Ex Parte 7475180 et al

Patent Trial and Appeal Board

Jun 10, 2015

95000480 (P.T.A.B. Jun. 10, 2015)

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.
95/000,480 06/04/2009 7475180 379922-480RX (105402) 4857
37509 7590 06/10/2015
DECHERT LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/10/2015 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 DISPLAY CORPORATION,
Requester,

v.

MONDIS TECHNOLOGY LTD.,
Patent Owner.
____________

Appeal 2015-004982
Reexamination Control 95/000,480
Patent 7,475,180 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1–13, 21, 22, and 25–29 over various references.1 PO
App. Br. 5–7. We have jurisdiction under 35 U.S.C. §§ 134 and 315.

STATEMENT OF THE CASE
This proceeding arose from a June 4, 2009 request by Chimei
InnoLux Display Corporation (“Requester”) for an inter partes
reexamination of claims of U.S. Patent 7,475,180 B2, titled “Display Unit
with Communication Controller and Memory for Storing Identification
Number for Identifying Display Unit” and issued to Ikuya Arai and Kouji
Kitou, on January 6, 2009 (“the ’180 patent”).
The present matter is related to Reexamination Control Nos.
95/000,455; 95/000,456; 95/000,457; 95/000,458; 95/000,459; 95/000,460;
95/000,481; 90/013,237; and 90/013,238. PO App. Br. 4–5.
The ’180 patent describes a system involving control of a display
device. Spec. 2:37–40.

Claim 1 reads as follows:

1. A display unit for displaying an image based on video signals
and synchronization signals inputted from an externally connected
video source, comprising:
a video circuit adapted to display an image based on the video
signals sent by said externally connected video source;
a memory which stores an identification number for identifying
at least a type of said display unit; and

1 Patent Owner Appeal Brief, dated August 4, 2014 (“PO App. Br.”).
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a communication controller which sends said identification
number stored in said memory to said video source;
wherein said communication controller is capable of bi-
directionally communicating with said video source.

The cited references are as follows:

Moriconi US 5,262,759 Nov. 16, 1993
Schmidt US 5,285,197 Feb. 8, 1994
Takahashi JP H4-37787 Feb. 7, 1992

Sony Corporation, “DDM Monitor Interface Manual” (3rd ed. 1989)
(“Sony”).

Patent Owner appeals the Examiner’s rejections of claims 1–13 as
anticipated by either one of Moriconi or Schmidt; claims 21 and 26 as
anticipated by Schmidt; claims 22, 25, and 27 as unpatentable over Schmidt
and Takahashi; claims 21, 22, and 25–27 as unpatentable over Sony and
Moriconi; and claims 28 (dependent from claims 1–13, 21, 22, and 25–27
only) and 29 (dependent from claims 1, 21, 25, and 26 only)2 as either
anticipated by Schmidt or unpatentable over the combination of Sony and
Moriconi.
ISSUE

Did the Examiner err in rejecting claims 1–13, 21, 22, and 25–29?

2 Claims 28 and 29 are multiple dependent claims. As indicated, Patent
Owner appeals only some of these claims’ rejections. PO App. Br. 5.
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PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Schmidt

Patent Owner argues that Schmidt fails to disclose a memory storing
“an identification number for identifying at least a type of said display unit,”
as recited in claim 1, for example. PO App. Br. 14–15 (citing Schmidt 8:59–
63, 2:33–38, 3:21–32, 11:1–52, Table 2, and Moriconi 1:29–42, 5:20–25).
The Examiner states that Schmidt discloses this feature. Ans. 7 (citing
Schmidt Fig. 1, 1:8–14, 4:32–38, 8:59–64, Table 2); see also Ans. 27–28
(citing Schmidt 1:8–14, 4:32–38, 8:59–68, Table 2). We agree with the
Examiner.
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For example, Schmidt discloses “video display monitor 100” (i.e., a
“display unit”) that contains a “memory 112” (i.e., a “memory”) that
includes (i.e., “stores”) “the plurality of bits used to identify the video
display monitor type” (i.e., an “identification number for identifying” a type
of the display unit). Schmidt 5:33, 51; 8:59–61. Patent Owner does not
demonstrate persuasively a meaningful difference between the bits that are
stored in memory and that identify a display monitor type, as disclosed by
Schmidt, and the “identification number” that is also stored in “a memory”
and also identifies “a type of said display unit,” as recited in claim 1.
Patent Owner argues that the “data bytes” of Schmidt do not
“constitute[] an ‘identification number’ whose purpose and function is to
identify the . . . ‘type’ of the display unit” and that “it does not make sense
for Schmidt to send an identifier for the display type.” PO App. Br. 15.
However, Patent Owner does not explain sufficiently how the “bits,”
explicitly disclosed by Schmidt as “used to identify the video display
monitor type,” differs from the claimed “identification number” that is also
used “for identifying” a type of the display unit. See, e.g., Schmidt 8:59–61.
Patent Owner argues that “providing operating capabilities of the
display [does not] satisf[y] the requirement of an ‘identification number for
identifying at least a type of display’” because “this is contrary to the plain
language of the claim.” PO App. Br. 15–16. Claim 1, for example, recites
“an identification number for identifying at least a type of said display unit.”
Even if Patent Owner’s contention is correct that providing operating
capabilities of a display is somehow different and patentably distinct from
identifying a type of display, as recited in claim 1, Patent Owner does not
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assert or demonstrate persuasively a meaningful difference between a
“plurality of bits to identify the . . . display monitor type,” as disclosed by
Schmidt (Schmidt 8:60–61) and the claim feature of “an identification
number for identifying . . . a type of said display unit.” In both cases, a
parameter is used to identify a display monitor type.
Patent Owner argues that Schmidt fails to disclose a “communication
controller.” PO App. Br. 16. The Examiner states that Schmidt discloses
this feature. Ans. 7 (citing Schmidt Fig. 1, 8:40 – 9:13, 8:25–29); see also
Ans. 29–30 (citing Schmidt Fig. 1, 8:25–29, 8:40 – 9:13). We agree with
the Examiner.
Claim 1 recites a “communication controller which sends said
identification number . . . to said video source.” As previously discussed,
Schmidt discloses a component (e.g., part of microprocessor 106) that sends
an “identification number” (e.g., a “plurality of bits . . . being grouped into a
plurality of bytes” (Schmidt 8:60–63)) to a video source (e.g., a “graphics
controller” – Schmidt 8:60–61). Patent Owner does not explain sufficiently
a difference between the component of Schmidt that sends bits identifying a
monitor type to a video source (e.g., graphics controller) and a component
(i.e., a “communication controller”) that also sends information (or “an
identification number”) that identifies a type of display unit, as recited in
claim 1.
Patent Owner argues that Schmidt fails to disclose a “communication
controller” as recited in claim 1 because the component disclosed by
Schmidt that sends bytes to a video source that identifies the type of display
unit is not “an element that performs communication control as required by
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claims 1–13.” PO App. Br. 16–17. Patent Owner does not indicate that
claim 1, for example, recites “an element that performs communication
control.” Therefore, we are not persuaded by Patent Owner’s argument that
Schmidt fails to anticipate claim 1 because Schmidt supposedly fails to
disclose “an element that performs communication control.” In any event,
Schmidt discloses that the “bits” or “bytes” stored in memory “are output
until all bytes needed to identify the video display monitor type are output to
monitor response line MR.” Schmidt 8:65–68. In other words, Schmidt
discloses “control” of the output of the bytes (or “communication” of the
bytes) from memory. Even presuming without agreeing that claim 1
requires “an element that performs communication control,” Patent Owner
does not explain a meaningful difference between the component of Schmidt
that “controls” the communication of bytes identifying a type of video
display monitor (i.e., controlling the output of the bytes) and the proposed
hypothetical claim limitation of “an element that performs communication
control.”
Regarding claims 12 and 13, Patent Owner argues that Schmidt fails
to disclose a “processor adapted to control display of said display unit,” as
recited in claim 12, for example. PO App. Br. 17. The Examiner states that
Schmidt discloses this feature. Ans. 8 (citing Schmidt Fig. 1, 5:41–57), see
also Ans. 30–31 (citing Schmidt Fig. 1, 5:41–57). We agree with the
Examiner.
As the Examiner points out, Schmidt discloses a display including a
“color processor.” Schmidt Fig 1; 5:33–41. Schmidt also discloses a
display including a “sync processor” and “controlling . . . an optimum video
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signal with respect to the characteristics of the video display monitor. See,
e.g., Schmidt Fig. 1; 1:15–19, 5:41–47. In each case, a component of the
system (e.g., a “processor”) “controls” characteristics of a display. We are
not persuaded by Patent Owner that the disclosure of Schmidt of a display
that contains a processor (or two processors) that controls “characteristics of
the video display monitor” differs materially from the claim feature of a
“processor adapted to control display of said display unit.”
Patent Owner appears to argue that none of the “processors” of
Schmidt is “adapted to control display of said display unit,” in which the
recited “control” must be one of the specific examples disclosed in the
Specification of control of “brightness, contrast, position, etc.,” “size,
position, brightness, and contrast,” or “brightness, contrast, or hue.” PO
App. Br. 17, 18, 20. We note that claim 12 does not recite a processor that is
adapted to control “brightness, contrast, position, etc.,” a processor that is
adapted to control “size, position, brightness, and contrast,” or a processor
that is adapted to control “brightness, contrast, or hue.” For at least this
reason, we are not persuaded by Patent Owner’s argument.
Patent Owner argues that “the ’180 Patent is now expired,” that
“claim construction should be in accordance with the principles set forth in
Phillips v. AWH Corp., 415 F.2d 1303 (Fed. Cir. 2005),” and that, based on
these alleged facts, certain select examples disclosed in the Specification
(e.g., “brightness, contrast, position, etc.”) should be imported into the
claims and other specific examples disclosed in the Specification (e.g.,
processing video signals), presumably, must not be imported into the claims.
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See, e.g., PO App. Br. 17–18. We are not persuaded by Patent Owner’s
argument.
Patent Owner does not point out that the guidance set forth in Phillips
requires that certain examples must be selected from the Specification and
imported into the claims and other examples must be excluded from the
claims when the disputed patent is expired. We do not independently
identify such guidance.
The Specification discloses a broad range of examples of the “control”
of various characteristics of a display. These examples include (in addition
to Patent Owner’s cited “brightness, contrast, position”) “display size,” “hue
of images,” “controlling the video blanking circuit [so that] the video display
period may be blanked so that no image is displayed,” “WYSIWYG
control,” “adjustment at a factory,” “changing the color temperature,” “audio
control,” displaying an error message, “prevent[ing] data requiring no
rewriting . . . from being erased by mistake,” “control[ing] the horizontal
oscillating circuit,” “fix[ing] the oscillation frequency to a predetermined
value, “allow[ing] the display device . . . to perform a horizontal deflection
operation at a value different from the horizontal frequencies of the video
signal,” “assembling a plurality of display devices,” “fetch[ing] information
of the operation status of the deflection circuit . . . or video circuit . . . in the
display device,” “display[ing] information of the occurrence of the fault and
faulty part on the liquid crystal display panel,” “display[ing] characters or
graphics on the liquid crystal display panel,” “control of the power supply
36,” “stopping power supply from the power supply . . . to the deflection
circuit,” or “stop[ping] the . . . power supply.” Spec. 4:67; 5:1, 4, 16, 22–25;
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6:6–7; 6:57–61; 6:67 – 7:2; 7:38–39; 7:59; 8:11: 14, 18–20, 33, 61–62; 8:67
– 9:1; 9:24–25, 46–47, 50–51. Patent Owner does not explain sufficiently
why only “brightness, contrast, position” must be imported into the claims
but that the other (numerous) examples must not be imported into the claims.
Given the broad nature of the numerous examples disclosed in the
Specification of characteristics of a display that may be “controlled,” we
disagree with the Patent Owner that only certain select examples from the
disclosure must be imported into the claims to the exclusion of others.
Rather, one of ordinary skill in the art would have understood that claim 12,
for example, merely requires a “processor adapted to control display of said
display unit,” as recited in claim 12 and as supported by the Specification.
As the Examiner points out and as further discussed above, Schmidt
discloses this feature.
In any event, even if Patent Owner is correct that a specific example
disclosed in the Specification must be selected and imported into the claims
(Patent Owner has not demonstrated sufficiently that this is the case,
however), Schmidt discloses a “color processor,” which would control a
“color” or “hue” of a display, as disclosed as one example in the
Specification. See above discussion. Patent Owner does not demonstrate a
meaningful difference between Schmidt’s “color processor” and Patent
Owner’s suggested imported claim limitation of “hue” once the specific
example of “hue” is selected from the Specification and imported into the
claim, as Patent Owner suggests is somehow required.
Regarding claims 21, 26, 28, and 29, Patent Owner argues that
Schmidt fails to disclose receiving a control signal from a video source. PO
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App. Br. 19–20. The Examiner states that Schmidt discloses this feature.
Ans. 9, 10 (citing Schmidt Fig. 1, 1:24–28, 5:32–41, 8:25–29, 8:40 – 9:13);
see also Ans. 31–32 (citing Schmidt Fig. 1, 5:41–57, 8:40 – 9:13, 8:25–29).
Patent Owner reiterates that certain select examples disclosed in the
Specification (e.g., “brightness, contrast, or hue” – PO App. Br. 20) must be
imported into the claims. We disagree with Patent Owner at least for the
previously stated reasons.
Regarding claims 22, 25, and 27, the Examiner introduces Takahashi.
Patent Owner argues that Takahashi fails to disclose a communication
controller. PO App. Br. 21. Patent Owner does not demonstrate
persuasively that the combination of Schmidt and Takahashi also fails to
disclose or suggest this feature. We are not persuaded by Patent Owner’s
argument for previously-stated reasons.
Patent Owner also argues that Schmidt and Takahashi fail to disclose
or suggest an identification number for identifying at least a type of display
unit. PO App. Br. 22. The Examiner relies on Schmidt for this feature.
Ans. 33. As previously discussed, Patent Owner does not demonstrate
persuasively that Schmidt fails to disclose this feature.
Regarding claims 22, 25, and 27, Patent Owner argues that it would
not have been obvious to one of ordinary skill in the art to have combined
the teachings of Schmidt and Takahashi because, according to Patent Owner
“the two references are directed to fundamentally different problems.” PO
App. Br. 22. We disagree with Patent Owner for at least the reasons set
forth by the Examiner. Ans. 35.
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Claim 22, for example, recites “at least one of color and size of said
image . . . is changed by using said control signal.” Claims 25 and 27 recite
a similar feature. Schmidt discloses that it was known to one of ordinary
skill in that art to “set[] the characteristics of a video signal supplied to a . . .
video display monitor” and “controlling the video signal . . . to provide an
optimum video signal with respect to the characteristics of the video display
monitor.” Schmidt 1: 10–11, 15–18. In other words, one of ordinary skill in
the art, based on Schmidt, would have understood that a signal is used to
control characteristics of a video display monitor. As the Examiner also
points out, Takahashi discloses characteristics of a video display monitor
that may be controlled, as would have been understood by one of ordinary
skill in the art. For example, the Examiner states that Takahashi discloses
“at least one of color and size of displayed image on a display unit is
controlled by using control signal . . . (i.e., parameters including ‘screen size,
brightness, hue, focus, contrast, and that like’ can be adjusted by forwarding
control signals . . . See pages 766–767).” Ans. 13 (citing Takahashi 766–
767). Patent Owner does not dispute this finding in Takahashi. Thus, one of
ordinary skill in the art would have understood that display monitor
“characteristics” that may be controlled (as disclosed by Schmidt) include
known “characteristics” of displays, such as “screen size, brightness, hue,
focus, contrast, and the like,” as taught by Takahashi.
Patent Owner argues that Schmidt and Takahashi “are directed to
fundamentally different problems,” but does not explain sufficiently how the
“problem” of Schmidt of controlling display monitor characteristics differs
materially from the “problem” of Takahashi of controlling display monitor
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characteristics that include known characteristics of “screen size, brightness,
hue, focus, contrast, and that like,” as the Examiner indicates Takahashi
teaches. In both cases, control of display monitor characteristics is being
performed. Even if these respective “problems” of Schmidt and Takahashi
are somehow “different,” as Patent Owner argues, Patent Owner does not
demonstrate persuasively how any such presumed “difference” in the
“problems” of the references would indicate that it would not have been
obvious to one of ordinary skill in the art to have combined the references in
the manner indicated. This is particularly true given that the combination of
Schmidt and Takahashi would have entailed merely the combination of
known features performing their known functions (i.e., controlling known
display monitor characteristics, as disclosed by both Schmidt and Takahashi)
to achieve the predictable result of controlling specific, known
characteristics of a display monitor.
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined any of the cited prior art references
because “the inventions of claims 21–22 and 25–29 of the ‘180 Patent have
enjoyed substantial commercial success.” PO App. Br. 28–30 (citing
Declaration of Joseph D. Lamm, dated January 4, 2010, ¶¶ 36–45, 47, 50, 55
(“Lamm Dec.” or “Lamm Declaration”) and Declaration of Michael B.
Spiro, dated January 4, 2010, §§ 4–7 (“Spiro Dec.” or “Spiro Declaration”)).
Notably, claims 22, 25, and 27 are the only claims rejected under
obviousness based on Schmidt and Takahashi.
We recognize that evidence of secondary considerations must always
be considered en route to the determination of obviousness, but its existence
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alone does not control the conclusion of obviousness. Richardson-Vicks Inc.
v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to
evidence of secondary considerations is dependent upon whether there is a
nexus between the merits of the claimed invention and the evidence offered.
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).
Patent Owner submits the Lamm Declaration in rebuttal to the
§ 103(a) rejections.
[T]he claimed inventions have effectively been included in
computer display standards promulgated by the industry standards
setting body known as VESA; (2) Microsoft Corporation, the
leading company in the computer industry, has determined that
these VESA standards (and hence the claimed inventions) are so
important that Microsoft has made them mandatory for any
display company wishing to display various Windows logos in
connection with their monitor products; and (3) on information
and belief, the vast majority of the millions of computer displays
that have been sold in the United States in the last few years
practice the claimed inventions.

Lamm Dec. ¶ 35.
However, although the Lamm Declaration (¶¶ 35–45) might
demonstrate a nexus between industry standard video monitors and
standards promulgated by the Video Electronics Standards Association
(VESA), the allegations do not demonstrate a nexus between the merits of
the instant claimed invention and any industry standards or the standards
promulgated by VESA.
Even if standards promulgated by an industry standards-setting
committee would become widely adopted in the pertinent industry, the
Lamm Declaration does not demonstrate persuasively or provide sufficient
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evidence that VESA developed and promulgated the standards in view of the
claimed invention of the ’180 patent. Indeed, the Lamm Declaration does
not indicate whether the standards-setting committee was even aware of the
’180 patent.
Moreover, we have uncontested testimony in the “Declaration of Jake
Richter,” dated October 13, 2010 (“Richter Declaration” or “Richter Dec.”)
(See, e.g., Richter Dec. ¶¶ 32–33) that the VESA standards were developed
independently, and commenced before the priority date of the ’180 patent
(¶ 33). In particular, Mr. Richter alleges that development of the “VDDP”
standard, which appears to be a precursor or an early version of the
“DDC/CI” standard principally discussed in the Lamm Declaration, and
other VESA standards may have been derived from a monitor that pre-dated
the invention of the ’180 patent. Richter Dec. ¶¶ 32–39 (citing VDDP
Proposal draft 5.05, p. 2 – “Exhibit 1”).
Even if the adoption of an invention as an industry standard may be
indicative of commercial success and non-obviousness of the invention,
assuming that the standard was determined by buyers and was due to the
merits of the invention as compared with the merits of competing
alternatives, as Patent Owner appears to imply, we are not persuaded by
Patent Owner’s argument. Patent 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.
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Further, Patent Owner is incorrect that there is a presumption of a
nexus between commercial success and the claimed invention when the
subject of the success embodies the claimed invention. PO App. Br. 29.
The cited cases are in the context of litigation, whereas the “PTO must rely
upon the applicant to provide hard evidence of commercial success” because
“[i]n the ex parte process of examining a patent application, … the PTO
lacks the means or resources to gather evidence which supports or refutes
the applicant’s assertion that the sales constitute commercial success.” In re
Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996) (citing Ex parte Remark, 15
USPQ2d 1498, 1503 (BPAI 1990) and indicating that “evidentiary routine of
shifting burdens in civil proceedings [is] inappropriate in ex parte
prosecution proceedings because examiner has no available means for
adducing evidence.”)
Mr. Lamm also testifies that “[e]very computer monitor that I have
tested . . . within the last three or four years has included both EDID and
DDC/CI functionality” and that “the claimed inventions are ubiquitous.”
Lamm Dec. 50, 55. Even if “every computer” that Mr. Lamm tested within
the last three or four years incorporated “EDID and DDC/CI functionality”
and even if the contention of Patent Owner and/or Mr. Lamm is assumed to
be true that the alleged “every computer” constitutes a large enough number
of computers to be considered “commercial success,” we are still not
persuaded by Patent Owner’s argument because Patent Owner and Mr.
Lamm fail to demonstrate sufficiently a nexus between the alleged
“commercial success” and the claimed invention. Mr. Lamm testifies that
“[o]ne or more of the technical standards promulgated by VESA have
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incorporated the inventions claimed in the. . . ‘180 . . . patent[],” that “[t]he
EDID standard describes the contents and format of a data file,” that “[t]he
purpose of the data file is to ‘provide information in a compact format to
allow the graphics subsystem to be configured based on the capabilities of
the attached display,” that “the EDID itself is intended to be stored in an
EEPROM onboard the monitor” and “meets all the various memory
limitations in the claims,” that “EEPROMs . . . are capable of being queried
by an external computer” and “necessarily possess at least some rudimentary
video circuit for at least receiving RGB and sync signals from the
computer,” and that “[u]sing DDCI/CI the computer can request a data string
representing the display unit’s capabilities with respect to these control
instructions,” Lamm Dec. ¶¶ 36, 37, 40, 42. Patent Owner and Mr. Lamm
do not demonstrate that claim 25, for example, recites features such as “an
EEPROM,” an “EDID” being “stored in an EEPROM,” “receiving RGB and
sync signals,” “request a data string,” or providing “information in a
compact format,” for example. Hence, Patent Owner and Mr. Lamm do not
demonstrate a sufficient nexus between the claimed invention and the
alleged commercial success.
Mr. Lamm also testifies that “[t]he data string returned by the
monitor includes identification numbers for what are known as ‘VCP’
codes,” that a monitor, according to “the VESA DDC/CI standard” “would
require a memory for storing the . . . identification numbers,” and that “[t]he
EDID also contains an identification number for identifying the type of
display unit.” Lamm Dec. ¶¶ 38, 43, 44. While not entirely clear based on
the record before us, to the extent that Mr. Lamm and Patent Owner possibly
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allege that the claim limitation of “an identification number for identifying at
least a type of said display unit,” as recited in claim 25, for example, is the
presumed reason for the alleged “commercial success” (assuming that such
“commercial success” even existed), we are still not persuaded by Patent
Owner at least because, as described above, this claim feature is disclosed by
Schmidt. Under these circumstances, any commercial success stems from
what was known in the prior art so that there can be no nexus. Tokai Corp.
v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art, no nexus exists.”);
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir.
2006) (“[I]f the feature that creates the commercial success was known in
the prior art, the success is not pertinent.”).
For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995). We agree with the Examiner that the requisite
nexus between the merits of the claimed invention of the ’180 patent and any
commercial success as indicated potentially, for example, by widespread
adoption by the computer monitor industry has not been established.
Patent Owner also relies on the Spiro Declaration in rebuttal of the
Examiner’s rejection of claims under 35 U.S.C. § 103(a). PO App. Br. 30.
Mr. Spiro testifies generally that “Hitachi and Mondis have entered into a
total of more than 13 separate license agreements.” Spiro Dec. ¶ 7. Mr.
Spiro does not testify, in express terms, that the ’180 patent has been
licensed to any entity. Nor has Mr. Spiro testified or provided evidence as to
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any specific reasons why the alleged license agreements were made or how
such reasons relate to the claimed invention of the ’180 patent. As such we
agree with the Examiner that the requisite nexus between the merits of the
claimed invention of the ’180 patent and any licensing activity has not been
established. “For objective evidence to be accorded substantial weight, its
proponent must establish ‘a nexus between the evidence and the merits of
the claimed invention.’” GPAC, 57 F.3d at 1580. In that regard, while
licenses may constitute evidence of nonobviousness “only little weight can
be attributed to such evidence if the patentee does not demonstrate a nexus
between the merits of the invention and the licenses of record.” Id. (quoting
Stratolex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983)).
We are not persuaded by Patent Owner’s arguments.
Patent Owner does not provide additional arguments in support of
claims 1–13, 21, 22, and 25–29.
Affirmance of the Examiner’s rejection of claims 1–13, 21, 22, and
25–29 based on Schmidt or the combination of Schmidt and Takahashi
renders it unnecessary to reach the propriety of the Examiner’s decision to
reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the
Examiner’s rejection of those claims over Moriconi and/or Sony.
CONCLUSION
The Examiner did not err in rejecting claims 1–13, 21, 22, and 25–29.
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DECISION
We affirm the Examiner’s rejection of claims 1–13, 21, 26, 28
(dependent from claims 1–13, 21, 22, and 25–27 only), and 29 (dependent
from claims 1, 21, 25, and 26 only) as anticipated by Schmidt and claims 22,
25, and 27 as unpatentable over Schmidt and Takahashi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for
extensions of time in this inter partes reexamination proceeding are
governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, 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.

AFFIRMED

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For PATENT OWNER:

DECHERT LLP
P.O. BOX 390406
MOUNTAIN VIEW, CA 94039-0460

For THIRD PARTY REQUESTER:

COOLEY LLP ATTN: PATENT GROUP
1229 PENNSYLVANIA AVENUE, NW
SUITE 700
WASHINGTON, DC 20004