MLC INTELLECTUAL PROPERTY , LLC (ASSIGNEE) et al.

Patent Trials and Appeals BoardNov 2, 2021

2020005915 (P.T.A.B. Nov. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/014,245 12/18/2018 5764571 4293 37086 7590 11/02/2021 POLSINELLI PC (NDQ REEXAMINATION GROUP) PO Box 140310 Kansas City, MO 64114-0310 EXAMINER LEE, CHRISTOPHER E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/02/2021 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 ____________ MLC INTELLECTUAL PROPERTY, LLC Patent Owner and Appellant ____________ Appeal 2020-005915 Reexamination Control No. 90/014,245 Technology Center 3900 Patent 5,764,571 ____________ Before ALLEN R. MACDONALD, JOHN A. JEFFERY, and KEVIN F. TURNER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2020-005915 Reexamination Control No. 90/014,245 Patent US 5,764,571 2 Appellant requests rehearing of our decision dated March 1, 2021 (“Mar. 2021 Reh’g Dec.”). Request for Rehearing filed July 2, 2021 (“July 2021 Reh’g Req.”). In that decision, we granted Appellant’s request to rehear our decision dated November 2, 2020 (“Nov. 2020 Dec.”) only to the extent that we: (1) designated our affirmance of the Examiner’s decision to reject claims 1, 9, 12, 30, 42, and 45 under 35 U.S.C. § 103 over Kitamura and Noguchi,1 as a new ground of rejection; (2) entered a Supplemental Declaration from Dr. Jack Lee,2 submitted with Appellant’s first rehearing request; and (3) modified our decision solely to address Appellant’s newly- raised arguments based on that newly-submitted declaration. All other aspects of our November 2020 decision, however, remained the same and were incorporated by reference in our earlier rehearing decision which we incorporate here as well. See Mar. 2021 Reh’g Dec. 2. In this second rehearing request, Appellant contends that we not only improperly placed the burden on Appellant to disprove the proposed modification to the prior art, we failed to provide reasoning for crediting Dr. Liu’s testimony over that of Dr. Lee. See July 2021 Reh’g Req. 5–7. For the reasons below, we are not persuaded that we misapprehended or overlooked those points in rendering our decision. 1 Because these references are cited in full on page 3 of our November 2, 2020 decision, we omit their full citations here for brevity. 2 Supplemental Expert Declaration of Dr. Jack Lee, In Support of Patent Owner’s Request for Rehearing, dated Jan. 3, 2021 (“Supp. Lee Decl.”). Appeal 2020-005915 Reexamination Control No. 90/014,245 Patent US 5,764,571 3 Expert Testimony Weighed First, we explained in detail in our earlier decision why we found Dr. Liu’s testimony persuasive in connection with the Examiner’s proposed combination. See Nov. 2020 Dec. 9–16. Despite Appellant’s arguments to the contrary, Dr. Liu’s testimony is not merely conclusory, but explains why the proposed combination would have been obvious to ordinarily skilled artisans based on the evidence of record, including the disclosures of Kitamura and Noguchi, considered in light of the knowledge of ordinarily skilled artisans and fundamental electrical engineering principles. That is, Dr. Liu’s testimony is based on the disclosed structure and functionality of both Kitamura and Noguchi, as well as the inferences ordinarily skilled artisans would have reasonably drawn from those disclosures given those artisans’ knowledge and experience. Certainly, Dr. Liu’s credentials in the electrical engineering field detailed in paragraphs 4 to 9 and Exhibit I of his declaration dated December 17, 2018 establish his knowledge and experience in the field and, therefore, his qualification to testify regarding what the evidence of record, including the disclosures of Kitamura and Noguchi, would have taught or suggested to those of ordinary skill in the art which, as we noted in footnote 3 on page 9 of our November 2020 decision, is relatively high.3 Although we understood and appreciated Dr. Lee’s countervailing views, we nonetheless explained that we found no persuasive basis on this 3 As noted in footnote 3 on page 9 of our November 2020 decision, one of ordinary skill in the art at the time of the invention would have: (1) an undergraduate degree in electrical engineering (or equivalent subject), along with three to four years of post-graduate experience designing Appeal 2020-005915 Reexamination Control No. 90/014,245 Patent US 5,764,571 4 record to credit Dr. Lee’s testimony over that of Dr. Liu. See Mar. 2021 Reh’g Dec. 4. We reached that conclusion based on the evidence of record, including the respective disclosures of Kitamura and Noguchi considered in light of the knowledge of those with ordinary skill in the art, informed by the documentary evidence of record and the testimony of both Dr. Lee and Dr. Liu. To be sure, expert testimony that is merely conclusory is inadequate to support obviousness determinations. TQ Delta, LLC v. Cisco Systems, Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019). But unlike the expert testimony noted in TQ Delta that failed to explain meaningfully why ordinarily skilled artisans would have combined elements from the cited references to arrive at the claimed invention, see id. at 1359–60, here, both of Dr. Liu’s declarations explain in detail why the proposed combination would have been feasible technically based on facts from the evidence of record, including the cited references themselves considered in light of the knowledge of ordinarily skilled artisans. See Declaration of David Kuan-Yu Liu, dated Dec. 17, 2018 (“Liu Decl.”) ¶¶ 59–87, 92–93; see also Supplemental Declaration of David Kuan-Yu Liu, dated May 30, 2019 (“Supp. Liu Decl.”) ¶¶ 15–41. In short, the aspects of Dr. Liu’s testimony that we found persuasive have a reasonable evidentiary and technical foundation, particularly given the relatively high level of skill in the art. To be sure, Dr. Lee’s credentials summarized in paragraphs 1 and 2 of his declaration establish that he, like Dr. Liu, is qualified to testify regarding semiconductor and memory devices; or (2) a master’s degree in electrical engineering (or equivalent subject) together with one or two years of post- graduate experience designing semiconductor and memory devices. Appeal 2020-005915 Reexamination Control No. 90/014,245 Patent US 5,764,571 5 the merits of the proposed combination given his knowledge and experience in the electrical engineering field. See Declaration of Dr. Jack Lee, dated Apr. 26, 2019 (“Lee Decl.”) ¶¶ 1–2. Although both experts have commensurate qualifications in this regard, we nonetheless saw no reason to credit Dr. Lee’s testimony over that of Dr. Liu, particularly given (1) the lack of persuasive corroborating evidence supporting Dr. Lee’s disagreement with Dr. Liu, and (2) Dr. Liu’s detailed explanations based on the evidence of record and fundamental electrical engineering principles that provide at some rational basis and technical justification for Dr. Liu’s testimony. See Mar. 2021 Reh’g Dec. 3–4. Although both experts have impressive credentials in the electrical engineering field, we nonetheless found Dr. Liu’s testimony more persuasive than that of Dr. Lee at least with respect to the propriety of the Examiner’s proposed combination. For example, we found persuasive Dr. Liu’s testimony that uniformity can be achieved under the proposed combination by sharing reference voltage supplies, namely four separate voltage supply circuits, particularly given Kitamura’s teaching in paragraph 11 of sharing a reference voltage supply to make the conversion circuits’ characteristics uniform. To be sure, our emphasis underscores that Kitamura uses the singular term “supply” and not “supplies” in this context. Nevertheless, even assuming, without deciding, that Kitamura’s term “supply” in paragraph 11 is limited to one and only one reference voltage supply, we nonetheless found no persuasive evidence on this record proving that sharing four such supplies as Dr. Liu proposes in paragraphs 32 and 33 of his supplemental declaration would render the device under the proposed combination inoperable or otherwise unsuitable for its intended purpose. Given Kitamura’s explicit teaching of Appeal 2020-005915 Reexamination Control No. 90/014,245 Patent US 5,764,571 6 sharing a reference voltage supply to achieve uniformity in paragraph 11, sharing multiple such supplies as Dr. Liu proposes is reasonably consistent with this teaching and, therefore, would have been at least an obvious variation to ordinarily skilled artisans. Although Dr. Lee disagrees with Dr. Liu in this regard, and avers that ordinarily skilled artisans would ostensibly be unaware of a way to replace Kitamura’s single reference voltage with four separate reference voltage supplies (Supp. Lee Decl. ¶ 29), there is no persuasive evidence on this record to corroborate that assertion. Although multiple output voltages can be achieved in a converter circuit with a single voltage source and voltage dividing resistors as Dr. Lee indicates in paragraph 28 of his supplemental declaration, that still does not prove that using multiple voltage sources in lieu of a single voltage source as Dr. Liu proposes would have been beyond the level of ordinarily skilled artisans or render the device unsuitable for its intended purpose. In short, although we appreciated Dr. Lee’s insights articulated in his declaration and supplemental declaration, we nonetheless remained more persuaded by Dr. Liu’s testimony and saw no reason to disturb our determination in that regard. See Nov. 2020 Dec. 13–15; Mar. 2021 Reh’g Dec. 2–4. Nor do Appellant’s contentions in the July 2021 Rehearing Request convince us otherwise. Independent Obviousness Rationale Unrebutted In our March 2021 decision, we reiterated the well-settled notion that an obviousness determination based on teachings from multiple references does not require an actual, physical substitution of elements, but rather obviousness is based on what the cited references’ collective teachings Appeal 2020-005915 Reexamination Control No. 90/014,245 Patent US 5,764,571 7 would have suggested to ordinarily skilled artisans. Mar. 2021 Reh’g Dec. 4–5 (citing In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)). We also acknowledged that to the extent the Examiner’s articulated basis for the rejection somehow ignored or otherwise discounted this fundamental obviousness principle, we reiterated that principle in our March 2021 decision as an independent basis for obviousness as part of our new ground of rejection. Mar. 2021 Reh’g Dec. 5. In other words, we entered new grounds of rejection based on, among other things, an independent combinability rationale that is not based solely on a simple substitution that Appellant contended was the only basis articulated by the Examiner as noted in footnote 3 of our March 2021 decision. See Mar. 2021 Reh’g Dec. 4–5. Notably, Appellant’s July 2021 rehearing request does not squarely address—let alone persuasively rebut—this independent combinability rationale that differs from that premised on a simple substitution. Nevertheless, to the extent Appellant’s contentions in the July 2021 rehearing request somehow apply to this independent ground of rejection, we are not persuaded that we misapprehended or overlooked any points pertaining to that determination. Appeal 2020-005915 Reexamination Control No. 90/014,245 Patent US 5,764,571 8 CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 9, 12, 30, 42, 45 103(a) Kitamura, Noguchi 1, 9, 12, 30, 42, 45 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 9, 12, 30, 42, 45 103(a) Kitamura, Noguchi 1, 9, 12, 30, 42, 45 DENIED PATENT OWNER: POLSINELLI PC PO BOX 140310 KANSAS CITY, MO 64114-0310 THIRD PARTY REQUESTER: SMITH BALUCH LLP 376 BOYLSTON STREET STE 401 BOSTON, MA 02116