Ex Parte 5879958 et al

Patent Trials and Appeals Board

Jun 26, 2014

90011739 - (R) (P.T.A.B. Jun. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/011,739 06/13/2011 5879958 17502.00076.US64 9997 30827 7590 05/20/2015 MCKENNA LONG & ALDRIDGE LLP 1900 K STREET, NW WASHINGTON, DC 20006 EXAMINER MCNEIL, JENNIFER C ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/20/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte EIDOS DISPLAY, LLC Appellant ________________ Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 Technology Center 3900 ________________ Before HOWARD B. BLANKENSHIP, STANLEY M. WEINBERG, and JEREMY J. CURCURI, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING On August 27, 2014, Patent Owner Eidos Display, LLC (“Eidos”) filed a request for rehearing (“Req. Reh’g”) under 37 C.F.R. § 41.52 of our Decision (“Dec.”) affirming the Examiner’s finding that claims 2, 3, and 6 do not comply with the written description requirement of 35 U.S.C. § 112, first paragraph and affirming the Examiner’s rejection of those claims under that Section. We grant rehearing to the extent we consider Eidos’s contentions; but we decline to change our Decision. Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 2 I. RELATED PROCEEDINGS Our Decision stated that Eidos had informed us about a decision of the U.S. District Court for the Eastern District of Texas holding claim 1 of the ’958 Patent is invalid on the ground of indefiniteness (“the Texas litigation”) and that Eidos had appealed that holding to the U.S. Court of Appeals for the Federal Circuit. Eidos has now informed us that the Court of Appeals reversed the decision of the District Court in Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360 (Fed. Cir. 2015). Eidos has also informed us that prior to the Court of Appeals’ decision, the District Court entered an order that supports Eidos’s contention on appeal. See Req. Reh’g 7-11. We discuss this District Court order below. II. ISSUES RAISED IN THE REQUEST FOR REHEARING A. Whether we should change our Decision in view of recent decisions by the Court of Appeals and in view of the District Court decision in the Texas litigation Our Decision agreed with the Examiner that there is insufficient support in the Specification for claims 2 and 3 (Dec. 8) because the Specification provides only one example of a laminate, and fails to provide sufficient support that the claimed second metal film can be made of an unlimited number of metal layers, can be made from any metals in the periodic table, and can be made of any combination of metals. Dec. 5. We also agreed with the Examiner that a single example of Cr and Al is not sufficient to claim the entire genus of all metals in any combination or any Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 3 number of layers in the laminate greater than two metal layers. Id. We also concluded that Eidos “fail[ed] to provide any evidence that the Specification expressly contemplates more than a two-layer laminate.” Dec. 6. Eidos contends we should change our ruling in view of the Texas litigation District Court order and the following two cases: Alcon Research Ltd. v. Barr Laboratories, Inc., 745 F.3d 1180 (Fed. Cir. 2014) and ScriptPro, LLC v. Innovation Associates, Inc., 762 F.3d 1355 (Fed. Cir. 2014). 1. The Alcon case Eidos contends the District Court in Alcon improperly “used the same logic as the Examiner and the Board in this case, finding a failure to meet the written description requirement because ‘[t]he working examples are limited to a single . . . compound’ such that other compounds were not properly described.” Req. Reh’g 2 (quoting the District Court’s opinion, Alcon Research Ltd. v. Barr Labs. Inc., 837 F.Supp. 2d 364, 381 (D. Del. 2011)). Eidos concludes the District Court’s reasoning “was rejected by the Federal Circuit and it reversed the district court’s holding that a single example is insufficient to meet the written description requirement.” Req. Reh’g 2 (emphasis omitted). We disagree with Eidos’s characterization of the Court of Appeals’ decision and the bases upon which the Court of Appeals ruled. First, the District Court’s reference to a “single compound” was made in the context and course of that court’s conclusion that the Specification did not meet the enablement requirement of § 112, rather than the written description requirement. Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 4 Second, when discussing both the enablement and written description issues, the Court of Appeals rejected the District Court’s “single compound” finding. For example, when discussing the enablement issue, the Court found “the patents disclose exemplary compositions within the scope of the claims, detail how those example compositions are prepared from commercially-available ingredients . . . [and] also identify the various prostaglandins and PECOs that can be used and a range of suitable concentrations for both components, including narrow preferred embodiments.” 745 F.3d at 1189. When discussing the written description issue, the Court of Appeals found that one of the patents at issue provides exemplary formulations that embody the claimed invention, reciting concentrations of every ingredient . . . [and] preferred concentrations and thirty-two specifically preferred examples of those prostaglandins. It describes various types of PECOs that may be used in the invention, again with preferred types and concentrations. And the patent describes the various formulation parameters, including osmolality and pH, that may be selected when practicing the invention. 745 F.3d at 1191 (internal citations omitted). Accordingly, the Court of Appeals did not reverse because the Specification disclosed only a single compound and we therefore conclude Alcon neither supports Eidos’s contention nor requires us to change our Decision. 2. The ScriptPro case Although ScriptPro involved a District Court holding regarding the written description requirement, the District Court’s invalidating holding was the opposite of what is involved in the present case. In ScriptPro, the District Court invalidated claims because the claims did not include more of Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 5 the structural elements that were disclosed in the Specification - rather than, as here, where we concluded the Specification does not include sufficient elements to support a claim. More specifically, ScriptPro’s Specification taught using a plurality of sensors; but the claims at issue did not require sensors. 762 F.3d at 1357. That is, the issue was whether the written description disclosed a purportedly under inclusive claim, rather than as here, whether the written description discloses an overly broad and insufficiently supported claim. The Court held that the absence of sensors from the claims did not mean those claims were unsupported by the written description as a matter of law because “[a] specification can adequately communicate to a skilled artisan that the patentee invented not just the combination of all identified features but combinations of only some of those features (subcombinations) - which may achieve stated purposes even without omitted features.” 762 F.3d at 1359. Accordingly, we conclude ScriptPro is inapposite to the conclusion we have reached and does not require a different result. 3. The District Court’s order Eidos contends the District Court in the Texas litigation held the specification “expressly calls a laminate structure a ‘metal film,’” discloses multiple layers formed by more than one element, and did not limit the multiple layers to only two layers. Req. Reh’g 7 (internal quotations omitted). Eidos contends we should follow the court’s construction. We disagree. Eidos quoted part of the District Court’s opinion; but omitted the Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 6 part that explained the meaning of “laminate structure.” The full discussion is: the specification expressly calls a laminate structure a “metal film” and discloses multiple layers formed by more than one element: “a second metal film 64 of a laminate structure comprising a conductive film 62 made, for example, of Cr and a conductive film 63, made, for example, of Al is formed as shown in FIG. 16. Eidos Display, LLC v. AU Optronics Corp., No. 6:11cv201 LED-JDL, 2013 WL 1559729, at * 8 (E.D. Tex. Apr. 12, 2013). Based on its truncated quotation of the District Court’s opinion, Eidos misinterprets its import. According to Eidos, the District Court “found that the specification did in fact disclose multiple layers when it used the term ‘laminate’ and it did not limit the multiple layers to only two layers.” Req. Reh’g 7. Rather, as the above quote shows, the District Court found a laminate structure having only two conductive films and made no findings regarding the possibility of additional layers. We therefore neither consider the District Court’s claim interpretation nor extrapolate from it in the manner suggested by Eidos. 4. Claim 6 For claim 6, Eidos contends the Board’s affirmance of the rejection conflicts with Alcon and ScriptPro “which hold that the law does not require multiple examples to comply with the written description requirement,” “as confirmed by Eidos (the district court’s claim construction analysis . . .).” Req. Reh’g 7-8. We disagree for the reasons stated above. Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 7 B. Whether we should remand to the Examiner for consideration Of Alcon, ScriptPro, and other evidence After the ACP, Eidos states the Examiner refused to enter a response “explaining that forming multiple layers was well-known in the semiconductor industry” and the Director twice denied its petitions “for continued reexamination and [to] reopen the record so that Eidos could provide evidence.” Req. Reh’g 9. Eidos also contends the Examiner erroneously refused to enter its Reply Brief because it contained new evidence consisting of the District Court’s decision in the Texas litigation, which we have considered above. Eidos contends a remand “is now required by Alcon Research . . . so evidence may be taken” on the “critical question” of knowledge of one of ordinary skill in the art (Req. Reh’g 8-9) and so the Examiner “can decide the applicability” of Alcon, ScriptPro, and the District Court’s decision in the Texas litigation. Req. Reh’g 10. We decline to remand because as we have discussed above the aforesaid court decisions are inapposite and because, as Eidos admits, the Director has twice denied petitions to reopen the record for the presentation of evidence. III. CONCLUSION We have granted rehearing to the extent we have considered Eidos’s arguments; but we decline to change our disposition of the case. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 8 REHEARING DENIED msc Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,958 9 Patent Owner: McKENNA LONG & ALDRIDGE LLP 1900 K STREET, N.W. WASHINGTON, DC 20006 Third Party Requester: McCLURE, QUALEY & RODACK, LLP 3100 INTERSTATE NORTH CIRCLE SUITE 150 ATLANTA, GA 30339