Ex Parte 7,564,702 et al

Patent Trial and Appeal Board

May 2, 2016

95001853 (P.T.A.B. May. 2, 2016)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
95/001,853 12/14/2011 7,564,702

EXAMINER
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
Menefee, James
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE

05/02/2016 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

VICOR CORPORATION
Requester

v.

SYNQOR, INC.
Patent Owner and Appellant
____________________

Appeal 2014-007362
Reexamination Control 95/001,8531
Patent No. US 7,564,702 B22
Technology Center 3900
____________________

Before JAMES T. MOORE, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON REHEARING

STATEMENT OF THE CASE
Requester Vicor Corporation (“Vicor” or “Requester”) requests on
May 20, 2015 reconsideration of our decision on appeal dated April 20,
2015 (the Decision). That appeal was filed under 35 U.S.C. §§ 134(b) and

1 Filed by Vicor Corporation on December 14, 2011.
2 Issued July 21, 2009 to Martin Schlecht and assigned to SynQor, Inc. (the
“’702 patent”). The ’702 patent issued from Application 11/901,263, filed
September 14, 2007.
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315(a) (2002) from the rejection of claims 1–3, 12–20, 23, 26–30, 38–47,
50–56, 64, 67–76, 78, 80–82, 84–86, 88, and 89 as set forth in the Right of
Appeal Notice mailed March 11, 2013. In that decision, we reversed all of
the rejections of record.
Requester asserts two grounds for reconsideration in the Request for
Rehearing (“Reh’g. Req.”). First, Requester asserts that that the panel may
have overlooked the decision related to U.S. Patent No. 7,072,190 (the “‘190
Patent) of our reviewing court in Vicor Corporation v. SynQor, Inc., 603 F.
App’x. 969 (Fed. Cir. 2015) (“CAFC ‘190 Patent Decision”). Reh’g. Req. 3.
Second, Requester asserts that the panel overlooked the testimony of Dr.
Steigerwald and prior art documents relating to his work, referred to as the
“Steigerwald Evidence.” Id.
Requests for rehearing are governed by 37 CFR § 41.79 (b) which
recites, in pertinent part:
(b) (1) The request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked in
rendering the Board’s opinion reflecting its decision. Arguments not
raised in the briefs before the Board and evidence not previously
relied upon in the briefs are not permitted in the request for rehearing
except as permitted by paragraphs (b)(2) and (b)(3) of this section.

(2) Upon a showing of good cause, appellant and/or respondent
may present a new argument based upon a recent relevant decision of
either the Board or a Federal Court.

We grant the request for rehearing to the extent that we have
reconsidered the decision and concerning the first point raised by the
Requester, but deny the request in all other respects.

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The CAFC ‘190 Patent Decision
Requester urges that we reconsider our April 20, 2015 decision in
light of the CAFC ‘190 Patent Decision, asserting that “[t]he CAFC ‘190
Patent Decision affects both the panel's consideration of secondary evidence
under all rejections, as well as SynQor's motivation to combine arguments in
the Steigerwald-based rejections.” Req. Reh’g at 4.
The thrust of the argument is that, as the Federal Circuit found certain
claims of the ‘190 patent anticipated, and remanded for a renewed
consideration of obviousness rejections based upon that prior art anticipating
certain claims, we should reconsider our decision. Reh’g Req. 6-7. The
central part of the argument is that
SynQor has never made a showing that its secondary evidence has a
nexus to the features of the '702 patent that are different from the
anticipated claims in the '190 patent. In fact, SynQor has repeatedly
made the opposite case: that the very same secondary considerations
are attributable to claim elements common to every claim of all of its
patents.

Req. Reh’g 7.
The problem with this position is that the panel was aware of the ‘190
Patent Decision, and did not overlook it. “To the extent the evidence relied
upon during litigation and decisions of the District Courts and Federal
Circuit are informative, we have considered them as such.” Dec. 2.
Accordingly, for this reason alone, the requested relief is denied.
However, we also observe that even had the panel overlooked the
CAFC ‘190 Patent Decision, the Federal Circuit decision is not directly
related to the central issues raised, argued, and briefed in the record of this
reexamination proceeding, and the record of the present appeal. The Court’s
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holding specifically related to an embodiment the Court found produced as a
result of the incorporation by reference of U.S. Patent No. 5,274,539 (filed
Dec. 4, 1991) (“Steigerwald ’539”) into U.S. Patent No. 5,377,090 (filed
Jan. 19, 1993) (“Steigerwald ’090”). Vicor, 603 F. App’x at 971.
Steigerwald ’090 teaches a converter that has a single isolation stage
followed by a plurality of regulation stages. These regulation stages allow
Steigerwald ’090 to provide multiple output voltages. The isolation stage
uses diodes as rectifiers, and Steigerwald ’090 does not disclose using
controlled rectifiers in place of the diodes. Id.
Based in large part upon the identity of the figures and a common
numeral 20 missing from a description in the ‘090 Patent3, the Federal
Circuit determined that Steigerwald ‘090 incorporates by reference at least
those teachings of Steigerwald ‘539 that relate to its capacitance-multiplying
converter 20. Id. at 974–75. The incorporated teachings include
Steigerwald ‘539’s alternative embodiment, which teaches a substitution of
synchronous rectifiers for diodes in the isolation stage. Id. at 975. That
alternative embodiment was a central feature of the 95/001,733
reexamination proceeding.
In reversing the Board’s decision regarding the anticipation rejection
and remanding to consider the obviousness issues in the 95/001,733
reexamination proceeding, the Federal Circuit noted that
the teachings of the combined Steigerwald reference may be relevant
to any objective evidence of nonobviousness. For example,

3 We are unable to locate in the record where the issue of the missing
description of numeral 20 was raised or briefed in either the 95/001,733
reexamination proceeding or subsequent Board appeal.
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commercial success is evidence of obviousness only when there is a
‘nexus ... between the merits of the claimed invention and evidence of
commercial success.’ Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1324 (Fed.Cir. 2004). Vicor should have the opportunity to
argue that SynQor's evidence of commercial success is attributable not
to the claimed invention, but to the prior art converter taught by the
combined Steigerwald references.

Id. at 975–76.
The Requester points us towards the Board’s recent decision in
reexamination proceeding 95/001,637, concerning U.S. Patent 7,272,021
(“the PTAB ‘021 Patent Decision”). Req. Reh’g. 5–6. In that decision, the
Board determined that the Federal Circuit’s decision had a direct bearing on
the outcome of the case. It involved precisely the same art, the same
positions on interpretation of the art, and the same parties. Specifically, on
page 8, we determined that:
The Court was presented with this precise issue as to whether the
embodiments of the different Steigerwald references could be
combined into a single embodiment as Requester and the Examiner
have done here.

The ‘021 Patent Dec. 8.
Accordingly, we exercised our discretion and found the Federal
Circuit’s decision persuasive on (1) whether the Steigerwald references
could be combined into a single embodiment, (2) the issue of the
embodiment anticipating certain claims, and (3) the decision’s impact on
certain secondary considerations.
In the present reexamination proceeding, the rejections involve some
of the same art as in the ‘190 patent. However, none of the rejections
reversed by the Board relies upon the combined example found to exist by
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the Federal Circuit in the Federal Circuit’s ‘190 Patent decision. Nor are the
claims of this proceeding the same as the ‘021 or ‘190 patent. Consequently,
the issue as to whether the instant claims are rendered prima facie obvious
by the art as applied in this proceeding is, in our view, not significantly
influenced by the Federal Circuit’s decision in the related reexamination
concerning anticipation of different claims by a differently applied
reference.
There are several prima facie rejections, which include either of the
Steigerwald references. We discuss each such prima facie case below in
relation to the Court’s determination in the ‘190 Patent.
II. The rejection of Claims 26, 27, 53, 54, 67, 68, 81, 85, and 89
under 35 U.S.C. § 103(a) over Cobos I, Pressman, Steigerwald ’090, and
Jovanovic.4

This rejection was adopted from the Request, page 25 and Exhibit 21.
RAN 10; Reexam Order January 19, 2012, pages 10–11. Steigerwald ‘090
was relied upon for the proposition that it was “notoriously well known” to
“use multiple singled-ended forward converter transformers, operating with
complementary duty cycles, in order to [] achieve a substantially
uninterrupted flow of power.” Req. 25.
The prima facie case of obviousness is therefore unrelated to the
Federal Circuit’s holding in the ‘190 Patent decision.
V. The rejection of Claims 1, 26–28, 53, 54, 78, 81, 82, and 85 under
35 U.S.C. § 103(a) over Steigerwald ’090, Cobos I, Kassakian Textbook,
and Pressman.

4 Section designations from the Decision are reused herein to avoid
confusion.
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The 95/001,406 Reexamination Proceeding’s original Request is the
source of this rejection, adopted by the Examiner in this proceeding. See
Dec. 16. It states, that Steigerwald ’090 teaches a power converter system
including a first transformer Tl and a second transformer T2, as shown in the
sole Figure of Steigerwald ’090. ‘406 Reexamination’s Request 66. The
first transformer Tl includes primary winding 22 and secondary winding 24,
and the second transformer T2 includes primary winding 26 and secondary
winding 28. Diode rectifiers CRap and CRbp are coupled to the transformers
Tl and T2, respectively. Id.
This initial prima facie case is, therefore, also unrelated to the Federal
Circuit’s holding in the ‘190 Patent decision.
VI. The rejection of Claims 2, 29, 55, 67-76, 86, and 89 under
35 U.S.C. § 103(a) over Steigerwald ’090, Cobos I, Kassakian Textbook,
Pressman, and Sutton.

The issues concerning this rejection are the same as Rejection V,
immediately preceding, and therefore unrelated to the Federal Circuit’s
holding in the ‘190 Patent decision.
IX. The rejection of Claims 1-3, 12, 13, 15-20, 26, 78, 80 and 81
under 35 U.S.C. § 103(a) over JP ’446, Steigerwald ’539, Kassakian
Textbook, Kassakian Article, and Ji.

Steigerwald ‘539 was relied upon in this rejection for the concept of
replacing the diodes of JP ’446 with the synchronous rectifiers SRa and SRb
of Steigerwald ’539. ‘406 Request at 440, cited in Dec. 34. Doing so, as
suggested in Steigerwald ’539, we determined it would have improved the
efficiency of the rectifying system of JP ’446 as was well known by those of
ordinary skill in the art as admitted in the ’702 patent. Id.
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This prima facie case thus is also unrelated to the Federal Circuit’s
holding in the ‘190 Patent decision.
X. The rejection of Claims 28, 29, 53, 55, 69, 73-76, 82, 85, 86 and 89
under 35 U.S.C. § 103(a) over JP ’446, Steigerwald ’539, Kassakian
Textbook, and Kassakian Article.

The issues concerning this rejection are the same as Rejection IX,
immediately preceding, and therefore also substantially unrelated to the
Federal Circuit’s holding in the ‘190 Patent decision.
XI. The rejection of Claims 38, 51, 52 and 65-67 under
35 U.S.C.§ 103(a) over JP ’446, Steigerwald ’539, Kassakian Textbook,
Kassakian Article, and Cobos II.

The issues concerning this rejection are the same as Rejection IX,
above, and therefore also unrelated to the Federal Circuit’s holding in the
‘190 Patent decision.
XII. The rejection of Claims 41 and 70 under 35 U.S.C. § 103(a) over
JP ’446, Steigerwald ’539, Kassakian Textbook, Kassakian Article, and
Cruz.
The issues concerning this rejection are the same as Rejection IX,
above, and therefore also substantially unrelated to the Federal Circuit’s
holding in the ‘190 Patent decision.
Secondary Considerations
We previously weighed the evidence of secondary considerations
(Dec. 21–28) and determined that it overcame the prima facie case of
obviousness. The Requester on rehearing now takes the position that
“SynQor has never made a showing that its secondary evidence has a nexus
to the features of the '702 patent that are different from the anticipated
claims in the ‘190 patent.” Req. Reh’g 7 (emphasis omitted). Requester
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also urges that the findings of the Federal Circuit undercut the secondary
considerations generally. Id.
We are not persuaded by this argument.
The Requester made certain arguments in the related ‘190 Patent
reexamination proceeding and appeal concerning an embodiment in the
Steigerwald ‘090 reference. Those arguments were ultimately successful
upon its appeal to the Federal Circuit. We then determined that certain
factual determinations the Federal Circuit made in its non precedential ‘190
Patent decision should govern the outcome of that precise issue in an another
related 95/001,637 reexamination proceeding appeal, because the issue was
identical, the parties were identical, and the issue was adequately raised and
thoroughly developed.
We, however, exercised discretion and declined to extend the Federal
Circuit’s issue resolution to the facts and record of this particular
proceeding, where the issues are not as closely related as the ‘637
reexamination proceeding. We determined that the issue had not been
adequately raised and developed on this record.
As the Patent Owner observed, Requester was aware of and had ample
opportunity to advance the underlying theory that Steigerwald ‘090 included
another embodiment and secondary considerations should be viewed in light
of that prior art. To permit Requester to introduce new theories at this time,
which theories could have been raised in the initial Reexamination Request
and fully developed and potentially rebutted on the record during the
prosecution in this proceeding, would unfairly allow the introduction of new
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arguments in this case after the record has been closed. See, e.g., PO
Comments on Req. Reh’g, 3.
We agree, and observe that it is eminently unfair to require Patent
Owner to have provided evidence at this stage in the proceeding, and
against an issue that had not been raised in this proceeding.
Accordingly, we decline the request’s invitation to permit the
importation of new, additional, arguments from the ‘190 patent
reexamination proceeding.
The Steigerwald Evidence
Requester’s second position on rehearing urges that the Board
overlooked the Steigerwald Evidence, which consisted of a prior art
publication and deposition transcript. Req. Reh’g. 13. The Steigerwald
Evidence was submitted in a Notice of Concurrent Proceedings dated
November 18, 2013 and filed by Patent Owner. Id.
Patent Owner addresses the Steigerwald evidence on the merits
beginning at page 11 of its Comments on the Request for Rehearing.
Request Reh’g 11.
Both parties misapprehend the status of the Steigerwald Evidence.
Patent Office rules strictly govern what may be placed into the record
in an inter partes reexamination proceeding at both the examination and the
appeal stage.
For the examination stage and the appeal stage, 37 CFR § 1.985
provides as follows:
§ 1.985 Notification of prior or concurrent proceedings in
inter partes reexamination.

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(a) In any inter partes reexamination proceeding, the
patent owner shall call the attention of the Office to any prior or
concurrent proceedings in which the patent is or was involved,
including but not limited to interference or trial before the
Patent Trial and Appeal Board, reissue, reexamination, or
litigation and the results of such proceedings.

(b) Notwithstanding any provision of the rules, any
person at any time may file a paper in an inter partes
reexamination proceeding notifying the Office of a prior or
concurrent proceeding in which the same patent is or was
involved, including but not limited to interference or trial
before the Patent Trial and Appeal Board, reissue,
reexamination, or litigation and the results of such proceedings.
Such paper must be limited to merely providing notice of the
other proceeding without discussion of issues of the current
inter partes reexamination proceeding.

Rule 985 (b) states that the paper notifying the Office of concurrent
proceedings should simply notify the Office of the proceeding and the
results. Including the deposition transcript in the notice was improper and
consequently an unauthorized paper.
37 CFR § 1.939 (a) provides that, as regards unauthorized papers in
inter partes reexaminations, “[i]f an unauthorized paper is filed by any party
at any time during the inter partes reexamination proceeding it will not be
considered and may be returned.”
We deem the “Steigerwald Evidence” to be unauthorized papers and
accordingly they were not, and will not, be considered at this stage of the
proceedings.
Moreover, at the appeal and rehearing stage, submission of the
deposition transcript and prior art publication as a Notice of Concurrent
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Proceeding violates multiple Board rules. 37 CFR § 41.63 (c) provides that
“[a]ffidavits or other evidence filed after the date of filing an appeal
pursuant to § 41.61 will not be admitted except as permitted by reopening
prosecution under § 41.77(b)(1).” This evidence therefore is improper and
excluded from the record, and from consideration in the instant proceeding.
Finally, for an issue to be raised on rehearing, it must have been
adequately raised before the Board in the briefs. 37 CFR § 41.79(b),
completely reproduced above, provides in part that that:
Arguments not raised in the briefs before the Board and evidence
not previously relied upon in the briefs are not permitted in the
request for rehearing except as permitted by paragraphs (b)(2)
and (b)(3) of this section.

37 CFR § 41.79(b)(1) (emphasis added).
The Steigerwald Evidence and any argument pertaining to it was not
raised in any of the previous briefing before the Board. Nor was it in
response to a recent decision of the Federal Circuit or in response to a new
ground of rejection. Accordingly, this Request for Rehearing contains
impermissible argument.
We therefore decline to consider the Steigerwald Evidence.
CONCLUSION
We have carefully considered the request for rehearing, but decline to
modify our previous decision for the reasons noted above.
ORDER
The Request for Rehearing is granted insofar as we have considered
the first argument raised by the Requester, but denied in all other respects.

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DENIED
Patent Owner:

Greenblum & Bernstein, PLC
1950 Roland Clarke Place
Reston, VA 20191

Third Party Requester:

Turner Boyd, LLP
2570 West Camino Real
Suite 380
Mountain View, CA 94040