Ex Parte 7,506,190 B2 et al

Patent Trial and Appeal Board

Aug 28, 2018

90013293 (P.T.A.B. Aug. 28, 2018)

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.
90/013,293 07/25/2014 7,506,190 B2 006278-00068D 9372
34071 7590 08/28/2018
IPVENTURE, INC.
4010 Moorpark Avenue
Suite 211
San Jose, CA 95117
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/28/2018 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
________________

Ex parte IPVENTURE, INC
Patent Owner.
____________

Appeal 2017-001783
Reexamination Control No. 90/013,293
Patent US 7,506,190 B2
Technology Center 3900
________________

Before JAMES T. MOORE, DENISE M. POTHIER, and
ERIC B. CHEN, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION DISMISSING APPEAL

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I. SUMMARY
A. Background
This proceeding arose from a request for ex parte reexamination of
US Patent 7,506,190 B2, which is entitled “THERMAL AND POWER
MANAGEMENT FOR COMPUTER SYSTEMS” (issued to C. Douglass
Thomas on March 17, 2009 from U.S. Application No. 11/821,142, filed
June 22, 2007) (“the ’190 Patent”). The real party in interest of the ’190
Patent is stated to be the Patent Owner, IpVenture, Inc. Br. 1.
The request for reexamination, assigned Reexamination Control No.
90/013,293 (“Request” or “Req.”), was filed July 9, 2014. The Request was
filed by Allan A. Fanucci, of Winston & Strawn, LLP. (“Requester”).
Because the procedural posture of this proceeding is of importance to this
decision, we explore it in some detail.
The ‘190 Patent was involved in a prior Reexamination Proceeding
90/012,909, filed July 3, 2013. In that proceeding claims 18, 19, and 21
were canceled, and claims 1–17 were confirmed patentable. Claims 20, 22,
and 25 were amended and determined to be patentable, and claims 23, 24,
and 26, which depended on amended claims, were also determined to be
patentable. Reexamination Certificate (10149th) No. US 7,506,190 C1
issued May 7, 2014.
We are further informed that the ’190 Patent was involved in litigation
in the United States District Court for the District of Delaware, in a civil
action styled IpVenture, Inc. v. Dell, Inc., Docket No. 11-CV-588 (D. Del.).
Req. 2. The complaint was filed July 5, 2011.
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The ’190 Patent was also involved in Interference 105,956, declared
by Judge Fred E. McKelvey on August 16, 2013. Interference 105,956,
Paper 1. As a result, claims 1–17, 20, and 22–26 were canceled pursuant to
35 U.S.C. § 135(a). Interference 105,956, Paper 309, filed January 26, 2015.
That decision was affirmed by our reviewing court in Thomas v. Pippin, 628
Fed. App’x 766 (Fed. Cir. 2016).
Subsequent to that decision in the interference, the litigation in
Delaware was dismissed. IpVenture, Inc. v. Dell, Inc., Docket Entry 234
(April 12, 2016).
B. The Invention and Claims
The invention of the ’190 Patent is directed to the intelligent control of a
processor’s clock frequency and fan speed to provide thermal and power
management for a computing device. ’190 Patent, Abstract.
More specifically, the invention contemplates configuring the computer to use
a first power management policy when the computer is powered by a battery;
configuring the computer to use a second power management policy when the
computer is not powered by a battery; and setting an operational speed of the
processor based on the appropriate one of the first and second power management
policies that have been configured. ’190 Patent, 2:57–63.
Independent claim 1, reproduced below, is illustrative of the appealed
claims:
1. A method for managing operation of a computer, the computer
including at least a processor and a fan for cooling at least the processor,
said method comprising:
configuring the computer to utilize a first power management policy
when the computer is powered by a battery;
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configuring the computer to utilize a second power management
policy when the computer is not powered by a battery;
setting an operational speed of the fan based on the appropriate one of
the first and second power management policies;
monitoring a temperature of the processor; and
setting an operational speed of the processor based on the appropriate
one of the first and second power management policies and based on the
temperature of the processor.
App. Br. A–1.
The ’190 patent expired on June 20, 2014. Claims are therefore
construed according to the “ordinary and customary meaning” standard set
forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005). Moreover, the claims not amended.
C. The Rejections Appealed by Patent Owner
Claims 1–3, 5–6, 9–10, 20, 22 and 24–26 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Yamaki1 in view of
Moyal,2 Hiramatsu,3 and Kohiyama.4
Claims 11–13 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Yamaki in view of Hiramatsu, and Moyal.

1 EP 0 474 963 A2, published March 18, 1992.
2 US 5,422,832, issued June 6, 1995.
3 JP 02299009, published December 11, 1990.
4 US 5,381,043, issued January 10, 1995.
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Claims 14–15 and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Yamaki in view of Hiramatsu, Moyal, and
Canon.5
Claims 4, 7–8 and 23 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Yamaki in view of Hiramatsu, Moyal, and
Canon.
Claims 1–3, 5–6, 9–10, 20, 22 and 24–26 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Yamaki in view of
Moyal, Takami, and Kohiyama.
Claims 11–13 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Yamaki in view of Takami and Moyal.
Claims 14–15 and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Yamaki in view of Takami, Moyal and Canon.
Claims 4, 7–8 and 23 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Yamaki in view of Takami, Moyal and Canon.
Claims 1–3, 5–6, 9–13, 16, 20, 22 and 24 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Yamaki in view of
lkedea6 and Hiramatsu.
Claims 1–3, 5–6, 9–13, 16, 20, 22 and 24 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Yamaki in view of
lkedea and Takami. Ans. 2.

5 (US 5,099,181, issued March 24, 1992).
6 (US 5,664,201, issued September 2, 1997).
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II. DISCUSSION
A. The Rejection of Claims 1–3, 5–6, 9–10, 20, 22 and 24–26
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Yamaki in
view of Moyal, Hiramatsu, and Kohiyama.

The Examiner found that Yamaki teaches a method for managing
operation of a computer including a processor. The processor is configured
to use a first power (sleep mode) management policy when the computer is
powered by a battery; and configured to use a second power management
policy when the computer is not powered by a battery. Final Act. 6.
Moyal is relied upon to teach that a fan is used to cool a processor.
Moyal further was found to describe setting an operational speed of the
processor based on the temperature of the processor. Id.
The Examiner further found that a person of ordinary skill would
apply the fan and the temperature sensor of Moyal to the system of Yamaki
to yield predictable results such as cooling the processor using the fan, and
monitoring the temperature of the processor and setting the speed of the
processor based on its temperature using the clock divider circuit. Id. at 7.
Hiramatsu is relied upon to describe setting an operational speed of
the fan based on the appropriate one of the first and second power
management policies to achieve power saving. Id. at 7–8.
Kohiyama was found to describe setting an operational speed of the
processor based on the appropriate one of the first and second power
management policies. Id. at 9. The Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time the current
invention was made to implement the teachings of Kohiyama in the method
taught by the combination of Yamaki, Moyal and Hiramatsu so the speed of
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the processor gets increased when the processor is powered by external
power line and the speed of the speed of the processor get decreased when
the processor is powered by the battery, in order to yield predictable results
such as consuming the power wisely. Id.
Appellant urges that Hiramatsu’s different stored values does not
teach or suggest first or second power management policies. Br. 11.
Appellant also argues, prefatorially, that the Examiner erred in failing to
adequately consider the declaration of Dr. Renau. Br. 7.
Before we continue on to analyze the facts of this case, we first
undertake to determine if there is sufficient reason to provide a substantive
decision. Claims 1–17, 20, and 22–26 of the ’190 Patent, as set forth in the
Reexamination Certificate (10149th) No. US 7,506,190 C1, are the subject
matter of this appeal. Although the Appellant did not update the status of
related matters after the briefing was complete, the judgment of the Federal
Circuit is now final and nonappealable. Thomas v. Pippin, 628 Fed. Appx.
766. That decision affirmed the final judgment of the Patent Trial and
Appeal Board that “claims 1-17, 20, and 22-26 of Thomas involved U.S.
Patent 7,506,190 are CANCELLED”. Interference 105,956, Paper No. 297,
2.
Insofar as the reexamination resulting in the 10149th certificate made
no amendments to claims 1–17, those claims are completely identical to
those claims that were involved in, and the Board canceled in the
interference as it was initially declared. Interference 105956, Paper No. 1.
Accordingly, there remains no issue to be determined in this appeal with
regard to those unamended claims. They have been canceled. Thus, an
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appropriate manner in which to proceed is to conclude that this appeal as to
those claims is rendered moot, and to dismiss the appeal.
Claims 20, 22, and 25 (and claims which depend therefrom, including
claims 23, 24, and 26) have language which was amended in the first
reexamination proceeding of the unexpired ’190 patent. These amendments
occurred during the pendency of the interference. Interference 105,956 was
redeclared by Judge McKelvey on May 23, 2014. Interference 105,956,
Paper No. 215. That timely redeclaration, inter alia, redeclared
“Interference 105,956 to take into account the result of the Reexamination
Certificate for U.S. Patent 7,506,190 C1.” Id., 2. As such, the the claims of
the ’190 patent designated as corresponding to the count were “Claims 1-17,
20 (as amended), 22 (amended), 23 (dependent on amended claim), 24
(dependent on amended claim), 25 (amended) and 26 (dependent on
amended claim).” Id., 4.
Accordingly, there remains no issue to be determined in this appeal as
regards to those claims which were amended because they also have been
canceled by the final judgment of the Board (Interference, Paper No. 297, 2),
which judgment was appealed and affirmed by our reviewing court. Thus,
we determine that an appropriate manner in which to proceed is to conclude
that this appeal as to those amended claims is also rendered moot, and to
dismiss the appeal.
Accordingly, as the final judgment in Interference 105,956 canceled
all claims of the ’190 patent, and that judgment was affirmed by our
reviewing court, we determine that this appeal in its entirety is moot, and we
need not reach the merits of the arguments raised therein.
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B. Conclusion
We do not reach the issue of whether the Appellant has shown error in
the rejections of claims 1–17, 20, and 22–26, as those claims have been
canceled.

DECISION
The appeal of the rejection of claims 1–17, 20, and 22–26 is
dismissed.
If further prosecution on related cases is undertaken, adequate
consideration of the issue of interference estoppel should not be neglected by
the real party in interest or the Examiner. See In re Deckler, 977 F. 2d 1449,
1452 (Fed. Cir. 1992).

DISMISSED

Patent Owner:

IPVENTURE, INC.
5150 El Camino Real
Suite A-22
Los Altos, CA 94022

Third Party Requester:

WINSTON & STRAWN LLP
Patent Department
1700 K Street, NW
Washington, DC 20006