Ex Parte 6639588 et al

Patent Trial and Appeal Board

Dec 20, 2012

95000455 (P.T.A.B. Dec. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,455 04/27/2009 6639588 INNL-003/00US
307699-2005
1217
37509 7590 12/20/2012
DECHERT LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/20/2012 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
____________
CHIMEI INNOLUX CORP.
Requester and Respondent

v.

Patent of MONDIS TECHNOLOGY, LTD.
Patent Owner and Appellant
____________________

Appeal 2012-002715
Reexamination Control 95/000,455
Patent US 6,639,588 B2
Technology Center 3900

____________

Before RICHARD TORCZON, HOWARD B. BLANKENSHIP, ALLEN R.
MacDONALD, SCOTT R. BOALICK, and STEPHEN C. SIU,
Administrative Patent Judges.

PER CURIAM

DECISION ON REQUEST FOR REHEARING
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INTRODUCTION1
In an earlier Decision (mailed July 11, 2011), the Board reversed the
Examiner’s final decision favorable to the patentability of claims 1-5 and
entered rejections consistent with grounds proposed by Requester. Owner
elected to reopen prosecution before the Examiner (37 C.F.R. § 41.77(b)(1)).
The proceeding returned to the Board pursuant to 37 C.F.R. § 41.77(f). In
our new Decision on Appeal mailed July 2, 2012, we affirmed the
Examiner’s decision adverse to the patentability of claims 1-5.
Patent Owner has filed (Aug. 2, 2012) a Request for Rehearing (37
C.F.R. § 41.79(a)(4)) that contends we erred in the new Decision on Appeal
(“New Decision”). Requester has filed (Sept. 4, 2012) Comments in
Opposition to Owner’s request for rehearing (37 C.F.R. § 41.79(c)).

DISCUSSION
Owner argues again in the Request for Rehearing that Webb (US
5,216,504) fails to teach a control signal that “includes an instruction for
reading out said data from said memory” as claimed. However, we
considered the evidence provided by Owner and Requester and found
Requester’s Richter Declaration to be the more credible, and specified some
reasons why. New Decision 5-7.
We also found the Richter Declaration in support of why the artisan
would have used standard handshaking signals as set forth in the RS232C

1 This appeal is related to the inter partes reexamination of US 6,686,895
B2, Control No. 95/000,456, Appeal No. 2012-003164, and to the inter
partes reexamination of US 6,304,236 B1, Control No. 95/000,460, Appeal
No. 2012-007868.
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standard to confirm proper reception of signals, and why the artisan would
have used the handshaking procedures regardless of the “visual” feedback
calibration procedure taught by Webb, to be the more credible.
In fact, Owner’s own expert admits that designers can add circuitry
and logic to an RS232 interface to implement communications protocols that
include reception confirmation signals. Lamm Decl. (attached to Patent
Owner Response After Board Decision, Aug. 11, 2011) ¶ 28. “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007). The operative question is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions.” Id. Even if additional circuitry and logic were needed to effect
reception confirmation signals, such an improvement represents no more
than the predictable use of prior art elements according to their established
functions, rendering the predictable result of confirming to the sender that a
data signal has been properly received.
Owner in the Request also contends that we erred in stating that the
Spiro Declaration fails to allege, in express terms, that the '588 patent has
been licensed to any entity. As we noted, the Declaration states that relevant
companies have entered into license agreements, “expressly or implicitly
encompassing the Patents (for example, by reference to priority applications
or functionality)” with monitor companies. New Decision 9-10. Owner in
the Request submits the theory that “implicitly encompassing” the patents
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“by reference to priority applications” may be understood to indicate “all
patents issuing from continuations and divisional [sic] of priority application
xxx,xxx.” Req. R’hrg 10. Owner makes no attempt to explain what
“implicitly encompassing” by reference to “functionality” might mean.
In any event, we reiterate that the Spiro Declaration fails to provide
sufficient details of the licensing as it might relate to the claimed invention
of the '588 patent. Moreover, manifestly, if a patent license was accepted
because the '588 patent issued from a continuation or divisional of some
priority application, no nexus has been shown between licensing of the '588
patent and the merits of the invention (issued claims) of the '588 patent as
opposed to the claimed invention of the priority application.
Owner also alleges that the Board states that Patent Owner has merely
established that “parts of the claims” may read on “portions of standards” to
indicate that Patent Owner has not established that VESA has incorporated
the patented “technology” into the industry standards and that those
standards describe a display that “practices” the claims of the '588 patent.
Req. R’hrg 13. Apparently, Owner bases the allegation on the following
statement: “However, Owner has cited no authority for the proposition that
because parts of the claims may read on portions of standards that were
promulgated by an industry standards-setting committee, the claimed
invention is demonstrated to be non-obvious by showing industry acceptance
and commercial success of the promulgated standards.” New Decision 12.
Rather than citing some authority for the position, Owner again
alleges that parts of the claims read on portions of the promulgated
standards. For example, Owner submits: “Finally, Mr. Lamm explains that
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the DDC/CI standard requires use of I2C communications protocols, which
implement reception confirmation signals back to the computer when the
display receives a command across the interface. Id. at ¶ 35 (corresponding
to limitation in claim 1).” Req. R’hrg 14. However, the Lamm Declaration
does not address any specific claim limitations in the indicated section.
“DDC/CI is implemented over a bi-directional I2C communication channel.
Exh. A at MTL018087. The I2C specification uses a communications
protocol in which the display sends acknowledgement signals when
receiving control signals from the display unit.” Lamm Decl. ¶ 35.
Lamm Declaration Exhibit A, which describes the DDC/CI VESA
standard as of October 29, 2004, states that “DDC/CI compliant designs
shall comply with the Philips I2C Specification.” Lamm Ex. A at 13, § 2.1.
However, the DDC/CI System Architecture, Hardware Implementation,
Communication Basic Commands, Communications Protocol, Software
Implementation, and Support of Display Dependent Devices spans about 22
pages. There is insufficient evidence in the record to establish that
commercial success of the DDC/CI VESA standard was due to ('588 patent
claim 1) transmitting an acknowledge signal to acknowledge receiving the
control signal at the receiver to the external computer, in combination with
the other features of claim 1. Moreover, as we indicated in the New
Decision, a basic problem with Owner’s position is that commercial success
and industry acceptance of a promulgated industry standard is most likely
because it is a promulgated industry standard. Owner has not demonstrated
success and acceptance of a de facto standard adopted by buyers due to the
merits of the invention as compared with the merits of competing
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alternatives, which would tend to show non-obviousness as a secondary
consideration.
We have not addressed numerous new arguments that Owner raises in
the Request that could have been earlier presented. Arguments not raised in
the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in a rehearing, except in circumstances that do not
apply here. See 37 C.F.R. § 41.79(b)(1). However, to the extent that some
arguments might be considered timely, we find the arguments to be
adequately addressed in Requester’s Comments in Opposition.

DECISION
We have granted Owner’s request for rehearing to the extent that we
have reconsidered our decision affirming the rejection of claims 1-5, but we
decline to modify the decision in any way.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. § 1.304(a).

DENIED

cu

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cc:

FOR PATENT OWNER:

DECHERT, LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460

FOR THIRD-PARTY REQUESTER:

COOLEY GODWARD KRONISH, LLP
ATTN: PATENT GROUP
777 6TH STREET, NW
SUITE 1100
WASHINGTON, DC 20001