Ex Parte 7072190 et al

Patent Trial and Appeal Board

Aug 16, 2013

95001207 (P.T.A.B. Aug. 16, 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.
95/001,207 08/19/2009 7072190 X42745 6970
7055 7590 08/19/2013
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
08/19/2013 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
________________

Murata Manufacturing Co., Ltd.
Requester and Respondent

v.

SynQor, Inc.
Patent Owner and Appellant

________________

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

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

PERRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-012209
Reexamination Control No. 95/001,207

2
I. BACKGROUND AND SUMMARY

A. Introduction
Murata Manufacturing Co., Ltd. (“Murata”), Third Party Requester
(“Requester”) requested inter partes reexamination
1
of US Patent No.
7,072,190 (the “′190 patent”), owned by SynQor, Inc. (“SynQor”) (“Patent
Owner”). Patent Owner invokes our review under 35 U.S.C. § 134(b) from
the Examiner‟s Right of Appeal Notice (“RAN”) decision dated September
28, 2011 to reject claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

B. Related Proceedings
The ′190 patent was asserted in SynQor, Inc. v. Artesyn Technologies,
Inc. et al., Case No. 2:07-cv-497 (E.D. Tex.) (the “′497 litigation”) against
Requester and others. PO App. Br., 1. After trial in December 2010, the
district court enjoined the defendants from further infringement of the ′190
patent.
2
Id.
Interlocutory appeals against the injunction include United States
Court of Appeals for the Federal Circuit (“CAFC”), Appeal Nos. 2011-1191,
-1192, -1193, and -1194. PO App. Br., 1.
The ′190 patent is at issue in Federal Circuit Appeal Nos. 2012-1069,

1
This matter is among those in the “pipeline” of inter partes reexaminations
that were initiated prior to the cut-off date for filing new inter partes
reexaminations established by the America Invents Act (“AIA”).
2
Post-trial damages were severed into Case No.2:11-cv-444 (E.D. Tex.).
Appeal 2012-012209
Reexamination Control No. 95/001,207

3
-1070, -1071 and 1072. PO App. Br., 1. The CAFC issued a decision on
March 13, 2013 for its case numbers 2011-1191, -1192, and -1194, and
2012-1070, -1071, and -1072.
The ′190 patent is asserted against Cisco Systems, Inc. and Vicor
Corporation in the case SynQor, Inc. v. Ericsson, Inc. et al, Case No. 2:11-
cv-54 (E.D. Tex.) (“the ′54 litigation”). Id.
The ′190 patent is the subject of another pending reexamination styled
Reexamination Control No. 95/001,702. Id.
The ′190 patent belongs to a family of related applications and
patents. Pending applications for related technology include: 13/157,439
and 12/907,188. PO App. Br., 2.
Reexaminations involving related patents include: 95/001,207;
95/001,405; 95/001,406; 95/001,491; 95/001,637; and 95/001,853. Id.

C. Technical Background and Invention
The ′190 patent is directed to DC-DC power converter systems which
convert direct current (DC) at one voltage to DC at another voltage. All of
the ′190 patent claims are directed to converters having separate “isolation”
and “regulation” stages. See, e.g., claim 1.
A circuit provides DC “isolation” if its input and output are not
directly connected by an electrical conductor. For example, DC isolation
can be provided by a transformer or optical isolator. If a transformer
provides only magnetic coupling between its primary and secondary winding
circuits and if there is no electrical path for current to flow directly (other
than current induced in the secondary winding) between primary and
secondary sides of the transformer, then the primary and secondary winding
Appeal 2012-012209
Reexamination Control No. 95/001,207

4
circuits are isolated. Request,
3
6. However, the mere presence of a
transformer does not “isolate” the circuit. A wire connection between input
and output circuits might defeat the DC isolation provided by the
transformer.
A regulator circuit provides regulation by restricting its output to a
desired voltage even when an input voltage varies. A “fully regulated”
converter monitors its output voltage and modifies its operation to maintain
a desired output voltage. A “semi-regulated” converter may have a
changing input and/or output voltage sometimes referred to as a “droop”
characteristic.
4

Patent Owner describes the ′190 patent claims as being related
generally to what is now known as “Unregulated Intermediate Bus
Architecture („UIBA‟)” and often simply “intermediate bus architecture”
(“IBA”)
5
. PO App. Br., 2.

3
Revised Request for Inter Partes Reexamination filed August 19, 2009.
4
Claims 27-29 and 32-33 require a voltage drop with increasing current
flow from the isolation stage. Patent Owner refers to claims 27, 28 and 33
as “additionally encompass[ing] what is now known as Semi-regulated IBA
(„SIBA‟).” PO App. Brief, 2.
5
The ′190 patent does not use the phrase “intermediate bus architecture”
(IBA) and its variants, such as “unregulated intermediate bus architecture”
(UIBA). According to Patent Owner, these terms were adopted by the
industry after Dr. Martin F. Schlecht, the named inventor on the ′190 patent,
disclosed his inventions to Cisco and others in the early 2000‟s. PO App.
Br., 2. Additional descriptors for the described technology or parts of it
include “unregulated bus converter (UBC),” which refers to the unregulated
isolation stage and “point-of-load (POL) converter,” which refers to the non-
isolating regulation stage. PO App. Br., 2-3.
Appeal 2012-012209
Reexamination Control No. 95/001,207

5
According to an embodiment of the invention, a DC power source
(e.g., 36-75 volts)
6
is first converted to an intermediate voltage (e.g., 12
volts) by a “non-regulating isolation stage.” This stage provides DC
isolation and a voltage step-down, but does not regulate. One or more non-
isolating regulation stages then convert the intermediate voltage to one or
more desired regulated voltages (e.g., 5 volts) for powering portions of
electronic equipment.
Patent Owner characterizes UIBA at a high-level as being a “two-
stage” DC-DC power converter system that separates isolation and
regulation functions into separate stages. PO App. Br., 2. The “non-
regulating isolation stage” includes controlled rectifiers synchronized to the
voltage waveform of a primary winding of its associated transformer. The
two stage configuration allows for improved efficiency, small size and low
cost (“ECS benefits”). According to Patent Owner, the non-regulating
isolation stage has become known as an “unregulated bus converter”
(“UBC”).” PO App. Br., 2; see generally ′190 patent. A UBC provides its
output to a plurality of “non-isolating regulation stages,” typically including
a switching regulator (claim 2), now commonly referred to as a “point-of-
load converter („POL‟).” PO App. Br., 3; see, e.g., ′190 patent, claims 1, 2.
POLs are often located in proximity to the loads to which they supply
power. Such arrangements are referred to as “distributed” power supplies.
7

According to Patent Owner, the ′190 patent IBA architecture improved upon

6
See, e.g., claims 17, 18 and 24.
7
The ′190 patent claims do not require that the two stages be positioned
remotely from one another, although the two stages are functionally separate
and distinct.
Appeal 2012-012209
Reexamination Control No. 95/001,207

6
known power converter systems having integrated isolation and regulation
functions (“DBA brick”). PO App. Br., 3.
Claim 1 is illustrative and is reproduced below with added
indentations and labels for ease of reference to particular claim limitations.
1. A power converter system comprising:
(a) a DC power source;
(b) a non-regulating isolation stage comprising:
(c) a primary transformer winding circuit
having at least one primary winding connected to the
source; and
(d) a secondary transformer winding circuit
(e) having at least one secondary winding
coupled to the at least one primary winding and
(f) having plural controlled rectifiers, each
having a parallel uncontrolled rectifier and each connected
to a secondary winding,
(g) each controlled rectifier being turned on
and off in synchronization with the voltage waveform
across a primary winding to provide an output,
(h) 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
(i) 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.

Each of independent claims 1 and 20 describes a “non-regulating
isolation stage” and a plurality of “non-isolating regulation stages,” each
receiving the output of the isolation stage and providing a regulated output.
Claims 27, 30 and 33 also describe the same general topology, using similar
language. The isolation stage uses a controlled rectifier synchronized to a
voltage waveform on a primary winding of a transformer to rectify a
Appeal 2012-012209
Reexamination Control No. 95/001,207

7
secondary winding current. Claims 1-19, 28 and 31 require the primary
winding voltage waveform to have a fixed duty cycle and transitions that are
“short” (“short transitions”) relative to on-state and off-state times of the
controlled rectifiers. Claims 20-27, 29-30 and 32-33 do not require short
transitions. Claims 27-28 and 30-33 do not require the isolation stage to be
non-regulating. Claims 27-29 and 32-33 require that the isolation stage
provide a voltage output that drops with increasing current flow (“droop”).
PO App. Br., 5.
Although the term “intermediate bus” is not used in the claims, the
parties do not dispute that the “intermediate bus” referred to in the briefs and
evidence describes the connections between the output of the isolation stage
and the inputs of the regulation stages.

D. Evidence Considered
The Examiner relies on the following prior art in rejecting the claims:

JP ′446 JP H5-64446 Mar. 12, 1993
Steigerwald ′539 US 5,274,539 Dec. 28, 1993
Steigerwald ′090 US 5,377,090 Dec. 27, 1994

J.A. Cobos & J. Uceda, “Low Output Voltage DC/DC Conversion,” IEEE
1676-81 (1994) (“Cobos”).

Abraham I. Pressman, Switching and Linear Power Supply, Power
Converter Design (Hayden Book Co., Inc. 1977) (“Pressman”).

Bob Mammano, Unitrode Corp., Distributed Power Systems (April 1993)
(“Mammano”).
Enrique de la Cruz et al., “Analysis Of Suitable PWM Topologies To Meet
Very High Efficiency Requirements For On Board Dc/Dc Converters In
Appeal 2012-012209
Reexamination Control No. 95/001,207

8
Future Telecom Systems,” 15th International Telecommunications Energy
Conference (INTELEC) 207-214 (1993) (“de la Cruz”).
John G. Kassakian & Martin F. Schlecht, “High-Frequency High-Density
Converters for Distributed Power Supply Systems,” 76(4) Proceedings of the
IEEE 362-376 (April 1988) (“Kassakian”).
Appeal 2012-012209
Reexamination Control No. 95/001,207

9
Patent Owner submitted the following documents into the record of
the reexamination.
Reexamination
Record
Description
A1
8
Schlecht Declaration Under 1.132
A2 Pellikaan Declaration Under 1.132
A3 SynQor Response to Non-Final Office
Action
A7-A39 Patent and non-patent literature
A40-A82 Defendant data sheets describing products
including those found to infringe claims of
the ′190 patent
A83-A91 Examiner-cited prior art references
R1-R49 Documents from parallel litigations
R50-R57
9
Orders and briefs filed in the Court of
Appeals for the Federal Circuit related to
appeals from district court parallel
litigations

Requester submitted evidence with its Respondent Brief (“Resp. Br.”)
filed Feb. 1, 2012, including an article by inventor Schlecht and the
deposition of Ohannes Wanes.

8
Patent Owner submitted A1-A91 and R1-R49 in June 2010 in response to
Examiner rejections.
9
Patent Owner submitted R50-R57 with its rebuttal brief filed July 16, 2012.
Appeal 2012-012209
Reexamination Control No. 95/001,207

10
E. Rejections and Examiner’s Position
The rejections made by the Examiner and now on appeal are as
follows:
1. Claims 1, 5-8, 11-13, 17-18, 20-24 and 27-33 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Steigerwald ′090 and
Cobos.

2. Claims 2-4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steigerwald ′090 and Cobos in view of
Pressman.

3. Claims 9-10, 14-16, 19 and 25-26 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Steigerwald ′090 and Cobos in
view of Mammano.

4. Claims 1, 5-8, 11-13, 20, 22-23 and 27-33 are rejected under 35
U.S.C. § 103(a) as being unpatentable over JP ′446 in view of
Steigerwald ′539.

5. Claims 2-4 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP ′446 and Steigerwald ′539 in view of
Kassakian.

6. Claims 9, 10, 14-19 and 24-26 are rejected under 35 U.S.C. §
103(a) as being unpatentable over JP ′446 and Steigerwald ′539 in
view of de la Cruz.

The Examiner found the Declaration of Martin F. Schlecht, Sc.D.
under Rule 1.132 (A1) to be insufficient to establish a nexus between the
claims and the Patent Owner-submitted objective evidence of non-
obviousness. See, e.g., Right of Appeal Notice dated Sept. 28, 2011
(“RAN”), 12.

Appeal 2012-012209
Reexamination Control No. 95/001,207

11
F. Patent Owner Contentions
Patent Owner advances technical arguments against the various
obviousness rejections under 35 U.S.C. § 103. Patent Owner further argues
objective evidence of non-obviousness (“secondary indicia” of non-
obviousness), primarily from the ′497 litigation, submitted in the
reexamination.
In the ′497 litigation, Patent Owner asserted claims for patent
infringement against various defendants including Murata (Requester).
Patent Owner asserted claims for induced and contributory infringement
under 35 U.S.C. §§ 271(b) and (c), alleging that the defendants sold power
supply components with knowledge that they would be used in, or were
especially made to be used in, infringing systems imported into the United
States. Patent Owner also asserted direct infringement under
35 U.S.C. § 271(a) with respect to U.S. sales. See R1-R57.
Patent Owner argues that data sheets (A40-A82) describing the
defendant‟s products and other court documents, including the jury verdict
and judgment, which were submitted into the reexamination record,
constitute objective evidence of non-obviousness and support Patent
Owner‟s contention that the ′190 patent claims are not obvious under
35 USC § 103. Patent Owner argues, for example, that the objective
evidence establishes commercial success (PO App. Br., 15), acting against
conventional wisdom (PO App. Br., 31), copying (PO App. Br., 34), long-
felt need (PO App. Br., 27), and the invention having been met with
disbelief/surprise/skepticism (PO App. Br., 38), in accordance with the so
called “Graham factors” set forth in Graham v. John Deere, 383 U.S. 1
(1966) and followed in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Appeal 2012-012209
Reexamination Control No. 95/001,207

12
G. Requester Contentions
Requester contends that (1) Patent Owner improperly relies upon
evidence from the ′497 litigation (Resp. Br., 9); (2) Patent Owner‟s
secondary consideration (objective) evidence is not convincing (Resp. Br.,
11); and (3) the Examiner‟s rejections are proper (Resp. Br., 18).

H. Issue
The issue before us is whether claims 1-33 would have been obvious
to one of ordinary skill in the relevant art at the time of the ′190 patent
invention. In reaching our conclusions as to each of the obviousness
rejections made by the Examiner, we consider the technical arguments made
with respect to the prior art along with the submitted objective evidence of
non-obviousness. For convenience, we first discuss the technical arguments
made by the parties and then the objective evidence of non-obviousness.
However, as to each rejection, all of the evidence, including the prior art and
the objective evidence of non-obviousness, is weighed in reaching our
conclusion.

II. CLAIM CONSTRUCTION
The only claim construction issue to be resolved relates to a term that
first appears in claim 1, limitation (h). This limitation requires “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.” Other claims include identical or similar
language.
Appeal 2012-012209
Reexamination Control No. 95/001,207

13
No explicit definition is provided in the Specification of the ′190
patent for this claim term. The only portion of the specification assigning a
measurable quantity to the word “short” is reproduced below.
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.
′190 patent, 8:8-19.
The Examiner adopted the district court construction:
Thus, the examiner is in agreement with the
Requester‟s and the Court‟s construction with the
interpretation of “transition times which are short
relative to the on-state and off-state times of the
controlled rectifiers” in the broadest reasonable
interpretation to mean “transition times which are
less than 20% of the overall on-state and off-state
times of the controlled rectifiers,” which is
consistent with the specification (Requester‟s
response, pages 8-9; Court Order, Appendix A,
pages 30-32).
RAN, 11. We see no reason to adopt a construction different from the one
adopted by the district court and the Examiner. Thus, “short transitions” are
those less than 20% of the overall “on-state” time and “off-state” time of a
synchronized controlled rectifier.
Appeal 2012-012209
Reexamination Control No. 95/001,207

14
III. TECHNICAL ARGUMENTS RELATED TO OBVIOUSNESS
REJECTIONS
A. Claims 1, 5-8, 11-13, 17, 18, 20-24 and 27-33 obvious in view of
Steigerwald ′090 and Cobos

1. Steigerwald ′090
The Examiner rejects claims 1, 5-8, 11-13, 17, 18, 20-24 and 27-33
under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ′090 and
Cobos. The sole figure of Steigerwald ′090 is reproduced below.

Sole Figure of Steigerwald ′090

The figure of Steigerwald ′090 “schematically illustrates a multiple-
output pulsed power supply.” Steigerwald ′090, 2:6-9. According to the
Examiner, Steigerwald ′090 has a non-regulating stage and subsequent
regulating stages. RAN, 22-23. We agree.
Appeal 2012-012209
Reexamination Control No. 95/001,207

15
The Steigerwald ′090 system generates current pulses through linear
regulators (50, 51, 60, 61) for powering radar. Steigerwald ′090, Abstract
and Figure. Currents flowing in primary windings (e.g., 22, 26) of
transformers (T1, T2) are switched by respective switching transistors (e.g.,
Qa, Qb). Currents induced in secondary windings (24, 28, 40, 42) are
rectified by diodes CRap, CRbp, CRan and CRbn to provide power at output
buses (+DC bus and –DC bus). Transformers T1 and T2 provide isolation
between a Main DC Power Bus 12 and the output buses. Plural regulator
stages use controlled semiconductors 50, 51, 60 and 61 to regulate current
on the output buses to produce current pulses at voltages V1 . . . Vn and –V1
. . . -Vm.
Steigerwald ′090 does not use controlled rectifiers in its isolation
stage. Nor does it teach synchronizing controlled rectifiers to a primary
winding voltage waveform having “short” transitions.

2. Cobos
Cobos is an IEEE article published in 1994 that describes circuits
including controlled rectifiers for small DC/DC “On Board Converters”
(“OBC”) in “Distributed Power Systems” (“DPS”) operating at low output
voltage (3.3 V). Cobos, 1676, Abstract. Cobos Fig. 6 is illustrative and is
reproduced below.
Appeal 2012-012209
Reexamination Control No. 95/001,207

16

Cobos Fig. 6
Each of the transformer secondary winding circuits shown in Fig. 6 includes
a controlled rectifier with a parallel diode. Driving waveforms for the
controlled rectifiers are shown to the right of associated circuits. Cobos, Fig.
6.

3. The Steigerwald ′090 and Cobos Combination
The Examiner adopted Requester‟s position that it would have been
obvious to one of ordinary skill to provide the ′190 patent invention from
Steigerwald ′090 and Cobos. According to Patent Owner, there are
numerous incompatibilities between Steigerwald ′090 and Cobos that, at the
time of the ′190 patent invention, would have rendered the claimed invention
unobvious and presented significant barriers to one of only ordinary skill to
overcome. These incompatibilities include the Steigerwald ′090 prohibition
Appeal 2012-012209
Reexamination Control No. 95/001,207

17
on introducing inductance into its conduction path, frequency
incompatibility, voltage incompatibility, design efficiencies, and driving
waveform incompatibilities. According to Patent Owner, it would have
taken more than ordinary skill to achieve the ′190 invention from
Steigerwald ′090 and Cobos.

4. Efficiency
Patent Owner argues that one of ordinary skill in the art would not
have attempted substitution of the Cobos synchronous rectifiers into the
isolation stage of Steigerwald ′090 because it would not have increased
overall efficiency of Steigerwald ′090 (PO App. Br. 46), contrary to one of
the Examiner‟s stated rationale of “simple substitution” for combining the
references. RAN, 21. The linear regulators of Steigerwald ′090 would have
dissipated whatever energy might have been saved by using the controlled
rectifiers. PO App. Br., 45-46. Patent Owner notes that it is overall
efficiency that is important and that linear regulators are usually quite
inefficient. PO App. Br., 46. Patent Owner explains that linear regulators
have low efficiency because they function by making the voltage across a
transistor operate in its linear mode and that efficiency is determined by the
ratio of input and output voltages.
Requester counters that it is not possible to tell from the Steigerwald
′090 reference whether the linear regulators are “series” regulators or “series
pass” regulators, which have different efficiency characteristics. Resp. Br,
22. Also, one of ordinary skill in the art would have recognized ways to
improve efficiency, such as, for example, replacing the series regulators with
switching regulators (claim 2). Resp. Br. 22. However, Patent Owner
Appeal 2012-012209
Reexamination Control No. 95/001,207

18
argues that switching regulators are not appropriate for use in the
Steigerwald ′090 topology because their use would frustrate the design
purpose of Steigerwald ′090 in providing current pulses.

5. Conventional Wisdom
The ′190 patent invention replaced DPA
10
“bricks” (a single stage
performing both isolation and regulation functions) with a two stage solution
having separate isolation and regulation stages. Patent Owner argues that
this fundamental change was counter-intuitive based on an expected
increased size, weight and complexity and loss of efficiency. PO App. Br.
31-33 and 47-48. The Examiner dismissed SynQor‟s evidence that Dr.
Schlecht proceeded against conventional wisdom. RAN, 19.
Patent Owner argues that the Cobos substitution of controlled
rectifiers into the Steigerwald ′090 topology would have been expected to
add significant size and complexity to the circuit, and, therefore, doing so
would have been against conventional wisdom at the time of the ′190 patent
invention. Making the substitution would require extra control circuitry to
create an appropriate driving waveform for the gates of the controlled
rectifiers or a self-driven arrangement. PO. App. Br., 47. Patent Owner
points to Cobos itself, which states that external control circuitry would be
expected to generate additional power losses, take up added space and cost
more. PO App. Br., 47, citing Cobos, 1678.
Furthermore, according to Patent Owner, two stages would be
expected to decrease efficiency because each stage would have its own
attendant loss. Weight, cost and size are related adversely to efficiency. PO

10
Distributed Power Architecture.
Appeal 2012-012209
Reexamination Control No. 95/001,207

19
App. Br., 32. Patent Owner finds support in the Pressman reference, which
notes significant efficiency losses in multi-stage designs. PO App. Br., 32,
citing Pressman at 84, Tables 3-1, 3-2.
Patent Owner argues that there was no objective evidence that a multi-
stage design could realistically approach the same efficiency as a single
stage design while also providing cost and size reductions. PO App. Br., 33.
Cobos suggests the use of synchronous diodes to improve efficiency.
In fact, the ′190 patent background acknowledges that synchronous
rectification was known. Yet, we agree with Patent Owner and find that
neither Requester nor the Examiner set forth persuasive evidence that
ordinarily skilled artisans contemplated, with a reasonable degree of success
producing a multi-stage DC/DC power converter using synchronous
rectifiers in its isolation stage prior to the effective filing date of the ′190
patent.

6. Simple Substitution
The Examiner finds that Steigerwald ′090 is an appropriate starting
point for modification because Steigerwald ′090 is directed to a power
converter. RAN, 22. According to the Examiner, the substitution of Cobos‟
controlled rectifiers for the non-controlled diodes of the Steigerwald ′090
isolation stage would have been simple, obvious and well-known in the art.
Furthermore, the “simple substitution” of one known element for another
would obtain “predictable results.” RAN, 21.
Patent Owner disagrees and argues that at the time of the ′190 patent
invention, the substitution proposed by the Examiner was not so simple.
Appeal 2012-012209
Reexamination Control No. 95/001,207

20
Patent Owner argues legal deficiencies in the Examiner‟s rejection. In
particular, Patent Owner argues that the Examiner applied improperly the
“simple substitution” rationale because the Examiner found that substitution
of the Cobos controlled rectifiers into Steigerwald ′090 would have been
well-known to those of ordinary skill in the art. According to Patent Owner,
the Examiner‟s findings do not clearly resolve the Graham factual inquiries.
PO App. Br., 41-43.
Patent Owner argues that the Examiner never resolved the level of
ordinary skill in the relevant art in 1997.
11
PO App. Br., 43. According to
Patent Owner, the level of ordinary skill in the art was low. Patent Owner
represents that according to the SynQor expert at trial, Dr. Leeb, such a
person “likely would have something like a bachelor‟s degree in electrical
engineering and a couple of years of additional experience possibly in grad
school or industry.” PO App. Br., 37-38. Requester correctly notes that at
the time of the ′190 patent invention, the substitution of synchronous
rectifiers for ordinary diodes, in general, was known. Resp. Brief, 19-20.
Patent Owner does not dispute this. However, the background section of the
′190 patent describes various technical challenges to implementing
synchronous rectifiers in high frequency switching converters like the ′190
patent architecture. Although the Examiner did not resolve explicitly the
applicable level of ordinary skill (see PO App. Br., 43), the level of skill is
impliedly resolved by the level of sophistication expressed in the various
references of record. That level appears to be on par with Dr. Leeb‟s
objective criteria outlined supra, even if the ordinary skill was “low” as

11
The ′190 patent traces its domestic priority to provisional application
60/036,245 filed on Jan. 24, 1997.
Appeal 2012-012209
Reexamination Control No. 95/001,207

21
compared to higher skilled artisans possessing a doctorate and several more
years in the industry.
7. Inductor in Conduction Path
Patent Owner argues (PO App. Br., 39) that Steigerwald ′090 teaches
away from combination with Cobos because the Cobos secondary winding
circuits with controlled rectifiers have inductors in their respective
conduction paths. See, e.g., Cobos, Fig. 6. According to Patent Owner, the
use of inductors in the conduction path of Steigerwald ′090 would frustrate
its purpose.
The topology of Steigerwald ′090 is that of a “capacitance-
muiltiplying converter.” Steigerwald ′090, Abstract. Energy stored in a
capacitor (Ce) in the primary circuit is transformed into pulses in the
secondary winding circuit. According to Patent Owner, Steigerwald ′090
prohibits the use of an inductor in its conduction path because doing so
would prevent effectively the delivery of a pulsed output.
12
Because the
Cobos secondary winding circuits using controlled rectifiers all include
inductors, Patent Owner maintains that Steigerwald ′090 effectively teaches
away from the Examiner‟s proposed combination.
The “capacitance-multiplying effect” topology used in Steigerwald
′090 is not well explained in the Steigerwald ′090 reference itself. Patent
Owner explains that the Steigerwald ′090 purpose of providing pulsed
current (delivering energy stored in capacitor Ce to the load) would be
frustrated by the use of a secondary winding circuit having an inductor in its
conduction path. PO App. Br., 39-40.

12
This argument was elaborated on during the reexamination in Patent
Owner‟s Response at pages 30-31, 33 and 42-44.
Appeal 2012-012209
Reexamination Control No. 95/001,207

22
The Steigerwald ′090 prohibition on an inductors in its conduction
path is supported by its claim 1, limitations (a), (d), (e), (h), (j) and (k), each
of which specifically requires a “path lacking inductors.” Patent Owner
refers to Steigerwald ′539, which explains this requirement. PO App. Br.,
39, citing Steigerwald ′539, 3:55-4:4. Because the Cobos secondary winding
circuits using controlled rectifiers each have an inductor in the conduction
path, the use of Cobos controlled rectifiers would be prohibited in
Steigerwald ′090. According to Patent Owner‟s expert, using inductors
would destroy the operation of Steigerwald ′090,which must provide current
pulses at its output. See Dickens Declaration, Ex. R49 at ¶¶ 10, 23. Based
on the evidence of record, including Steigerwald ′090, the use of any
inductor in the conduction path of Steigerwald ′090would impede current
pulses needed to power the radar, thereby frustrating its purpose. We agree
with Patent Owner.
The Examiner dismissed Patent Owner‟s inductor argument by saying
that the ′190 patent claims do not require “no series inductors.” RAN, 23.
The Examiner‟s observation is correct. However, that does not resolve the
question of whether one of ordinary skill in the art at the time of the ′090
patent invention would have combined Steigerwald ′090 and Cobos.
The Examiner states that Steigerwald ′090 must be considered in its
entirety:
. . . Steigerwald ′090's mere disclosure of more
than one alternative (i.e, the use of high-voltage
energy storage capacitor, lack of series inductors
and high switching frequencies) does not constitute
a teaching away from any of these alternatives
because such disclosure does not criticize,
Appeal 2012-012209
Reexamination Control No. 95/001,207

23
discredit, or otherwise discourage the solution
claimed.
RAN, 23. However, there is only one embodiment illustrated in Steigerwald
′090 and as noted, Steigerwald ′090‟s claims specifically exclude inductors.
See sole figure of Steigerwald ′090 above. Moreover, the Examiner does not
address Patent Owner‟s arguments and the expert declaration explaining
why a skilled artisan would have been discouraged from using any inductors
in the Steigerwald ′090 circuit.
Requester argues that Steigerwald ′090 does not teach away from
including an inductor in the conduction path. Resp. Br., 21. In support,
Requester notes that not all of the output voltages of the Steigerwald ′090
isolation stage are pulsed voltages. Patent Owner maintains that the outputs
that are not pulsed are bias voltages that do not draw substantial power. PO
Rebut. Br., 18-19. Our review of Steigerwald ′090 suggests that Patent
Owner is correct. Thus, even though there are bias voltages output from the
Steigerwald ′090 isolation stage, the inductor prohibition on the power
delivery buses would have discouraged one of ordinary skill from
substituting any circuits that would place an inductance in the conduction
path.
Requester further argues that Cobos does not require an inductor in its
conduction path, urging that the inductors shown in Cobos Figures 4-6, 9
and 10 include an inductor arranged with a capacitor as a filter even though
Cobos Figure 4 uses diodes and Cobos Figures 5, 6, 9 and 10 use
synchronous rectification. Resp. Br., 21. Nevertheless, the Cobos drawings
show an inductor. Reguester‟s point is not clear. Apparently, Requester
might be asserting that the asserted “filter” would have equal energies in the
capacitor and inductor so as somehow to cancel the series inductance in
Appeal 2012-012209
Reexamination Control No. 95/001,207

24
Cobos, thereby somehow suggesting not using an inductor in the
Steigerwald ′090 circuit. However, Requester neither sets forth persuasive
evidence nor a clear argument that the inductor and capacitor in Cobos act as
a filter so as to effectively lower the inductive impedance. Based on the
evidence presented, one of ordinary skill in the art would have been
discouraged from attempting to use the Cobos arrangement of controlled
rectifiers, with inductors in the conduction path, to replace the rectifiers in
Steigerwald ′090.
Patent Owner further argues that one of ordinary skill in the art would
not have used synchronous rectifiers in the Steigerwald ′090 arrangement
because any efficiencies gained by the use of such synchronous rectifiers
would be dissipated by the linear regulators following the Steigerwald ′090
isolation stage. Thus, the ECS benefits would not be achieved. PO Rebut.
Br., 19. However, we need not address these benefits because the record
indicates that skilled artisans would have been discouraged from attempting
to modify Steigerwald ′090 with Cobos because Cobos only suggests, if at
all, a modification using inductors, while Steigerwald ′090 teaches away
from using inductors.

8. Frequency Incompatibility
Patent Owner also argues, relying on the Casey article, that a
frequency incompatibility exists between Steigerwald ′090 and Cobos. PO
App. Br., 49. Patent Owner represents that the Casey article explains that
the Steigerwald ′090 isolation stage operates at a switching frequency in the
Appeal 2012-012209
Reexamination Control No. 95/001,207

25
range of 3-10 MHz. See Casey article,
13
Steigerwald ′090, 3:23-29.
According to Patent Owner, Cobos‟ self-driven synchronous rectification
operates at an upper frequency limit of 1 MHz, and its external driven
scheme has an upper limit of 200 kHz. The frequency incompatibility is
described in detail in Patent Owner‟s response to non-final office action
dated July 12, 2010 (“Response”) at 36-37. PO App. Br., 49. According to
Patent Owner, lowering the Steigerwald ′090 frequency to be compatible
with the Cobos circuit arrangement would render it unfit by making the
power supply too big. PO App. Br., 49. The frequency incompatibility
would have discouraged making the proposed substitution. Patent Owner
argues that the Cobos circuits cannot be made to operate efficiently at 3-10
MHz, the range at which Steigerwald ′090 would have to operate in order to
achieve its objective of small size.
The Examiner‟s answer to this conundrum is that the ordinarily skilled
artisan would know that frequency changes would have to be made. RAN,
28. The Examiner‟s assertion is unsupported. Requester does not argue this
point in the Respondent Brief. The very point we must decide is whether
one of only ordinary skill in the art would have overcome the various
incompatibilities or whether they would only have been overcome by one of
greater than ordinary skill. In the absence of any persuasive evidence or
argument as to how one would have dealt with the frequency
incompatibility, Patent Owner‟s argument is persuasive.

13
L. F. Casey and M. F. Schlecht, Massachusetts Institute of Technology, A
High-Frequency, Low Volume, Point-of-Load Power Supply For Distributed
Power Systems, Laboratory for Electromagnetic and Electronic Systems
439-450 (1987) (“Casey”). Steigerwald '090 incorporated Steigerwald '539,
which further incorporated Casey, et al.
Appeal 2012-012209
Reexamination Control No. 95/001,207

26

9. Short Transitions
Claims 1, 5-8, 11-13, 17-18, 28 and 31 require a controlled rectifier to
be synchronized to a primary winding voltage waveform having “short”
transitions relative to the on-state and off-state of the controlled rectifier.
It is undisputed that Steigerwald ′090 does not teach short transitions
in the voltage waveform of the primary winding. The only short transition
topology taught by Cobos is the isolation stage shown in Cobos Figure 9.
This topology has a series inductor in its output, which is incompatible with
Steigerwald ′090 for the reasons explained above. Furthermore, according
to Patent Owner, the Cobos Figure 9 topology cannot be made to operate
efficiently in the 3-10 MHz range of Steigerwald ′090. PO App. Br., 50.
Patent Owner argues that the circuit substitutions ignore the difficulties
associated with them and the Examiner has not explained how those
difficulties would be overcome. We agree. The Examiner stated:
One of ordinary skill in the art would have
acknowledged how, not only to alternate the
diodes of Steigerwald ′090 with the controlled
rectifiers of Cobos, but also to select the suitable
waveforms for driving those controlled rectifiers.
Cobos clearly teaches that in some circumstances
that waveforms with “fast transitions” or “short
transitions,” are preferred. Furthermore, one of
ordinary skilled in the art would have known to
substitute the diodes of Steigerwald ′090 with the
controlled rectifiers of Cobos et al.
RAN, 30.
The argument regarding “short” transitions applies only to the claims
reciting that limitation (claims 1-19, 28 and 31). As to those claims, we find
it to be supportive of non-obviousness.
Appeal 2012-012209
Reexamination Control No. 95/001,207

27

B. Claims 2-4 obvious in view of Steigerwald ′090, Cobos and
Pressman
Claims 2-4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steigerwald ′090, Cobos, and Pressman. Claims 2-4
depend directly or indirectly from claim 1. These claims further require that
the non-isolating regulating stages are switching regulators. In rejecting
claims 2-4, the Examiner relies, in addition to Steigerwald ′090 and Cobos,
on Pressman. The Pressman book, entitled “Switching and Linear Power
Supply, Power Converter Design” purports to be “an all-embracing
treatment of the design of modern power supply systems.” Pressman, cover
page. It teaches numerous switching regulator circuits.
Patent Owner argues (PO App. Br., 40-41, 50-51) that one of ordinary
skill would not have utilized Pressman‟s switching regulators in the
Steigerwald ′090 topology. The design concept of Steigerwald ′090 is that
of a capacitance multiplier that includes a large capacitor (“Ce” in the
Steigerwald ′090 Figure) at the main input bus. This design supports the
Steigerwald ′090 intended purpose of providing current pulses to radar. The
design arrangement chosen prohibits the use of an inductor in the conductive
path to a load as explained above. However, the substitution of a Pressman
switching regulator in place of the Steigerwald ′090 linear regulator would
do just that. We agree with Patent Owner‟s position that the use of a circuit
path inductor would defeat the intended purpose of Steigerwald ′090 and
discourage such substitution.
Appeal 2012-012209
Reexamination Control No. 95/001,207

28
Pressman does not provide additional evidence helpful in determining
the obviousness of combining Steigerwald ′090 and Cobos as discussed
above.

C. Claims 9-10, 14-16, 19 and 25-26 obvious in view of Steigerwald
′090, Cobos and Mammano
Claims 9-10, 14-16, 19 and 25-26 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Steigerwald ′090, Cobos, and Mammano.
Claims 9, 10 and 25-26 require that the “output of the isolation stage is about
12 volts,” and claims 17-19 and 24 require that the “DC power source”
provide an input voltage related to the “range of 36 to 75 volts.”
Patent Owner argues separately that there is no basis other than the
roadmap provided by the ′090 patent claims to make the further
modifications required by these claims. PO App. Br., 51-52. Regardless of
whether this is true, Mammano does not alter our views with respect to the
combination of Steigerwald ′090 and Cobos.
Mammano does not provide additional evidence helpful in
determining the obviousness of combining Steigerwald ′090 and Cobos as
discussed above.

D. Claims 1, 5-8, 11-13, 20, 22-23 and 27-33 obvious in view of
JP ′446 and Steigerwald ′539
The Examiner rejected claims 1, 5-8, 11-13, 20, 22, 23 and 27-33
based on JP ′446 and Steigerwald ′539. Among these claims, 1, 5-8, 11-13,
28 and 31 require “short” transitions and claims 20, 22, 23, 27, 29, 30, 32,
and 33 do not require “short” transitions.
Appeal 2012-012209
Reexamination Control No. 95/001,207

29
Figure 1 of JP ′446 is reproduced below.

JP ′446 Fig. 1
JP ′446 discloses an AC/DC power supply including a non-regulating
isolation stage (Fig. 1, circuit 20) coupled to plural non-isolating regulation
stages (Fig. 1, circuits 31-35) through an intermediate bus.
Steigerwald ′539 discloses a capacitance-multiplying converter for
supplying distributed pulsed loads. Steigerwald ′539, Title. Steigerwald
′539 embodiments shown in Figures 7, 8 and 9 include controlled rectifiers,
albeit without parallel diodes, which rectify current flowing in a secondary
winding of a transformer. Steigerwald ′539 Figures 10a – 10f are
reproduced below.
Appeal 2012-012209
Reexamination Control No. 95/001,207

30

Steigerwald ′539 Figs. 10a-10f

Steigerwald ′539 explains that “FIGS 10d, 10e and 10f illustrate the gate
voltage for synchronous rectifier SRa for the embodiments of Figs. 7-9,
respectively. In Figs. 10d-10f, the voltage Vt represents the threshold
voltage that must be reached before the device SRa turns on.” Steigerwald
′539, 5:25-30.
Appeal 2012-012209
Reexamination Control No. 95/001,207

31
Patent Owner argues against the combination of JP ′446 and
Steigerwald ′539 because the combination would introduce noise into JP
′446 that would render it unsuitable for its intended purpose. The reason for
this is that JP ′446 operates in “resonance” mode requiring sine waves at
approximately the same frequency. PO App. Br., 53, citing JP ′446 ¶ 12.
We do not find this argument to be persuasive as to claims 20, 22-23, 27, 29-
30 and 32-33.
As to the claims requiring “short” transitions (1, 5-8, 11-13, 28 and
31), however, this argument is persuasive. Neither Requester nor the
Examiner contends that JP ′446 satisfies the “short” transitions limitation.
JP ′446 operation depends on the use of sine waves allowing its topology to
operate in “resonance” modes. See JP ′446 Abstract, ¶ 12.
The Examiner finds that:
In this case, the claims were rejected based on the
combination of JP‟ 446 in view of Steigerwald
′539, the “approximate square wave” waveform
shown [in] Fig. l0f of Steigerwald ′539 shows
shorter transition times than those in Figs. 10d and
10e, satisfying the slightly more narrower
interpretation of “transition times which are less
than 20,% of the overall on-state and off –state
times of the controlled rectifiers” adopted by the
U.S. District Court in the Litigation.
RAN, 45.
We do not subscribe to the Examiner‟s “eye-ball” conclusions based
on Figure 10f. As Patent Owner contends, Figures 10a-10f are not
represented as being drawn to scale. See PO App. Br., 60. Our review of
Steigerwald ′539 reveals no explanation that would lead us to believe that
the transitions come within our claim construction of short transitions (i.e.,
Appeal 2012-012209
Reexamination Control No. 95/001,207

32
transitions that are less than 20% of the overall “on-state” time and “off-
state” time of a synchronized controlled rectifier).
We glean from Figure 10f that the gate waveform is a truncated sine
or cosine wave. In the absence of any explanation in the Steigerwald ′539
specification, it is difficult to draw the conclusion that the transition from an
off-state to an on-state and vice versa takes less than 20% of the overall time
of the off and on states.
Patent Owner argues that the voltage across the primary winding in
Steigerwald ′539‟s Figures 4 and 6 embodiments follows a sinusoidal shape
as it gradually drops from Vo‟ to a negative peak value and then gradually
rises back to Vo‟ at the end of a half cycle. PO App. Br. 58. There is no
persuasive evidence to the contrary.
In the absence of persuasive evidence, the Examiner‟s conclusion is
speculative. We cannot conclude that claims requiring a “short” transition
per claim 1 are obvious based on such speculation. Therefore, we conclude
that the claims requiring “short” transitions (claims 1, 5-8, 11-13, 28 and 31)
are not obvious based on JP ′446 and Steigerwald ′539.
Patent Owner‟s argument regarding “short” transitions does not apply
to claims 20, 22-23, 27, 29-30 and 32-33.

E. Claims 2-4 and 21 obvious in view of JP ′446, Steigerwald ′539
and Kassakian
Kassakian discloses a square wave converter. PO App. Br., 63, citing
Kassakian, 4, Fig. 3. It is not helpful in addressing the shortcomings of JP
′446 and Steigerwald ′539 discussed above.

Appeal 2012-012209
Reexamination Control No. 95/001,207

33
F. Claims 9-10, 14-19 and 24-26 obvious in view of JP ′446,
Steigerwald ′539 and de la Cruz
Claims 9-10 and 25-26 require that the “output of the isolation stage is
about 12 volts.” The Examiner relies on de la Cruz as teaching the required
voltage ranges. Although de la Cruz may specify particular voltage ranges
that are recited in dependent claims, it is not helpful in resolving
obviousness based on the JP ′446 and Steigerwald ′539 references as
discussed above.

IV. OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS
A. Introduction
In deciding questions of obviousness, we must consider all four
Graham factors including objective evidence of so-called “secondary
considerations.” 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, Fed. Cir. 2012-1338, Aug. 7,
2013, slip op. at 15.
In addition to the technical arguments discussed above, Patent
Owner contends that documents and activities related to the ′497 litigation
14

involving the ′190 patent and introduced into the reexamination constitute
objective evidence of non-obviousness. Arguments based on these
documents relate to copying, commercial success, long-felt need, industry
praise, acting against conventional wisdom and achieving unexpected
results. PO App. Br., 8-39 and 66-72.

14
Requester was a defendant in the ′497 litigation.
Appeal 2012-012209
Reexamination Control No. 95/001,207

34
Notwithstanding Patent Owner‟s Seventh Amendment argument
15

(PO App. Br., 66-67), we do not blindly accept the determinations of the
district court. We consider the arguments presented and evaluate all of
evidence of record in the reexamination.
The Examiner discounted Patent Owner‟s objective evidence of
non-obviousness based on a lack of legally sufficient nexus between the
claims and the argued merits of the invention established based on the trial
evidence. It is typical in a patent examination or reexamination to establish
nexus using one or more declarations. In this case, the Examiner found that
the Schlecht Declaration was legally insufficient to establish the necessary
nexus. See, e.g., RAN, 14. However, a declaration is not the only
evidentiary vehicle for establishing non-obviousness based on objective
evidence. We must look beyond the boundaries of the Schlecht Declaration.
In the ′497 litigation, Patent Owner asserted claims for induced and
contributory infringement under 35 U.S.C. §§ 271(b) and (c), alleging that
the defendants sold power supply components with knowledge that they
would be used in, or were especially made to be used in, infringing systems
imported into the United States. Patent Owner also asserted direct
infringement under 35 U.S.C. § 271(a) with respect to certain U.S. sales. It
is undisputed that the defendants in the litigation manufactured and sold
various products described by the data sheets set forth as appendix items
A40-A82 of Patent Owner‟s Appeal Brief. Claims 2, 8, 10 and 19 were tried
to a jury, which found infringement and awarded damages based on lost

15
See In re Construction Equipment, Appeal No. 2010-1507 (Fed. Cir. Dec.
8, 2010) in which the majority did not adopt the dissent view that
reexamination was constitutionally barred by res judicata or issue
preclusion.
Appeal 2012-012209
Reexamination Control No. 95/001,207

35
profits. Although these jury findings are not controlling,
16
we find them to
be informative. The United States District Court for the Eastern District of
Texas entered judgment, which was upheld by the CAFC on appeal.
17

The timing between the reexamination and the district court litigation
became awkward for Patent Owner. In the reexamination in June 2010,
SynQor responded to Examiner rejections (“Response”),
18
attaching various
documents gleaned from public sources.
19
Requester submitted comments
in August 2010 (“Comments”). It was not until December 2010, that issues
of infringement and invalidity were tried to a jury. According to Patent
Owner, it was then that time that SynQor learned of defendants‟ testimony
and internal documents that had been previously shielded from SynQor by
operation of a protective order. See PO Resp. Br., 3.
The ′497 litigation jury determined that the defendants‟ (including
Requester) products infringed claims 2, 8, 10, and 19 of the ′190 patent. See
R6, 9-27. The district court entered judgment on the jury verdict. See R7.
The jury awarded lost profits, which, according to Patent Owner, indicates
that it determined that there were no suitable non-infringing alternatives for
the many infringing UIBA systems.
20
Thereafter, the court entered a
permanent injunction listing the defendants‟ products.
21
Patent Owner

16
Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988)
17
CAFC decision dated March 13, 2013 in 2011-1191, -1192, and -1194,
and 2012-1070, -1071, and -1072.
18
SynQor‟s response to non-final office action dated July 13, 2010, set forth
in the Evidence Appendix of the PO App. Brief, A3.
19
PO App. Br. Evidence Appendix, Al-A2 and A8-A82.
20
PO App. Br. Related Proceedings Appendix, R6, R8.
21
PO App. Br. Related Proceedings Appendix, R9, 3-5, and Evidence
Appendix A40-82.
Appeal 2012-012209
Reexamination Control No. 95/001,207

36
submitted trial transcripts and exhibits from trial to the Office as attachments
associated with Notices of Concurrent Proceedings in March 2011.

B. Procedural Matters
Requester argues that at least some of the litigation documents
submitted by Patent Owner were not properly introduced into the
reexamination. Notwithstanding Requester‟s argument that we should
disregard and not consider much of the court evidence because it was not
procedurally properly placed before the Office (Resp. Brief, 9-11), we do
not accept the view that evidence in the record is unavailable to us for
consideration.
Requester argues that Patent Owner relies improperly upon evidence
from the ′497 litigation in that Patent Owner exceeded the notice provisions
of 37 C.F.R. § 1.985, which only provides for notice of prior or concurrent
proceedings. Resp. Br., 9. Requester argues that documents R17-R49 in
particular should not be relied upon because they were not “rendered by a
court.” Resp. Br., 9. In reexamination practice in the Office, the Examiner
has discretion as to whether to expunge documents from the reexamination
record.
22
The record before us does not reflect any petition from Requester
to expunge documents. Nor does it reflect that any documents were
expunged. The substance of the documents of record has not been
challenged. We consider them and assign evidentiary value to each
document as appropriate.

22
See, e.g., MPEP § 2207 regarding “Entry of Court Decision in Patent
File.”
Appeal 2012-012209
Reexamination Control No. 95/001,207

37
C. Nexus
The Examiner relied heavily upon shortcomings of the Schlecht
Declaration (A1) in finding a lack of nexus. For example, in connection
with the Examiner‟s discussion of commercial success, the Examiner stated:
The Examiner is in agreement with the Patent
Owner that as the rejections were based on
obviousness, the issue of commercial success is
relevant to those rejections. The establishment of
commercial success of the invention may be a
sufficient secondary consideration to rebut a prima
facie case of obviousness. MPEP 716.01 and
716.03. Declaration of Martin F. Schlecht (“Dr.
Schlecht‟s Declaration”) has been carefully
reviewed; however, found to be lacking in showing
secondary considerations.
RAN, 12.
Patent Owner argues that a legally sufficient nexus has been
established by the Schlecht Declaration (A1), the data sheets (A40-A82)
describing products found to infringe and other documents (e.g., A11 and
A33), including the jury verdict form and district court judgment (R6-R9).
PO App. Br., 11.
The Schlecht Declaration ties the claims to data sheet descriptions at
paragraph 8, which explains that a UBC is used to drive multiple POL‟s.
The Examiner concluded that the data sheets do not include providing
an output from a UBC to a plurality of non-isolating regulation stages (RAN,
20) and that there was “no nexus between the merits of the claimed
invention [and the data sheets].” Id. We have reviewed the data sheets
including A-40 and, notwithstanding the Examiner‟s position, disagree. See,
Appeal 2012-012209
Reexamination Control No. 95/001,207

38
e.g., Murata‟s QBC data sheet, A40, 1, two portions of which are reproduced
below.
23

Excerpt from A40
We find that data sheet A40 describes a UBC corresponding to the
claimed “non-regulating isolation stage.” It explicitly suggests combining a
UBC with a POL to create a UIBA. Furthermore, data sheet A40 touts the
efficiency, size, and cost benefits resulting from using the UBCs in an IBA
power system. Thus, we disagree with the Examiner‟s finding (RAN, 20).
The district court decisions (R6-R9) based on the jury verdict
corroborate Patent Owner‟s argument that the UBC‟s described in the
defendants‟ data sheets fall within the scope of the patent claims. Prior to
trial, the district court reviewed extensive, confidential expert evidence and
concluded on summary judgment that most claim limitations were present in
the accused products. See R2-R5. The jury resolved the remaining issues at
trial, concluding that the accused UBCs and the UIBA systems incorporating
them infringe claims 2, 8, 10 and 19. R6, 9-27. In addition to entering a
judgment (R7) of infringement based on the jury verdict, the district court
issued a permanent injunction identifying product numbers corresponding to
the data sheets. R8, R9, 3-5; cf. A40-A82. We conclude from these actions
that the trial defendants‟ UBCs, described in the data sheets A40-A82, fall

23
See also A40-A41, A55-A60, A72-A76, A78, A81-A82, 1; R46, 68-74
(highlighting specific language in the defendants‟ data sheets).
Appeal 2012-012209
Reexamination Control No. 95/001,207

39
within the scope of the “non-regulating isolation stage” limitations of the
claims at issue. These conclusions support the establishment of a legally
sufficient nexus.
According to Requester, Patent Owner‟s arguments based on
objective evidence of non-obviousness fail because they rely upon
limitations taught by the prior art, namely separate isolation and regulation
stages. Resp. Br., 11. Requester demonstrates that it was known to use
separate isolation and regulation stages using a marked-up Figure 4 from
Miftakhutdinov.
24
See A8. Requester is correct that these references
demonstrate that it was known to connect an isolation stage with regulation
stages. Steigerwald ′090 and JP ′446 also demonstrate that is true.
However, the mere use of isolation and regulation stages was not enough to
make a practical solution required by the computer and telecom industries.
The Schlecht Declaration and other evidence suggest that it was not
until Dr. Schlecht taught how to make a practical power system (based on
the use of controlled rectifiers in a UBC) and disclosed his solution to
manufacturers that the computer and telecom industries adopted his
approach. That is when the industry adopted the language of UIBA, SIBA,
POL, etc. as the popular nomenclature describing power systems using that
approach.
Requester draws a distinction between Patent Owner‟s definition of
UIBA and “actual” UIBA, noting that claims 1-33 at issue do not require a
distributed architecture in which the regulator stages must be remotely
positioned with respect to the isolation stage. Resp. Br., 11-14. The claims

24
Requester compares a mark-up of Miftakhutdinov (A8), Figure 4, with
marked-up drawings from Steigerwald '090 and JP '446.
Appeal 2012-012209
Reexamination Control No. 95/001,207

40
are not limited to any particular positional relationship between the isolating
and regulating stages. Rather, the claims are directed to a particular
implementation (using rectifiers controlled in a particular manner) that made
it practical (ECS benefits) to provide a power system for major industries
that could replace their use of integrated power systems in which these two
functions were performed by the same circuit. Key to that practical
implementation is the use of controlled rectifiers in the isolation stage
operated in the manner described by the claims. Indeed, there are examples
of systems in which plural regulation stages are connected to the output of
an isolation stage, such as the Steigerwald ′090 and JP ′446 references. The
Schlecht Declaration and other evidence suggest to us that UIBA as
discussed neither requires nor prohibits any particular positional relationship
between isolation and regulation stages. It only requires that their functions
be carried out in separate and distinct circuit modules.
Requester argues that the trial evidence is not appropriately
considered in the reexamination because the terms “IBA,” “UIBA,” etc. are
not found in the ′190 patent claims. See Resp. Br., 14. Requester‟s
reasoning does not persuade us that the trial evidence should be disregarded.
The Schlecht Declaration explains that the industry adopted new language to
describe the inventions set forth in the SynQor patent family, including those
described by the ′190 patent claims. We are persuaded that this is so.
In SynQor‟s Appeal Brief and Response to Non-Final Office Action
filed July 13, 2010 (“Resp.”), Patent Owner explains that the ′190 patent
inventions have become known (since the writing of the application for
patent) as UIBA and SIBA, collectively “IBA concepts,” developed by Dr.
Martin F. Schlecht. Resp., 1; see also PO App. Br., 2. The Schlecht
Appeal 2012-012209
Reexamination Control No. 95/001,207

41
Declaration (A1) explains the SynQor introduction of UIBA and SIBA to the
market. Schlecht Decl. ¶¶ 5-9. The Declaration further explains that the
claimed non-isolated switching regulators are now commonly known as
“Point-of-Loads” (“POL”) that are used in implementing UIBA and SIBA.
Schlecht Decl. ¶ 8. We find the language shift to be explained adequately.
Requester argues, and the Examiner adopts, the position that the
claims at issue are not limited to UIBA or SIBA, and, thus, the evidence
provided is not commensurate in scope with the claims. RAN, 13-14. We
disagree. It is true that the terms “UIBA” and “SIBA” do not appear in the
claims. Each of the independent claims describes a combination of a non-
regulating isolation stage with a non-isolating regulation stage.
The Schlecht Declaration, paragraphs 6-7, state that SynQor
introduced the claimed architectures (later to become known as UIBA and
SIBA) to manufacturers as early as the winter of 2000/2001 and they began
to introduce these concepts into products. The data sheets and testimony
using these terms and the jury finding of infringement of products described
by the data sheets suggest that this is the case.
Each independent claim describes that the isolation stage includes
controlled rectifiers and that the stage is operated in a certain manner. The
independent claims do not require much more than that. Thus, they are
reasonably commensurate in scope with the products described by the data
sheets. Four claims of the ′190 patent were found to have been infringed.
The jury was able to find all of the claim elements of at least four of the
claims in a plurality of the defendants‟ products described by the data sheets.
We find that the data sheet descriptions are reasonably commensurate in
scope with the infringed claims. We are not persuaded of a lack of nexus
Appeal 2012-012209
Reexamination Control No. 95/001,207

42
and to disregard the objective evidence of non-obviousness because the
language adopted by the industry subsequent to the Schlecht invention does
not appear ipsis verbis in the claims of the ′190 patent.
The Examiner finds that there is insufficient evidence to show how
the allegedly successful product “embodies the claims.” RAN, 13.
However, Patent Owner has submitted evidence to the contrary. The
Schlecht Declaration (A1), data sheets for the infringing UBCs (A40-A82),
and other documents (e.g., A11, A33) demonstrate that a number of products
(both UBCs and UIBAs) fall within the scope of the claims. A jury found
that claims 2, 8, 10 and 19 were infringed.
UBC data sheets disclose the “non-regulating isolation stage” (A40-
A82) of the patent claims and teach that these components are combined
with POLs to create UIBAs, thereby meeting the remaining claim
requirements. See A1, A11, A33, A40-A82. As Dr. Schlecht explained, a
UBC is used to drive multiple POLs. A1 ¶ 8.
We agree with the Examiner that the Schlecht Declaration does not,
by itself without any other evidence, establish nexus, commercial success,
etc. However, the declaration does not stand alone. In our view, the
Examiner placed too much burden on the Schlecht Declaration itself, as if it
were the only manner of proving nexus from the claims to the objective
evidence of non-obviousness. The Examiner brushed aside the trial
evidence too easily by placing too much emphasis on the Shlecht
Declaration.
We conclude that Patent Owner has established a legally sufficient
nexus despite the noted shortcomings of the Schlecht Declaration.

Appeal 2012-012209
Reexamination Control No. 95/001,207

43
D. Commercial Success
Patent Owner argues that objective evidence establishes commercial
success of the claimed invention.
The Examiner finds the Schlecht Declaration insufficient to establish
commercial success:
However, the Declaration fails to provide adequate
evidence of commercial success relying on sales numbers;
and sales numbers absent market share fail to establish
commercial success. The Declaration states that Dr.
Schlecht believes that two million unregulated bus
converters have been purchased for use in Unregulated
lBA, and only provides estimated gross sales figures. The
Declaration fails to provide any information relating to
market share and clearly evidence attributable to the scope
of the claims, therefore, the Declaration is not sufficient to
establish commercial success.
Patent Owner also has failed to provide any evidence that
establishes that any commercial success of the
Unregulated IBA is not because of other, unclaimed
features, Patent Owner‟s advertising, or factors not related
to the limitations recited in the claims of the ′190 patent.
See MPEP 716.03(b).
RAN, 14-15.
Patent Owner argues that the Schlecht Declaration together with
evidence from trial establishes commercial success of the claimed invention.
The Schlecht Declaration describes unit sales of infringing UBCs based on
market analysis. A1, ¶¶ 7, 8, 11. Damages at trial were based on 2 million
infringing UBCs. Patent Owner points to the testimony of a Lineage (a co-
defendant with Requester) witness who testified that “hundreds of
thousands” of bus converter shipments would be considered “quite
commercially successful.” PO App. Br., 16, citing R28 at 63:1-12.
Appeal 2012-012209
Reexamination Control No. 95/001,207

44
The trial evidence demonstrates that more than 2 million units were
sold in the U.S. and more than 5 million units were sold worldwide from
December 2006 through trial. PO App. Br., 17, citing R24 at 196:5-198:15;
R47.
Patent Owner argues that the infringing products constitute
substantially the entire market for devices of the type claimed. PO App. Br.,
17. According to Patent Owner, documents A13 and A23 demonstrate
market penetration. According to Patent Owner, Cisco employees
confirmed that the ECS benefits are the reasons why UIBA replaced its prior
designs. PO App. Br., 23, citing R22; see PO App. Br., footnote 18. Patent
Owner presented and argued that the commercial success of the defendants‟
products flowed from the invention as claimed. PO App. Br., 22.
The Examiner agrees with Patent Owner that the issue of commercial
success of the invention may be a sufficient “secondary consideration” to
rebut a prima facie case of obviousness. However, the Examiner finds that
the “Declaration of Martin F. Schlecht („Dr. Schlecht‟s Declaration‟) has
been carefully reviewed; however, found to be lacking in showing secondary
considerations.” RAN, 12. The Examiner correctly notes that objective
evidence of non-obviousness, including commercial success, must be
commensurate in scope with the claims. According to the Examiner:
The Declaration must show a legally sufficient
relationship between the claimed feature and the
commercial success. However, Dr. Schlecht‟s Declaration
fails to establish the required Nexus between the
commercial success and the featured of the claims; there is
no adequate supporting evidence to show how the product
embodies the claims and how the success is a result of the
claimed feature. There is no verification linking the
product of the claimed feature and no nexus has been
Appeal 2012-012209
Reexamination Control No. 95/001,207

45
shown between the evidence and the subject matter of the
claims. The claims are not limited to Unregulated or
Semi-regulated IBA, thus, the evidence provided is not
commensurate with the claims. Without the detail
illustration to explain how the required nexus is
corresponding with the scope of the claims, the
commercial success fails to provide sufficient supporting
evidence.
All the evidence in the declaration does stating the
advantages of the product such as higher efficiency,
smaller device footprint and lower overall cost of its
devices. However, the declaration fails to clearly provide
facts of how the invention is embodied in the product or
how the commercial success is attributable to the
invention as claimed. Patent Owner fails to link the
alleged commercial success with these alleged advantages
and fails to link any of these advantages to any specific
claim limitation.
RAN, 13-14. The Examiner also finds that the Schlecht Declaration does
not provide sales numbers and market share. RAN, 14. According to the
Examiner, the declaration fails to provide sufficient facts related to how the
invention is embodied in the product or how the commercial success is
attributable to the claimed invention. RAN, 14. According to the Examiner,
without a “detail[ed] illustration to explain how the required nexus is
corresponding with the scope of the claims, the commercial success fails to
provide sufficient supporting evidence.” RAN, 14.
As discussed above, we find a nexus between the claims and the ′497
litigation documents. We do not subscribe to the view that commercial
success must be established solely by a declaration. In our view, the
Examiner placed too much emphasis on the shortcomings of the Schlecht
Declaration and failed to consider the other evidence argued by Patent
Owner.
Appeal 2012-012209
Reexamination Control No. 95/001,207

46
The district court damage award and its underlying established facts
are helpful, particularly in view of SynQor‟s status as a start-up and the
established industry in which the defendants were major players. PO App.
Br., 24.
Requester notes correctly that Patent Owner has not identified feature
for feature what is shown in each data sheet. Resp. Br., 25. Patent Owner
admits that “some” data sheets describe using controlled rectification. PO
App. Br., 21. Patent Owner identifies only one data sheet (A40) in its
Appeal Brief that describes a POL. Our review of the data sheets does not
readily reveal any that describe the “droop” voltage characteristic of claims
27-29 and 32-33. Thus, we attribute little weight to Patent Owner‟s
evidence of commercial success to this particular feature. Nevertheless, the
data sheets describe products related to Patent Owner‟s claims and IBA as it
became known after the Schlecht invention.
Based on the evidence submitted at trial, it was established that the
UBCs described in the defendants‟ data sheets have no substantial non-
infringing use other than to create infringing UIBA systems and that there
are no suitable non-infringing alternatives to the infringing UIBA systems.
On this basis, the jury awarded lost profits. R23, 171:6 -187:21; R24, 4:4-
15:7, 165:3 - 165:18.
Based on the above, we find that the commercial success described by
the Declaration and trial documents is at least somewhat persuasive of the
non-obviousness of making the claimed invention.

Appeal 2012-012209
Reexamination Control No. 95/001,207

47
E. Long-Felt Need
The Examiner found that there was no long-felt need in the industry
for the ′190 patent invention. The Examiner relied upon the alleged
inadequacy of the Schlecht Declaration regarding Patent Owner‟s long felt
need argument:
The declaration does not show that there was a constant
need recognized by those of ordinary skill in the art and
fails to clearly define the claimed subject matter solved a
problem that was long standing in the art.
Dr. Schlecht‟s Declaration merely states the alleged
advantages a variety of stable output voltages, efficiency,
cost, performance, size, reliability, and time to market are
long-felt needs but fails to explain how any of the specific
limitations of the claims satisfy any of these needs.
RAN, 17 .
Patent Owner argues that there was a long-felt need in the computer
and telecom industry for a power supply of the type described by the ′190
patent claims that had gone unmet. According to Patent Owner, SynQor
established that, as early as 1991, it was recognized that DPA (distributed
power adapter) was becoming more unsuitable for applications requiring
multiple “ultra low voltages” at “ultra high currents.” PO App. Br., 27-29,
quoting A14, A17, A29. Other contemporaneous publications confirmed
that the need increased as lower voltage loads emerged, leading to more
voltage rails that increased costs and reduced space for end-components.
See A17.
According to Requester, Narveson (A29) provided a solution (albeit a
different solution) to the same problem addressed by the ′190 patent. Resp.
Br., 17. However, given how the industry flocked to the Schlecht invention,
we find that was not the case. Narveson (A29) acknowledged the problem,
Appeal 2012-012209
Reexamination Control No. 95/001,207

48
but he did not solve it. He provided a multi-stage design that was inefficient
due to the “double conversion.” PO App. Br., 27, citing A29, 1, and A28, 3.
It is impressive that the high-end computer market and telecom
equipment market turned to the Schlecht solution and adopted it. Patent
Owner points to evidence that even two years after the ′190 patent
invention, Requester‟s engineers still believed that it “will cost effectively
fill a growing need currently addressed with rather expensive [DPA]
„bricks.‟” PO Brief, 28, citing R39, 1. DPA “bricks” that dominated the
switch market (A 7, 22; R39, 1) were swept aside by Dr. Schlecht‟s design,
which Cisco and others widely adopted after Dr. Schlecht demonstrated its
value.
At least some weight must be given to the reasonable inference from
the evidence that other designs failed to answer a need that the ′190 patent
invention answered.

F. Industry Praise
The Examiner finds that evidence points to praise for IBA but that the
claims are not limited to IBA. They do not require a distributed architecture.
RAN, 18-19. However, the claims encompass IBA. See In re Glatt Air
Techniques, Inc., 630 F.3d 1026, 1030 (Fed.Cir.2011) (“Under the [Office's]
logic, there would never be commercial success evidence for a claim that
covers more than one embodiment.”) Moreover, the record shows that
implicit in the praise for IBA is praise for the specific type of IBA required
by claim 1 and other claims, the controlled synchronous rectifiers. As
discussed above, we do not equate IBA to a simple distributed architecture
which lacks controlled synchronous rectifiers, and, therefore, disagree with
Appeal 2012-012209
Reexamination Control No. 95/001,207

49
the Examiner‟s conclusion as to lack of nexus. The industry praise found by
the Examiner is helpful as objective evidence of non-obviousness. See
Apple Inc. v. ITC, No. 2012-1338, 2013 WL 4007535, at *8, n.4 (Fed. Cir.
Aug. 7, 2013) (“Apple‟s evidence of industry copying of the multitouch
screen and industry praise of this feature are strong evidence of nexus.”)

G. Copying
Patent Owner argued, based on access and substantial similarity, that
Requester and others copied the ′190 patent claimed arrangements. PO
App. Br., 34. Patent Owner points to documents that became public at trial
including certain allegedly “smoking gun” emails showing that Cisco/HP
provided SynQor confidential technology to the defendants. PO App. Br.,
34, citing R31-R38. Patent Owner argues that documents show that some
manufacturers changed their designs to “chase SynQor.” PO App. Br., 35;
R10 at 5-6, 9-11, 13-14 and 16-17; trial transcripts R20-R29. Patent Owner
argues substantial similarity based on a comparison of R44-R45 with A40-
A82. PO App. Br., 35.
According to Requester, Patent Owner failed to establish copying.
Resp. Br., 17. Requester relies on the distinction between UIBA as defined
by Patent Owner and “actual” UIBA. Requester‟s argument is that because
UIBA was known prior to the ′190 patent invention, it was not copied from
Schlecht.
Appeal 2012-012209
Reexamination Control No. 95/001,207

50
However, the evidence suggests that the industry adopted devices
made in accordance with “UIBA” as claimed in the ′190 patent after
Schlecht disclosed his circuits to various power system manufacturers.
25

Requester correctly notes (Resp. Br., 17) that Patent Owner did not
address the question of at least one litigation defendant‟s alleged
independent development of UIBA.
We conclude from our review of the evidence cited by Patent Owner
that there is evidence of copying and give it at least some weight.

IV. CONCLUSION
We conclude based on the evidence presented (including the Schlecht
Declaration and the trial documents) that a legally sufficient nexus exists
between the claims under reexamination and the objective evidence of non-
obviousness presented by the data sheets and other documents related to the
′497 litigation that were introduced in the reexamination record.
Based on our analysis of the technical arguments presented and the
objective evidence of non-obviousness, we are persuaded from the record
before us that claims 1-33 would not have been obvious to one of ordinary
skill in the art at the time of the ′190 patent invention. We, therefore, do not
sustain the obviousness rejections of these claims.

25
See also table summarizing models of UBCs and SIBAs offered for sale in
the Response (to non-final office action) at 25.
Appeal 2012-012209
Reexamination Control No. 95/001,207

51

V. ORDER
For the reasons given, it is

ORDERED that the Examiner‟s rejections of claims 1-33 are
reversed.

peb

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