95002009 (P.T.A.B. Aug. 1, 2016)

Ex Parte 7259972 et al

Patent Trial and Appeal BoardAug 1, 2016

95002009 (P.T.A.B. Aug. 1, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ POWER INTEGRATIONS, INC. Requester v. FAIRCHILD SEMICONDUCTOR CORPORATION Patent Owner ____________________ Appeal 2015-007691 Reexamination Control 95/002,009 Patent No. 7,259,972 B2 Technology Center 3900 ____________________ Before JOHN A. JEFFREY, MARC S. HOFF, and ERIC B. CHEN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2015-007691 Reexamination Control 95/002,009 Patent No. 7,259,972 B2 2 INTRODUCTION Patent Owner requests rehearing of the portion of our Decision entered December 31, 2015 (“Decision”), in which we affirmed the rejection of claims 1, 2, 5–7, 11, 12, 15, 17–19, 22, 32, 34, and 52–66. OPINION We will maintain the rejections. PRINCIPLES OF LAW A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision. It may not raise new arguments or present new evidence except as permitted by paragraphs (a)(2) though (a)(4). Id. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. ANALYSIS CLAIM CONSTRUCTION ARGUMENTS Patent Owner argues that the Examiner “erroneously used extrinsic evidence to advance a construction of the claim term ‘feedback signal’ that contradicts the ‘972 patent specification.” Req. Reh’g 3. Patent Owner Appeal 2015-007691 Reexamination Control 95/002,009 Patent No. 7,259,972 B2 3 asserts a construction of “feedback signal” as “an output that is fed back to the input.” Id. Patent Owner asserts that feedback signal VCS “is associated with a current control loop (as claimed) including, inter alia, current- waveform detector 300, integrator 400, oscillator 200, and PWM 500 as shown in Fig. 3.” Id. Patent Owner here does not raise a “matter overlooked or misapprehended by the Panel.” Patent Owner’s remarks assert only that the Examiner erroneously used extrinsic evidence, and that the RAN’s interpretation is contrary to the plain meaning of “feedback” and to other extrinsic evidence of record. See Req. Reh’g 3–5. Such an argument does not fall within the limits expressed by § 41.52. Even assuming that Patent Owner correctly ascribed this error to the Board, Patent Owner’s argument is not persuasive. Patent Owner argues that “the Examiner’s findings were clearly inconsistent with the ‘972 patent.” Req. Reh’g 3. We disagree with Patent Owner’s premise. We do not agree with Patent Owner that feedback signal VCS fails to comply with the construction of a “feedback signal” as “the return of part of an output signal back to the input side of a device.” See Req. Reh’g 5. Patent Owner’s proposed construction of “feedback signal” does not, by its terms, exclude the presence of further components, such as the current-waveform detector, integrator, oscillator, and PWM elements listed supra. Patent Owner’s argument that construction of “a second feedback signal associated with a current control loop” was improper, because it ignored the District Court’s construction, is not persuasive. The Board did not ignore the District Court’s construction, but rather considered and Appeal 2015-007691 Reexamination Control 95/002,009 Patent No. 7,259,972 B2 4 rejected it. The Board noted in the Decision that “[w]e do not share . . . Patent Owner’s assertion that ‘[a] comparator is not a device that returns part of an output signal back to its input side.’” Decision 9. Even if we were to assume that the District Court’s construction is the appropriate one, Patent Owner has not explained in the Request for Rehearing why such a construction would change the outcome of the Decision. As Patent Owner concedes, this Board is “not generally bound by a prior judicial construction of a claim term.” Req. Reh’g 6; see In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007). To the extent it was merely implicit that the Board did not consider itself bound by the district court’s claim construction, we now so state explicitly. We otherwise maintain the claim construction stated in the Decision, however. CLAIM CONSTRUCTION STANDARD ARGUMENT Patent Owner’s argument for “plain and ordinary meaning” claim construction, rather than the “broadest reasonable interpretation” applied by the Board, is unpersuasive for two reasons. First, the Supreme Court recently affirmed the USPTO’s “reasonable exercise of the rulemaking authority granted . . . by statute” in issuing 37 CFR § 42.100(b), which calls for giving a patent claim “‘its broadest reasonable construction in light of the specification of the patent in which it appears.’” Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___ (2016), slip op. at 12–14 (June 20, 2016). Second, Cuozzo concerned the claim construction standard to be applied in AIA Inter Partes Reviews, rather than inter partes reexamination, as in this proceeding. Appeal 2015-007691 Reexamination Control 95/002,009 Patent No. 7,259,972 B2 5 We therefore conclude that Patent Owner has not shown any points which we misapprehended or overlooked in our Decision. CONCLUSION In summary, we have granted Patent Owner’s request for rehearing to the extent that we have reconsidered our decision affirming the rejection of claims 1, 2, 5–7, 11, 12, 15, 17–19, 22, 32, 34, and 52–66, but we decline to modify the decision in any way. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED Appeal 2015-007691 Reexamination Control 95/002,009 Patent No. 7,259,972 B2 6 PATENT OWNER: MILES & STOCKBRIDGE PC 1751 Pinnacle Drive Suite 1500 Tysons Corner, VA 22102-3833 THIRD-PARTY REQUESTER: FISH & RICHARDSON P.C. (SD) P.O. BOX 1022 Minneapolis, MN 55440-1022 cdc