added)

The language used in the Dickens Declaration is “I declare under
penalty of perjury that the foregoing is true and correct,” which met the
requirement of the District Court to which the Declaration was first
submitted, but does not strictly conform to the language required by the
USPTO rule.
Requester’s argument related to the Section 1001 statement appears to
be raised for the first time in this appeal and is, therefore, waived. See Ex
Parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative) (“conclud[ing]
that the regulations set out in 37 C.F.R. § 41, Practice Before the Board of
Patent Appeals and Interferences, do not require the Board to consider such
belated arguments”). However, we note the following.
Appeal 2012-012209
U.S. Patent 7,072,190
Reexamination Control No. 95/001,207

21
We find, as a matter of fact, that the Dickens Declaration was
prepared by Patent Owner originally for entry into evidence in the ′054
litigation11 in support of a Patent Owner motion for preliminary injunction.
It appears to be part of the public record of that litigation (discussed above
with respect to nexus).
We further find, as a matter of fact, that the Dickens Declaration was
first submitted in the reexamination on March 22, 2011 in conjunction with a
Notice of Concurrent Proceedings filed by Patent Owner. This submission
occurred prior to the Action Closing Prosecution issued August 4, 2011. In
response to formality challenges, the Dickens Declaration was submitted
again with Patent Owner’s response to the ACP, again with Patent Owner’s
Notice of Appeal, and yet again as an appendix to Patent Owner’s appeal
brief.
We also find, as a matter of fact, that the Examiner did not exercise an
available option to “provisionally accept” the document and provide a time
period during which it could be properly signed with a Section 1001
statement. We further find that the Examiner did not exercise an available
option to expunge the Dickens Declaration from the reexamination record.
The Declaration was part of the litigation record available to us. We
take official notice of the public record of the various SynQor patents
litigations noticed in this reexamination, including the ’417 and ’54
litigations.

11 E.D. Tex. Case No. 2:11-cv-00054-TJW-CE, Document 62, filed March
14, 2011.
Appeal 2012-012209
U.S. Patent 7,072,190
Reexamination Control No. 95/001,207

22
Although Requester consistently and vigorously objected to the
Dickens Declaration being in the reexamination record, the Examiner did not
exercise his discretion to expunge it from the record and it was part of the
record when this appeal came to the Board. Both Patent Owner and
Requester argued issues discussed in the Declaration. We reviewed all of
the evidence in the record including the Dickens Declaration, choosing not
to disregard any of the evidence in the record and to weigh it appropriately,
as we do with each piece of evidence.
Although Requester’s argument with respect to lack of a § 1001
statement is waived, to the extent necessary, we waive any requirement
stated in MPEP § 715.04 requiring a Section 1001 statement and any related
rule that suggests that the Declaration is not available for our consideration
based on Requester’s alleged informality objection related to omission of a
Section 1001 statement.
Furthermore, we take official notice of the public record of the related
litigations including the ’417 and ’54 litigations.

3. Weight of the Objective Evidence
Much of the objective evidence is set forth in documents other than
the Dickens Declaration, although the Dickens Declaration is the single
document that best summarizes it. Requester challenges certain pieces of
the objective evidence related to long-felt need, industry praise, and copying.
However, the overwhelming weight of the objective evidence reinforces our
view based on the technical arguments and prior art of record that the claims
at issue would not have been obvious in 1997 to one of only ordinary skill in
Appeal 2012-012209
U.S. Patent 7,072,190
Reexamination Control No. 95/001,207

23
the power supply art. One example of the objective evidence is the industry
praise described in Dickens Declaration ¶¶ 73-80.12 Another example is the
commercial success described in the Schlecht Declaration dated July 11,
2010. See Dec. 43-46, 48-49.

III. CONCLUSION
For the above reasons, we remain persuaded that the record before us
does not establish that claims 1-33 would have been obvious to one of
ordinary skill in the art at the time of the invention claimed in the ’190
patent. We, therefore, do not sustain the rejections.

IV. ORDER
For the reasons given herein and in the Decision of August 19, 2013,
it is
ORDERED that the Examiner’s rejection of claims 1-33 is reversed.

12 See ¶ 75 (Tom Curatolo), ¶ 76 (Narveson), ¶ 77 (vendor praise), ¶ 78
(National Semiconductor praise), ¶ 79 (technical press), and ¶ 80 (academic
praise).

Appeal 2012-012209
U.S. Patent 7,072,190
Reexamination Control No. 95/001,207

24

FOR PATENT OWNER:

Bruce H. Stoner
Greenblum & Bernstein, P.L.C.
1950 Roland Clarke Place
Reston, VA 20191

FOR THIRD-PARTY REQUESTER:

MURATA MANUFACTURING COMPANY, LTD
c/o KEATING & BENNETT, LLP
1800 Alexander Bell Drive, Suite 200
Reston, VA 20191