Ex Parte 6,590,235 et al

Patent Trial and Appeal Board

Sep 18, 2013

95001733 (P.T.A.B. Sep. 18, 2013)

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. 95/001,702 09/08/2011 7072190 X43410 9500 7055 7590 04/10/2014 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 04/10/2014 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 ____________________ VICOR CORPORATION Requester v. SYNQOR, Inc. Patent Owner and Appellant ____________________ Appeal 2014-001733 Reexamination Control 95/001,702 1 Patent No. US 7,072,190 B2 2 Technology Center 3900 ____________________ Before JAMES T. MOORE, STEPHEN C. SIU, and DENISE M. POTHIER, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner SynQor appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-38 as set forth in the Right of Appeal Notice (“RAN”) mailed November 26, 2012. Requester Vicor Corporation 1 Filed by Vicor Corporation on September 8, 2011. 2 Issued July 4, 2006 to Martin Schlecht and assigned to SynQor, Inc. (the “’190 patent”). The ’190 patent issued from Application 10/812,314, filed March 29, 2004. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 2 filed a Respondent Brief on March 26, 2013. The Examiner mailed an Examiner’s Answer on June 11, 2013, which incorporated the RAN by reference. The Patent Owner filed a Rebuttal Brief on July 11, 2013. Oral argument was conducted before a panel of this Board on March 19, 2014 in combined Reexamination Proceeding Appeals 2014-001167 and 2014- 001173 and a transcript of the proceedings will be made of record. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We REVERSE. Much litigation has occurred concerning this and related patents. The Patent Owner observes that the Federal Circuit “upheld the District Court’s decision finding validity of all challenged claims of U.S. Patent 7,072,190.” 3 Invalidity in an infringement action can be an affirmative defense raised by a defendant. The District Court can find claims “not invalid” on those grounds raised, but the issue presently faced upon the reexamination proceeding appeal is different; more specifically, whether the challenged claims are patentable. To the extent the evidence relied upon during litigation and decisions of the District Courts and Federal Circuit are informative or persuasive, we have considered them as such. At this stage, the Examiner has concluded that the claims are not patentable, and it lies with the Appellant Patent Owner to argue persuasively otherwise. The ’190 Patent concerns power conversion. The claims generally describe a two-stage direct current to direct current power conversion system that has two separate stages - one for isolation and one for the actual voltage 3 Patent Owner Rebuttal Brief 1, hereinafter “PO Reb. Br. 1” Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 3 conversions needed. The combination of these separate stages is said to provide improved efficiency, size, and cost. PO App. Br. 2. Claim 1 is representative, and reproduced below, with paragraphing added for sake of clarity. 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. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 4 EVIDENCE OF RECORD The Examiner relies upon the following prior art in rejecting the claims on appeal: Steigerwald US 5,274,539 December 28, 1993 Steigerwald US 5,377,090 December 27, 1994 J.A. Cobos & J. Uceda, “Low Output Voltage DC/DC Conversion” 0-7803- 1328-3/94, IEEE (1994). Abraham I. Pressman, Switching and Linear Power Supply Power Converter Design, Hayden Book Company, New Jersey (1977). THE REJECTIONS I. Claims 20-23, 27, 29, 30, 32 and 33 stand rejected under 35 U.S.C. §102 (b) as anticipated by Steigerwald ’090 and Steigerwald ’539. II. Claims 24-26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090. III. Claims 1, 5-8, 11-13, 17, 18, 24, 28, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Steigerwald ’539, and Cobos. IV. Claims 2-4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Steigerwald ’539, Cobos, and Pressman. V. Claims 9, 10, 14-16, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Steigerwald ’539, and Cobos. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 5 VI. Claims 1-33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cobos and Pressman. VII. Claims 34-38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cobos and Pressman. VIII. Claims 35-38 stand rejected under 35 U.S.C. § 103(a) over Steigerwald ’090, Steigerwald ’539, Admitted Prior Art, and Pressman. GENERAL ISSUES Are the cited references properly combinable? The Patent Owner asserts legal issues with the anticipation combination of the two Steigerwald references, and further technical issues, which render the remaining art unsuitable for combination. The Requester asserts the combination is proper by incorporation, and that the technical issues would be easily resolved by one of ordinary skill in the art. Is the evidence of secondary considerations sufficient to overcome the evidence of obviousness that may exist? The Patent Owner relies heavily on the litigation evidence. The Requester doubts its value. I. The Rejection of Claims 20-23, 27, 29, 30, 32 and 33 as anticipated under 35 U.S.C. §102 (b) Steigerwald '090 and Steigerwald ’539. Claim 20 reads as follows, with paragraphing added for clarity: 20. 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 Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 6 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; and a plurality of non-isolating regulation stages, each receiving the output of the isolation stage and regulating a regulation stage output. This rejection was adopted from the Request, pages 8-26. RAN 3. In short, the Examiner has found that Steigerwald '090 teaches an extension of Steigerwald ’539, in which multiple output voltages may be provided. This was found to be accomplished by replacing the single regulation stage 30, which in the ’539 Patent is upstream of the isolation stage, with multiple regulation stages that are downstream of the isolation stage. Because each regulation stage may regulate to a different output voltage, the Requester and Examiner conclude that multiple output voltages may be provided using only a single non-regulating isolation stage. Steigerwald ’090 2:44-50. The first question raised is whether this rejection is a proper rejection. The Patent Owner asserts that the combination of Steigerwald ’090 and Steigerwald ’539 is improper because there is no proper incorporation by reference, and that a composite embodiment created by the combination fails to describe an embodiment, which anticipates the claims. PO Reb. Br. 3. We first observe that the Steigerwald ’090 uses the following language to incorporate the ’539 Patent: This application is related to commonly assigned U.S. Pat. No. 5,274,539 of R. L. Steigerwald and R. A. Fisher, issued Dec. 28, 1993, and to commonly assigned abandoned U.S. patent application Ser. No. 811,631 of R. L. Steigerwald, filed Dec. 23, 1991, both of which are incorporated by reference herein. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 7 Steigerwald ’090 1:6-12. Inasmuch as the text of the documents can be said to be “incorporated” we will for purposes of discussion presume that this language can be thought of as sufficient to bring the raw text of the parent applications into the continuation-in-part application. However, the incorporation is insufficient to go beyond that, as it does not identify any particular sections or specific subject matter to be associated with particular embodiments of the Steigerwald ’090 description. We disagree with the Requester that Steigerwald ’090 is an “extension” of an example in Steigerwald ’539. Request 9. The Requester states that the “extension” is accomplished by “replacing” the single regulation stage 30, which in the ’539 Patent is upstream of the isolation stage, with multiple regulation stages that are downstream of the isolation stage. Because each regulation stage may regulate to a different output voltage, the Requester urges that multiple output voltages may be provided using only a single non-regulating isolation stage. To this end, the Requester cited Steigerwald ’090, 2:44-50. Steigerwald ’090 at column 2:44-50 does not really describe what the Requester states it does. We reproduce the entire paragraph found at Steigerwald ’090, 2:41-56 below. Output voltages + V1, +V2, . . . are obtained from the positive dc bus voltage via series regulators 50, 51 ... , respectively, to a solid-state phased-array radar T /R module 54. Output voltages -V1, - V2, ... - Vm are obtained from the negative dc bus voltage via series regulators 60 and 61,respectively, to solid-state radar T/R module 54. For an exemplary T/R module, + V1 is a pulsed voltage, and the remaining output voltages + V2 ... + Vn and - V2 . . . ---Vm are bias voltages Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 8 used for control and receive functions. In operation, switching devices Qa and Qb are gated 180° out-of-phase with a 50% duty cycle by drive means 55. Hence, because one of the switching devices is always conducting, the energy-storage capacitor Ce is always transformer .. coupled to the positive and negative dc output buses. We are unable to discern in this cited section where Steigerwald ’090 teaches the urged swapping around the order and number of these specific components in the recited manner. It appears to us that the Requester has taken the isolated teaching of a discrete embodiment of Steigerwald ’539 exchanging a MOSFET for a diode, and modified it with description from a different embodiment from Steigerwald ’090, without an express or even implied disclosure of this modification. We are in agreement with the position of the Patent Owner, that: [t]he assertion that Steigerwald ’539 sets up an alternative embodiment as a modification to Steigerwald ’090, Fig. 1 is contrary to the express purpose of both patents: which is primarily to supply the energy pulse for a radar T/R module (illustrated in Steigerwald ’539, Fig. 2). The ordinary artisan could not reasonably conceive that the text of the Steigerwald ’539 Patent could modify the later-filed Steigerwald ’090 as asserted.” PO App. Br. 11. Steigerwald ’539, to the extent it is incorporated, is a separate, discrete embodiment and does not modify a later embodiment in Steigerwald ’090. In order for a reference to be anticipatory, it must disclose, either explicitly or implicitly, every element of the claim. See, In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). As this combination does not, we reverse this rejection. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 9 II. The Rejection of Claims 24-26 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald 090. This rejection was adopted from the Request, pages 26-30. RAN 4. It extends the rejection to these dependent claims, which recite specific voltage levels, stating that the voltage levels would have been obvious. To the extent this rejection originates under a different statutory section, and there is some reasoning applicable under an obviousness standard as opposed to solely under an anticipation standard, we address this rejection below. The Requester submitted the declaration of Dr. Patrizio Vinciarelli, which we have carefully reviewed. It states, from the indicated point of view of one of ordinary skill in the art, that: (1) Steigerwald ’090's basic teaching - to use a single non-regulating isolation stage to supply a multiplicity of non-isolating regulation stages so as to provide isolated and regulated power to multiple loads having different voltage requirements without multiple isolation stages - could be applied to any power system with a multiplicity of loads requiring different voltages. Such power systems are included computer and telecommunication equipment, in which digital logic circuits depend upon a multiplicity of different voltages on a common circuit board. Vinciarelli Declaration, para. 8. (2) Steigerwald ’090's teaching to use MOSFET synchronous rectifiers in some embodiments would be applicable, and advantageous, in any power system in which high efficiency was important, since synchronous rectifiers could be used to reduce the forward voltage drop and power loss that was inherent in diode rectifiers. In 1997, such power systems Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 10 included circuit boards for computer and telecommunication equipment. Vinciarelli Declaration, para. 9. (3) In 1997, it was common for the main DC power bus in telecommunication equipment to have a voltage in the range of 36-75 volts (with a nominal level of 48 volts). Vinciarelli Declaration, para. 10. (4) In 1997, it was common for different digital logic circuits to require power at 12V, 5V and 3.3V. Vinciarelli Declaration, para. 11. The Requester urges, therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the Steigerwald conversion in electronic applications, and to use apply common voltages. Request 28. There is not in our view a significant dispute in the record about above findings 3 and 4. We focus on findings 1 and 2, which are in dispute. Patent Owner observes that Steigerwald ’090 relates to a power converter with multiple output voltages to be applied to a phased array radar module. A goal of Steigerwald was to provide a power system of small volume. Schlecht Decl., para. 21; Dickens Decl., paras. 11-13. According to the Patent Owner, an energy storage capacitor connected to input terminals, rather than to the load terminals, can be of smaller size, because it is at a high voltage, and an isolation stage is used to reduce that voltage to a DC bus. The voltage on the DC bus is further reduced by series regulators, 50, 51, 60 and 61, which are illustrated in Steigerwald ’090’s Figure 1 as linear regulators. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 11 The Patent Owner further points out that a feature of the Steigerwald ’090 circuit was that there be no inductors in the current paths of the circuit. Patent Owner Response, January 17, 2012 at 8. The Patent Owner further asserts that Steigerwald ’090, in its attempt to make the power module have a very "small volume," Steigerwald ’090, col. 1:37, operates at "high frequencies," Steigerwald ’090, col. 3:24. As a result of the: 1) high-voltage energy storage capacitor instead of a low- voltage capacitor, 2) lack of series inductors and 3) high [switching] frequencies, the power module is small enough to "be embedded in the T/R module with the load ...," Steigerwald ’090, col. 3:26-29. Moreover, Steigerwald ’090 memorializes the lack of inductors in its claims, which recite a negative limitation multiple times. We find we agree with the position of the Patent Owner that one of ordinary skill in the art would not be led, based upon Steigerwald ’090 to modify it as the present rejection has done. Of particular interest and persuasive value is the prosecution history of Steigerwald ’090, which occurred long before this litigation and reexamination began: As amended, the claims are clearly patentable over the references. In short, Shimpo et al. describes a plurality of synchronized switching regulators. The claimed arrangement has no switching regulator at all; it has the switched capacitance multiplier, cascaded with linear voltage regulators. It is noted that such switching regulators include series inductors, which adversely affect the pulse response by their inductance, which introduces impedance into the current path. The switching regulator achieves its low output impedance by virtue of feedback, and the impedance rises as the frequency of the components of the pulse load increase, because the loop bandwidth decreases with increasing frequency. The claimed arrangement recites paths "without Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 12 inductors" (although it is recognized that all paths may have some inherent inductance), to emphasize that the pulse operation is inherent in the low impedance of the recited structure over a substantial bandwidth. Exh. 93, File History of Steigerwald ’090, Amendment, May 19, 1994, page 6. It is apparent from the above that avoidance of induction in the current path was critical to success in Steigerwald ’090. Switching regulators would add inductance. We therefore disagree that one of ordinary skill in the art would do which is almost expressly excluded from the Steigerwald ’090 reference, even though an alternative embodiment in Steigerwald ’539 might seem to suggest a substitution in another location. That substitution is before the capacitance multiplier, and therefore the inductor would not be within the multiplied current path. We agree with the Patent Owner’s position in the response. January 17, 2012 Response, page 19. We expressly reject the Examiner’s finding and conclusion that “it is eminently reasonable to believe that a person of ordinary skill in the art would see exactly how the converters of the ’539 Patent relate to the converter of the ’090 Patent.” RAN 9. Rather, one of ordinary skill in the art would have recognized the problem with the substitution in the downstream location. We also disagree with the underlying finding in the rejection that the reason for making the modifications is to improve efficiency. In the abstract, synchronous rectifiers can be thought of as increasing efficiency in some uses. However, we are persuaded that the embodiment of the ’090 Patent could lose efficiency as a result of such a substitution. Among Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 13 other issues, the efficiency losses includes an increase in circuit complexity, loss in board space, increased cost due to the added gate control circuitry, and increased dissipation. See, e.g. the Schlecht Decl. Paras 27- 28. Accordingly, we are persuaded that the cited references would not have been combined by one of ordinary skill in the art in the manner suggested by the Requester and adopted by the Examiner. Moreover, even would one of ordinary skill in the art had a reason to combine the references, there is significant evidence of secondary considerations provided by the Patent Owner in the record. We must consider that and reweigh the ultimate conclusion as to whether the subject matter would have been patentable under 35 U.S.C. § 103. In deciding questions of obviousness, we consider all four Graham factors including objective evidence of non-obviousness. A prima facie case made by the Examiner is not a conclusion on the ultimate issue of obviousness. The ultimate conclusion of obviousness is a legal conclusion to be reached after weighing all of the evidence on both sides. Apple Inc. v. ITC, 725 F.3d 1356, 1365 (Fed. Cir. 2013). The Examiner stated that the evidence submitted was considered, but then adds the following comment: Patent Owner's response is heavily relied [sic - reliant?] on litigation evidence, which might or might not be the same evidence as in the court since Patent Owner is relying on the court itself as evidence. Patent Owner has repeatedly referred to alleged conclusions of the trial witnesses, the jury, and the District Court Judge without providing underlying evidence that these conclusions are allegedly based on. It is noted that the jury's verdict is not evidence and as stated in MPEP 2686 that Court decision will have no binding effect Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 14 on the examination of the reexamination unless it is a final Court holding of claim invalidity/unenforceability. RAN 7-8. We disagree with this blanket statement that the affirmed adjudication of infringement cannot constitute informative or persuasive evidence of secondary considerations within the realm of making a patentability determination under § 103. The ’190 Patent was among those asserted in SynQor, Inc. v. Artesyn Technologies, Inc. et al., No. 2:07-CV-497 (E.D. Tex.) against the Requester and others. After a jury trial, the Court enjoined the Defendants from infringement of the ’190 Patent and others. PO App. Br. 1. Subsequently, the Court of Appeals for the Federal Circuit in a decision dated March 13, 2013, affirmed the decision of the Texas District Court. Appeal Nos. 2012- 1069, -1070, -1071, and 1072. Additionally, the Federal Circuit denied the defendants' Petition for Rehearing and Rehearing En Banc on May 16, 2013. The Federal Circuit also denied the defendant's Motion to Stay the Mandate on May 28, 2013. The Mandate issued on May 30, 2013, making the Decision final. PO Reb. Br. 1. Turning to the jury verdict form (Exhibit A20), we observe that the jury determined that (1) claims 2, 8, and 19 were infringed by the 42R8295 product of Bel Fuse and (2) Artesyn, Astec, Bel Fuse, Cherokee, Delta, Lineage, Murata, Murata Power Solutions, and Power One induced and contributed to infringement of claims 2, 8, 10, and 19. A20, pp. 9-26. We are informed that millions of infringing units were sold, and that the end products are commensurate in scope with the instant claims. PO Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 15 Reb. Br. at 22-23 and 26-28. We are also informed that there is no substantially non-infringing use for the system, and conversely that there are no non-infringing alternatives, resulting in $80 million in lost profits to SynQor. Id. at 25. See also the Schlecht Declaration, A1, paras 59-63. Returning to the claimed subject matter, claims 24, 25, and 26 depend from claim 20 and add particular voltage requirements. Patent Owner argues that there is a nexus between the claims at issue and the objective evidence presented. PO App. Br. 23. Requester argues that the objective evidence should not be considered and is not convincing because unregulated intermediate bus architecture is not recited in the claims Resp. Br. 21. We have, inter alia, reviewed the technical documents A 24-A75 and A105-201 which include data sheets for the various products found to infringe the ’190 Patent. As an example, we turn to Bel Fuse’s product data sheets, documents A111 et seq. It is apparent that they describe products intended for configuration into a circuit such as that of claims 1 and 20. For example, 07CM-20S30S (A113) describes an unregulated output isolated bus converter “ideal for intermediate bus architecture” for powering multiple downstream non-isolated point-of-load converters Document A113, page 1. They deliver output voltages of 8 and 12 volts from a 48 volt input. Id. Instant claim 24 recites an input of 36 to 75 volts, and claim 25 recites an output of about 12 volts. Our review of these documents, in conjunction with the District Court finding of infringement, contributory infringement, and/or induced Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 16 infringement of claims 2, 8, 10, and 19 of the ’190 Patent and the jury award of lost profits suggest that claim 20, and its dependent claims, is reasonably commensurate in scope with the products at issue in the trial. The fact that claims 1 and 20 do not recite the particular set of words “intermediate bus architecture” does not persuade us of a lack of nexus between the instant claims and the ’497 litigation accused products. We therefore expressly disagree with the Examiner and Requester that the commercial success is lacking nexus. Resp. Br. 21. The Patent Owner next argues that objective evidence establishes commercial success of the claimed invention. PO App. Br. 25. The Requester argues that the commercial success achieved by the ’497 litigation defendants is not a result of the ’190 Patent claimed subject matter because: Even with an intermediate bus, Unregulated IBA was spurred by evolving market forces that had nothing to do with the SynQor patents. In particular, the availability of low-cost, wide-input non- isolating Point of Load ("POL") converters was important for the use of the technique. As explained by Robert White in 2003, for example: "The drivers for the wide adoption of the Intermediate Bus Architecture are: The large number of supply voltages needed in systems and on individual circuit cards in today's systems and the rapidly decreasing cost of nonisolated, point-of-Load (POL) dc-dc converters. For these reasons, the claims of the '190 Patent are not coextensive with products sold… Resp. Br. 23. The Patent Owner argues that devices covered by the claims replaced previous architectures used in high-end computers and telecommunication equipment, and the number of units sold by the ’497 litigation defendants proves commercial success. The argument is supported by testimony from Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 17 various sources, including Dr. Schlecht (who we recognize has an interest in this proceeding, but note that the number of 2 million units initially sold and 5 million sold through trial is largely unrefuted). See Schlecht Declaration, Document A3, pages 2 et seq. Moreover, according to the Patent Owner, the ’497 litigation infringing products constitute substantially the entire market. PO App. Br. 27. Based on the evidence submitted at trial, it was established that the unregulated bus converters described in the defendants’ data sheets have no substantial non-infringing use other than to create infringing unregulated intermediate bus architecture systems and that there are no suitable non- infringing alternatives to the infringing UIBA systems. On this basis, the jury awarded lost profits. We are unpersuaded by the Requester’s argument that the commercial success was due to the “unclaimed” unregulated intermediate bus architecture. Based on the above claim language, our analysis, and informed by the judgment and the analysis of the court, we find that the commercial success described by Patent Owner provides an objective indicia of non- obviousness, which would have been sufficient to overcome the Examiner’s conclusion of obviousness . We therefore reverse this rejection. III. The Rejection of Claims 1, 5-8, 11-13, 17, 18, 24, 28, and 31 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Steigerwald ’539, and Cobos This rejection was adopted from the Request, pages 30-44. RAN 4. The Request urges that Cobos teaches the importance of short transitions in the transformer voltage waveform where that waveform is used Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 18 to drive synchronous rectifiers. It also finds that Cobos provides motivation to modify Steigerwald ’090 to add short transitions. Req. 31. As Cobos does not rectify the deficiencies of the underlying Steigerwald references, we reverse this rejection for the reasons noted above. IV. The Rejection of Claims 2-4 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald '090, Steigerwald '539, Cobos, and Pressman. This rejection was adopted from the Request, pages 45-47. RAN 4. As neither Cobos nor Pressman rectify the deficiencies of the underlying Steigerwald references, we reverse this rejection for the reasons noted above. V. The Rejection of Claims 9, 10, 14-16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald '090, Steigerwald '539, and Cobos. This rejection was adopted from the Request, pages 47-52. RAN 5. As Cobos does not rectify the deficiencies of the underlying Steigerwald references, we reverse this rejection for the reasons noted above. VI. The Rejection of Claims 1-33 under 35 U.S.C. § 103(a) as being unpatentable over Cobos and Pressman. This rejection was adopted from the Request, pages 53-80. RAN 5. The Requester urged, and the Examiner adopted, findings that Cobos has a DC power source and all the elements of the non-regulating isolation stage of claim 1. According to the Requester and Examiner, Figure 5(b) of Cobos shows the transformer with primary and secondary windings, the two Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 19 synchronous converters driven by the secondary voltage waveform and thus synchronized with both the primary and secondary voltage waveforms synchronized with each other, and the optimum voltage waveform with short transitions as shown in Figure 5(c). Cobos is also said to describe a fixed duty cycle, i.e. a constant duty cycle 50% at page 1680. Request 53. Cobos is found to be missing the non-isolating regulation stages driven by the output of the isolating stage. The Requester and Examiner rely on Pressman for a teaching of driving multiple non-isolated switching regulators from a single isolation stage. Specifically, they point to Figure 3- 4(b) on page 82, with description on page 83. The motivation to make the combination is said to be to provide a multiplicity of different output voltages at high efficiency. The combination, the Examiner and Requester conclude, would have rendered claim 1 obvious to one of ordinary skill in the art at the time the invention was made. Id. at 54. On the other side of the coin, the Patent Owner states that Cobos already provides a solution to providing a multiplicity of different output voltages at high efficiency in Figure 14(a), and the combination proposed by the Requester would not have high efficiency. PO Response, January 17, 2012, 39. More specifically, it is urged that the solution of Cobos in Figure 14 (a) is said to be to use a plurality of half bridge circuits, each as shown in Figure 10, and each creating a different output at high efficiency. As noted at page 1680, left column, Figure 10 relies on variations in duty cycle to control the output voltage. Thus, the solution provided by Cobos is to Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 20 provide a plurality of high efficiency single-stage converters that both isolate and regulate. Cobos is said to demonstrate efficiencies up to 90%. Cobos p. 1680. Thus, since Cobos had already presented a high efficiency solution to providing multiple output voltages, it is urged that the motivation suggested by the Requester does not exist. Further, the Patent Owner asserts that Figure 3-4B of Pressman to which the Requester points has a very low efficiency relative to other circuits in Pressman or the one shown in Figure 14a of Cobos. The motivation of high efficiency suggested by Requester would not lead a person of ordinary skill to Figure 3-4B of Pressman. Id. The Requester responds that Pressman expressly teaches that a non- regulating isolation stage such as the one found in Cobos can be used "to generate a multiplicity of different output voltages at high efficiency as shown in Fig. 3-4B.” Resp. Br. 31. The Requester further urges that “Pressman also notes that the various components shown can be moved about in ‘building block’ fashion without unexpected results, and that there are many reasons to do so including, but certainly not limited to, efficiency.” Id. In rebuttal, the Patent Owner urges that Cobos teaches away from the proposed combination of references. Cobos is said to teach using a separate regulating isolation stage for each desired output voltage. “Cobos already presents a solution to achieve multiple output voltages, meaning there is Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 21 no reason to combine the references in the manner asserted by the [Requester], other than by impermissibly relying on SynQor's ’190 patent claims as a guide in formulating the rejections.” PO Reb. Br. 9. The Patent Owner additionally notes that “Pressman also does not provide any reasoning or motivation to combine the references in the manner asserted by [Requester], specifically decrying the statement that circuit elements are ‘building blocks’ and that the building blocks can be recombined depending on the application.” Id. (citing Pressman at 74). On balance, we think the Patent Owner has the better argument. Without the guidance of the claims, one is left to move the building blocks of Pressman, a basic treatise, around in a random, albeit sometimes predictable, manner. As noted by the Patent Owner, Pressman generally provides no specific reasoning or motivation for combining any particular circuit elements in a particular configuration to create a specific circuit. We also find merit to the Patent Owner’s contention that Pressman's description of Figures 3-4(B) discusses that multiple output voltages may be obtained at high efficiency by using multiple switching post-regulators (one for each output) rather than series-pass post-regulators (which would result in low efficiency). We then are left principally with hindsight as the possible motivation for making this combination. Moreover, the commercial success described by Patent Owner (and discussed above) provides an objective indicia of non-obviousness, which would have been sufficient to overcome the Examiner’s conclusion of obviousness. We therefore reverse this rejection as well. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 22 VII. The Rejection of Claims 34-38 under 35 U.S.C. § 103(a) as being unpatentable over Cobos and Pressman. This rejection was stated in the non-final action as adopted above against claims 1-33. RAN 5. Cobos in view of Pressman was applied as above to claims 1-33. Accordingly, as we have reversed that rejection (VI, above) and for the reasons stated above, we likewise reverse this rejection. VIII. The Rejection of Claims Claims 35-38 under 35 U.S.C. § 103(a) over Steigerwald ’090, Steigerwald ’539, Admitted Prior Art, and Pressman This rejection appears in the RAN at page 6. According to the Examiner, Steigerwald ’090 and ’539 (incorporated by reference) are applied as shown in the Non-Final Action against claims 20-23, 27, 29, 30, 32, and 33 (Section I above). New claims 35-38 are found to depend from claims 20 and 27 and claims 35 and 37 require switching regulators, whereas claims 36 and 38 require switching regulators, a DC power source providing a voltage within the range 36-75 volts wherein "the regulation stage output is of a voltage level to drive logic circuitry. With regard to switching regulators, The Examiner found that Pressman teaches in connection with Figure 3-4B that the use of switching regulators "to generate a multiplicity of different output voltages" can achieve high efficiency. RAN 6. The Examiner then concludes it would have been obvious to use the switching regulators of Pressman in the circuit of Steigerwald. Id. Furthermore, the Examiner finds that limitations to an input voltage between 36 and 75 volts and an output voltage to drive logic circuitry are Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 23 Admitted Prior Art, citing to Dr. Schlecht's testimony and the background section of the ’190 Patent. Id. As this rejection depends upon the rejection in section I above which we have reversed, we reverse this rejection for those same reasons. Neither the Admitted Prior Art nor Pressman overcome the deficiencies of that rejection. CONCLUSIONS We have carefully considered the evidence of record, including that of secondary considerations submitted by the Patent Owner. We also have considered the evidence submitted by the Requester and the findings and conclusions of the Examiner. We conclude that a nexus exists between the claims under reexamination and the evidence of infringing products in the litigation. The weight of the objective evidence, combined with the technical difficulties in implementing the proposed combinations of references adopted from the Request by the Examiner, lead us to the conclusion that the claims at issue would not have been obvious to one of only ordinary skill in the art at the time the invention was made. The record does not establish that claims 1-38 would have been obvious to one of ordinary skill in the relevant art at the time of the effective date of the ’190 Patent invention. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 24 We, therefore, do not sustain any of the obviousness rejections of these claims. ORDER I. The rejection of claims 20-23, 27, 29, 30, 32 and 33 under 35 U.S.C. §102 (b) as anticipated by Steigerwald ’090 and Steigerwald ’539 is reversed. II. The rejection of claims 24-26 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090 is reversed. III. The rejection of claims 1, 5-8, 11-13, 17, 18, 24, 28, and 31 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Steigerwald ’539, and Cobos is reversed. IV. The rejection of claims 2-4 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Steigerwald ’539, Cobos, and Pressman is reversed. V. The rejection of claims 9, 10, 14-16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Steigerwald ’539, and Cobos is reversed. VI. The rejection of claims 1-33 under 35 U.S.C. § 103(a) as being unpatentable over Cobos and Pressman is reversed. VII. The rejection of claims 34-38 under 35 U.S.C. § 103(a) as being unpatentable over Cobos and Pressman is reversed. Appeal 2014-01733 Reexamination Control 95/001,702 Patent No. 7,072,190 B2 25 VIII. The rejection of claims 35-38 under 35 U.S.C. § 103(a) over Steigerwald ’090, Steigerwald ’539, Admitted Prior Art, and Pressman is reversed. REVERSED ak Greenblum & Bernstein, PLC 1950 Roland Clarke Place Reston, VA 20191 Third Party Requester: Turner Boyd, LLP 2570 West Camino Real Suite 380 Mountain View, CA 94040