Ex Parte 7272021 et al

Patent Trial and Appeal Board

Feb 19, 2019

95001637 (P.T.A.B. Feb. 19, 2019)

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.
95/001,637 05/31/2011 7272021 X43170 1997
7055 7590 02/20/2019
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
NGUYEN, LINH M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/20/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VICOR CORPORATION,
Requester,

v.

SYNQOR, INC.,
Patent Owner.
____________

Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2
Technology Center 3900
____________

Before JAMES T. MOORE, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON REMAND
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

2
The Federal Circuit remanded this matter to us for further proceedings
on August 30, 2017. Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1326 (Fed.
Cir. 2017).
In an earlier Decision, mailed May 5, 2015 (“Decision”),1 we affirmed
the following Examiner’s rejections:
I. Claims 1, 9, 15, 21, 24, 26, 31, 39, 45, and 47 under 35 U.S.C.
§ 102(b) as anticipated by Steigerwald ’0902 (Rejection I);
II. Claims 22, 23, 25, and 27–30 under 35 U.S.C. § 103(a) over
Steigerwald ’090 and the knowledge of one of ordinary skill in
the art (Rejection II);
III. Claim 49 under 35 U.S.C. § 103(a) over Steigerwald ’090 and
Pressman3 (Rejection III); and
IV. Claim 50 under 35 U.S.C. § 103(a) over Steigerwald ’090,
Pressman, and APA4 (Rejection IV).
The Federal Circuit affirmed our decision to affirm the Examiner’s
rejections of claims 1, 9, 15, 21, 24, 26, 31, 39, 45, and 47 under 35 U.S.C.
§ 102(b) as anticipated by Steigerwald ’090 (Rejection I) and claims 22, 23,
25, and 27–30 under 35 U.S.C. § 103(a) over Steigerwald ’090 and the
knowledge of one of ordinary skill in the art (Rejection II). See, e.g., Vicor

1 The Decision on Rehearing, mailed May 2, 2016, did not modify the
affirmance of the Examiner’s rejections.
2 U.S. Patent No. 5,274, 539, issued December 28, 1993 (“Steigerwald
’539”).
3 Abraham I. Pressman, “Switching and Linear Power Supply, Power
Converter Design” (1977) (“Pressman”).
4 Admitted Prior Art said to be contained in U.S. Patent No. 5,999,417
(“APA”). Right of Appeal Notice, mailed May 18, 2012 (“RAN”), 5.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

3
Corp., 869 F.3d at 1324–26. However, the Federal Circuit vacated and
remanded our decision on rejections III–IV (affirming the Examiner’s
rejections of claims 49 and 50) “for reconsideration of whether it would
have been obvious to incorporate Pressman’s switching regulators into
Steigerwald’s circuit” including “reconsider[ing] the weight to be accorded
SynQor’s proffered secondary considerations evidence in the SynQor
Patents’ respective reexamination,” and “include analysis of whether there is
a nexus between the secondary considerations evidence and the switching
regulators.” Vicor Corp., 869 F.3d at 1326.
The Federal Circuit has held that Steigerwald ’090 incorporates by
reference Steigerwald ’539 and the combined (single) reference anticipates
claim 20 of the (related) ’190 patent. See, e.g., Vicor Corp. v. SynQor, Inc.,
603 F. App’x 969, 975 (Fed. Cir. 2015). After careful reconsideration of
“whether it would have been obvious to incorporate Pressman’s switching
regulators into Steigerwald’s circuit,” as directed by the Federal Circuit, we
continue to agree with the Examiner that, in fact, it would have been obvious
to one of ordinary skill in the art to have combined the teachings of
Steigerwald ’090 (incorporating Steigerwald ’539) and Pressman.
As we previously stated, “[t]he Examiner has found that Steigerwald
’090 does not expressly teach switching regulators” but “Pressman is found
to describe the use of switching regulators at the output stage” and that it
would have been known to one of ordinary skill in the art that “higher
efficiencies can be achieved” by combining the teachings of Steigerwald
’090 (incorporating Steigerwald ’539) and Pressman. Decision 12 (citing
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

4
Req. Comments 18, 20;5 Pressman 81). Patent Owner argues that
“switching regulators have an inductor in the current path that is
incompatible with the teaching of the Steigerwald patents and would render
the combination unsuitable for the intended use.” Decision 12–13 (citing
PO App. Br. 286). We continue to be unpersuaded by Patent Owner’s
argument.
Even assuming Patent Owner’s contention to be correct that the
switching regulators of Pressman would have included inductance, we are
still not persuaded by Patent Owner’s argument that the alleged inductance
would have rendered Steigerwald ’090/’539 unsuitable. Patent Owner
argues that Steigerwald ’539 discloses “that the leakage inductance . . . must
be as low as possible.” PO App. Br. 29. Even assuming Patent Owner’s
contention to be correct that Steigerwald ’090/’539 discloses that inductance
must be as low as possible, we are still not persuaded by Patent Owner’s
argument because one of skill in the art would have understood that as low
as possible differs from “not at all.”
In actuality, Steigerwald ’539 (incorporated by reference into
Steigerwald ’090) explicitly discloses that prior art power systems include
an “energy-storage capacitor Cout, having an equivalent series resistance
ESR and an equivalent series inductance ESL associated therewith.”
Steigerwald ’539 2:49–52. Hence, Steigerwald ’539 (incorporated by
reference into Steigerwald’090) discloses the presence of “inductance” in

5 Third Party Requester Comments Per 35 U.S.C. §§ 314(b)(2) and
37 C.F.R. § 1.945, filed November 30, 2011.
6 Synqor, Inc.’s Appeal Brief, filed August 20, 2012.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

5
prior art systems and does not disclose the preclusion of all inductance (or
the “unsuitability” of any inductance), as Patent Owner appears to contend.
Also, Steigerwald ’539 discloses an embodiment in which an output
path includes an “energy-storage capacitance” and “ESL [i.e., series
inductance] of the energy-storage capacitor Ce.” Steigerwald ’539 3:50,
61–62. Here again we note that, contrary to Patent Owner’s argument,
Steigerwald ’539 does not disclose the absence of inductance or that the
presence of any inductance would render the power system “unsuitable” for
its “intended purpose.” Instead, as noted above, Steigerwald ’539 actually
discloses the presence of inductance in the output path and does not disclose
this inductance renders the system “unsuitable” at all.
We also note that Pressman discloses a switching regulator that
operates at a frequency range such that “inductors . . . are small.” Pressman
289. Patent Owner does not demonstrate sufficiently that the “small”
inductor of Pressman is large enough to render “unsuitable” the system of
Steigerwald ’090/’539 that allegedly has inductance “as low as possible,”
but not completely absent. Given the evidence, one of skill in the art would
have understood that the “small” inductor of Pressman would have been
sufficiently “small” to avoid problems of “unsuitability” in Steigerwald
’090/’539 because Steigerwald ’090/’539 explicitly discloses embodiments
that includes the presence of inductance in a system that is not disclosed as
being “unsuitable.”
Patent Owner argues that “Dr. Schlecht and Dr. Dickens reached the
same conclusion.” PO App. Br. 29. Dr. Schlecht and Dr. Dickens testify
that “a switching regulator [of Pressman] has a series inductor (the very
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

6
thing that Steigerwald teaches to avoid).” Declaration of James Dickens,
Ph.D. in Support of SynQor’s Preliminary Injunction Motion, filed October
31, 2011 (“Dickens Decl.” or “Dickens Declaration”) ¶ 28; see also
Declaration of Martin F. Schlecht, Sc.D. Per Rule 1.132, filed May 2, 2012
(“Schlecht Decl.” or “Schlecht Declaration”) ¶ 149. However, as noted
above, neither Dr. Schlecht nor Dr. Dickens provides sufficient
corroborating evidence that a “series inductor” is, in fact, “the very thing
that Steigerwald teaches to avoid.” Rather, as explained above, Steigerwald
actually discloses the presence of inductance. Therefore, we determine that
the testimony of Dr. Schlecht and Dr. Dickens in this regard is to be given
little weight.
Hence, upon reconsideration of this issue in accordance with
instructions from the Federal Circuit, we conclude that the system of
Steigerwald ’090/’539 would not have been rendered “unsuitable” by the
presence of inductance in the output path (even assuming that switching
regulators of Pressman would have somehow included inductance, as Patent
Owner alleges).
Further pursuant to instructions from the Federal Circuit, we proceed
to provide further “analysis of whether there is a nexus between the
secondary considerations evidence and the switching regulators at issue . . .
for rejection III” and for rejection IV. Vicor Corp., 869 F.3d at 1326. Patent
Owner argues that a “jury determined that the accused products infringed the
claims,” that “the infringing products are strong evidence of commercial
success,” that “the end products are reasonably commensurate with the
claimed invention,” and that “[t]herefore, the issue of nexus is presumed.”
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

7
PO App. Br. 38. Patent Owner does not assert a specific feature recited in
claim 1 (or any of the claims) as the specific relied upon “nexus” between
the claimed invention and the alleged commercial success. Patent Owner at
best states “the end products are reasonably commensurate with the claimed
invention.” Id. at 38. In any event, claim 1, alleged to be “infringed” by
products supposedly experiencing commercial success, recites features
deemed to be anticipated by Steigerwald ’090/’539. That is, all evidence of
secondary considerations stem from what was known in the prior art (i.e.,
Steigerwald ’090/’539) such that there can be no nexus. See Tokai Corp. v.
Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
For at least this reason, we are not persuaded by Patent Owner’s
argument.
Patent Owner further states that “UBC datasheets disclose the ‘non-
regulating isolation stage’ . . . of the patent claims.” PO App. Br. 40. To the
extent that Patent Owner argues that the specific “non-regulating isolation
stage” in claim 1 establishes the required “nexus” between the claimed
invention and the alleged commercial success, we are still not persuaded by
Patent Owner’s argument at least because this feature has been deemed to be
anticipated by Steigerwald ’090/’539.
Patent Owner argues that “Dr. Schlecht testified that the adoption of
Unregulated IBA as claimed (i.e., embodied by the infringing UBCs . . .)
was a direct result of the . . . benefits promised and delivered by the claimed
invention.” PO App. Br. 53. Patent Owner’s expert (Martin F. Schlecht,
Sc.D.) testifies that he “estimated the commercial success of Unregulated
IBA,” identified “numerous end products that use unregulated bus
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

8
converters,” that “the unregulated bus converters correspond to the ‘non-
regulating isolation stage’ in the asserted claims,” and that “[u]nregulated
IBA has captured a huge share of the market.” Declaration of Martin F.
Schlecht, Sc.D. Per Rule 1.132, filed October 31, 2011 (“Schlecht Decl.
2011” or “Schlecht Declaration 2011”) ¶¶ 39, 40, 41, 45. In other words,
Patent Owner appears to argue that various objective indicia of non-
obviousness, including, for example, commercial success, were due to the
claimed feature of “IBA” technology, which “correspond[s] to the ‘non-
regulating isolation stage’ in the asserted claims.” Schlecht Decl. 2011 ¶ 41.
However, as previously indicated, the Federal Circuit has held that
Steigerwald ’539 (incorporated by reference into Steigerwald ’090) discloses
(and anticipates) the claimed “IBA” technology, which Patent Owner
appears to rely on as a “nexus” between the claimed invention and each of
the alleged objective indicia of non-obviousness. It would not make logical
sense to conclude that the “IBA” system disclosed by Steigerwald ’090/’539
was somehow not disclosed by Steigerwald ’090/’539 because Patent
Owner’s subsequent “IBA” system allegedly enjoyed commercial success,
praise, or widespread use in the industry. All evidence of secondary
considerations stem from what was known in the prior art (i.e., Steigerwald
’090/’539) so that there can be no nexus. See Tokai Corp. v. Easton Enters.,
Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
Therefore, in accordance with instructions from the Federal Circuit,
we continue to affirm each of the Examiner’s rejections of the disputed
claims.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

9
DECISION
We continue to affirm the Examiner’s rejection of claims 1, 9, 15, 21,
24, 26, 31, 39, 45, and 47 under 35 U.S.C. § 102(b) as anticipated by
Steigerwald ’090 (Rejection I), claims 22, 23, 25, and 27–30 under 35
U.S.C. § 103(a) over Steigerwald ’090 and the knowledge of one of ordinary
skill in the art (Rejection II), claim 49 under 35 U.S.C. § 103(a) over
Steigerwald ’090 and Pressman (Rejection III), and claim 50 under 35
U.S.C. § 103(a) over Steigerwald ’090, Pressman, and APA (Rejection IV).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

10
Patent Owner:

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON VA 20191

Third Party Requester:

SMITH BALUCH LLP
100 M STREET SE
SUITE 600
WASHINGTON, DC 20003