Ex Parte 7564702 et al

Patent Trial and Appeal Board

Apr 14, 2014

95001406 (P.T.A.B. Apr. 14, 2014)

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. 95/001,406 07/23/2010 7564702 X43412 4429 7055 7590 04/14/2014 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER HEYMAN, JOHN S ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/14/2014 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 ________________ MURATA MANUFACTURING CO., LTD. Requester and Respondent v. SYNQOR, INC. Patent Owner and Appellant ________________ Appeal 2013-008869 Inter partes Control No. 95/001,406 Patent No. 7,564,702 Technology Center 3900 ________________ Before KARL D. EASTHOM, JUSTIN T. ARBES, and GLENN J. PERRY, Administrative Patent Judges. PERRY, Administrative Patent Judge. DECISION ON APPEAL I. INTRODUCTION Patent Owner SynQor, Inc. (“SynQor” or “Patent Owner”) appeals under 35 U.S.C. § 134(b) from the Examiner’s decision on reexamination to reject claims 1-9, 11-20, 22-26, 28-36, 38-47, 49-53, 55-62, 64-67, 69-76, Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 2 and 78-89 of U.S. Patent No. 7,564,702 (“the ’702 patent”). Claims 90-94 were added during prosecution and also stand rejected. Third-Party Requester Murata Manufacturing Co., Ltd. (“Murata” or “Requester”) urges that the Examiner’s decision be affirmed. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(b). A combined oral hearing was held on September 25, 2013 for reexaminations 95/001,405 and 95/001,406 (this case). A transcript of that hearing has been made of record in both cases. We reverse the Examiner’s decision to reject claims 1-9, 11-20, 22- 26, 28-36, 38-47, 49-53, 55-62, 64-67, 69-76, 78-91, and 93-94. We sustain the Examiner’s decision to reject claim 92. A. SynQor Patent Family and Related Proceedings The ’702 patent belongs to a family (“Synqor family”) of related patents and pending applications.1 The earliest priority date applicable to the ’702 patent is Jan. 24, 1997.2 Patent Owner asserted the ’702 patent (and other patents of the SynQor family) in SynQor, Inc. v. Artesyn Technologies, Inc. et al., Case No. 2:07-cv-497 (E.D. Tex.) (“’497 litigation”) against Requester and other defendants. PO App. Br. 1. Patent Owner asserted claims for induced and contributory infringement under 35 U.S.C. § 271(b) and (c), alleging that defendants sold power supply components with knowledge that they would be used in, or were especially made to be used in, infringing systems 1 Pending applications for related technology include: 13/157,439 and 12/907,188. PO App. Br. 1. 2 Provisional Application 60/036,245 was filed January 24, 1997. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 3 imported into the United States. Patent Owner also asserted direct infringement under 35 U.S.C. § 271(a) with respect to U.S. sales. After trial in 2010, the District Court enjoined3 defendants (including Requester) from further infringement. PO App. Br. 1. On March 13, 2013, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the District Court judgments of infringement and damages.4 This reexamination relates to one of a number of SynQor family patents involved in reexamination at the USPTO including: 95/001,206; 95/001,207;5 95/001,4056; 95/001,406 (this appeal); 95/001,491; 95/001,637; 95/001,702; 95/001,853; and 95/001,861.7 Id. B. Technical Background and Invention The SynQor family relates generally to what is now known as “Unregulated Intermediate Bus Architecture (‘UIBA’)” or “intermediate bus 3 See Case No. 2:07-CV-497-TJW-CE “Permanent Injunction” dated January 24, 2011 (based in part on Defendants having “directly infringed” claims 56 and 71 of U.S. Patent No. 7,564,702). 4 Appeal Nos. 2011-1191, 2011-1192, 2011-1194, 2012-1070, 2012-1071 and 2012-1072. Synqor, Inc. v. Artesyn Tech., Inc., 709 F.3d 1365 (Fed. Cir. 2013). 5 In Appeal 2012-012209, the PTAB issued a decision on August 19, 2013 reversing all Examiner rejections in reexamination 95/001,207 of U.S. Patent No. 7,072,190. 6 In Appeal 2013-008867, the PTAB issued a decision on March 6, 2014 reversing all Examiner rejections in reexamination 95/001,405. 7 On September 17, 2013, the USPTO issued an action confirming the patentability of claims at issue in U.S. Patent No. 8,023,290. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 4 architecture” (“IBA”).8 UIBA is characterized at a high-level as referring to a “two-stage” DC-DC power converter system that separates isolation and regulation functions into separately optimized stages. PO App. Br. 2-4. The non-regulating isolation stage, known as an “unregulated bus converter” (“UBC”), includes controlled rectifiers synchronized to the voltage waveform of a primary winding of its associated isolating transformer. The UBC provides an isolated intermediate bus voltage to non-isolating switching regulators, now commonly known as “point of load” (“POL”) regulators. Id. According to Patent Owner, the claimed two-stage configuration allows for improved efficiency, low cost, and small size (“ECS benefits”). PO App. Br. 2-3. POLs are often (but not necessarily) located in physical proximity to the loads to which they supply power. Such arrangements are referred to as “distributed” power supplies. The ’702 patent, including independent claims 1, 28, 55, 78, 82 and 86, is directed to combinations of a UBC stage and POLs that together form a complete power supply. PO App. Br. 2-4. Patent Owner indicates that independent claims 28, 55, 78, 82, and 86 stand/fall with claim 1. PO App. Br. 4. 8 The SynQor family patents do not use the phrase “intermediate bus architecture” (IBA) and its variants, such as “unregulated intermediate bus architecture” (UIBA). According to Patent Owner, in related reexamination 95/001,207, these terms were adopted by the industry after Dr. Martin F. Schlecht, the named inventor, disclosed his inventions to Cisco and others in the early 2000’s. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 5 C. Evidence Considered The Examiner relies on the following prior art in rejecting the claims: JP ’446 JP H5-64446 Mar. 12, 1993 Steigerwald ’539 US 5,274,539 Dec. 28, 1993 Steigerwald ’090 US 5,377,090 Dec. 27, 1994 Schlecht ’634 US 4,788,634 Nov. 29, 1988 J.A. Cobos & J. Uceda, “Low Output Voltage DC/DC Conversion,” 20th International Conference on Industrial Electronics, Control and Instrumentation (IECON ’94), 1676-81 (1994) (“Cobos I”). John G. Kassakian et al., PRINCIPLES OF POWER ELECTRONICS 576-581 (1991) (“Kassakian Text”). J.A. Cobos et al., “Study of the Applicability of Self-Driven Synchronous Rectification of Resonant Topologies,” 23rd Annual IEEE Power Electronics Specialists Conference, 1992 (“Cobos II”). Abraham I. Pressman, SWITCHING AND LINEAR POWER SUPPLY, POWER CONVERTER DESIGN (1977) (“Pressman”). John G. Kassakian & Martin F. Schlecht, “High-Frequency High-Density Converters for Distributed Power Supply Systems,” 76(4) Proceedings of the IEEE 362-376 (April 1988) (“Kassakian Art.”). H.K. Ji & H.J. Kim, “Active Clamp Forward Converter with MOSFET Synchronous Rectification,” 25th Annual IEEE Power Electronics Specialists Conference 895-901, 1994 (“Ji”). Enrique de la Cruz et al., “Analysis Of Suitable PWM Topologies To Meet Very High Efficiency Requirements For On Board DC/DC Converters In Future Telecom Systems,” 15th International Telecommunications Energy Conference (INTELEC) 207-214 (1993) (“de la Cruz”). Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 6 J. Uceda & J.A. Cobos, “Supplying Power at Low Voltage (3.3V),” IEEE (1995) (“Uceda”). Patent Owner relies on the following (condensed) listing of documents set forth in an Evidence Appendix and a Related Proceedings Appendix of the Patent Owner Appeal Brief. PO App. Br. 99-106. The litigation documents are from the ’497 litigation. Document Designator Description A19 USP 7,564,702 A2 Pellikaan Declaration A3 SynQor Response to Non-Final Office Action A4 SynQor’s Comments on the Action Closing Prosecution (ACP) A6 USP 5,999,417 (incorporated into ’702 patent) A7-A18 Non-patent literature A19-A3310 Trial Transcripts 9 Documents A1-A100 are so designated in the Evidence Appendix of the Patent Owner Appeal Brief. Documents R1-R13 are so designated in the Related Proceedings Appendix of the Patent Owner Appeal Brief. Documents A1-A3 and A6-A100 are represented by Patent Owner as having been submitted into the reexamination record no later than May 4, 2011 (prior to the ACP). PO App. Br. 99-106. Patent Owner’s response to the non-final office action of March 4, 2011 refers to some of these documents. 10 Many of the documents A1-A100 (but not all) and R1-R13 are public record documents of the ’497 litigation. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 7 A34-A59 Trial documents including deposition transcripts A60 Declaration of James Dickens A61-A100 Exhibits to Declaration of James Dickens R1 Claim Construction Order R2-R5 Summary Judgment Orders R6-R13 Jury Verdict, Judgments, Injunctions, and trial orders Requester submitted on July 25, 2011, a transcript of the deposition of Ohannes Wanes. D. Rejections The Examiner adopted rejections proposed by Requester11 as follows (for convenience, we use the “issue” denominations from pages 5-9 of the RAN): Issue A. Claims 1, 12-20, 23, 26, 28, 39-47, 50, 53, 78, 80-82, 84 and 85 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Cobos I, Kassakian Text and Pressman as set forth in the Request at pages 66-158. Issue B. Claims 3, 9, 30, 55, 56, 64, 67, 69-76, 86, 88 and 89 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090, Cobos I, Kassakian Text, Pressman and Sutton as set forth in the Request at pages 158-206. Issue C. Claims 4-9, 11, 31-36, 38, 57-62, 65, 66, 79, 83 and 87 are rejected under 35 U.S.C. § 103(a) as being unpatentable over 11 Request dated July 23, 2010. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 8 Steigerwald ’090, Cobos I, Kassakian Text, Pressman, Sutton and Cobos II as set forth in the Request at pages 207-252. Issue D. Claims 22, 24, 25, 49, 51 and 52 are rejected under 35 U.S.C. §103(a) as being unpatentable over Steigerwald ’090, Cobos I, Kassakian Text, Pressman and Cobos II as set forth in the Request at pages 253-267. Issue E. Claims 1-3, 12-14, 17-20, 23, 26, 28-30, 39-41, 44-47, 50, 53, 55, 56, 64, 67, 69, 70, 73-76, 78, 80-82, 84-86, 88 and 89 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pressman and Kassakian Article as set forth in the Request at pages 267-371. Issue F. Claims 4, 5, 7-9, 11, 22, 24, 25, 31, 32, 34-36, 38, 49, 51, 52, 57, 58, 60-62, 65, 66, 79, 83 and 87 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pressman, Kassakian Article and Schlecht ’639 as set forth in the Request pages at 371-416. Issue G. Claims 6, 33 and 59 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pressman, Kassakian Article, Schlecht ’639 and Uceda as set forth in the Request at pages 416-419. Issue H. Claims 15, 16, 42, 43, 71 and 72 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pressman, Kassakian Article and Uceda as set forth in the Request at pages 420-427. Issue I. Claims 1-3, 12, 13, 15-20, 26, 78, 80 and 81, as modified by the RAN, are rejected under 35 U.S.C. § 103(a) as being unpatentable over JP ’446, Steigerwald ’539, Kassakian Text, Kassakian Article and Ji as set forth in the Request at pages 427-618. Issue J. Claims 4-9, 11, 22-25, and 79 as modified by the RAN, are rejected under 35 U.S.C. § 103(a) as being unpatentable over JP ’446, Steigerwald ’539, Kassakian Text, Kassakian Article, Ji and Cobos II as set forth in the Request at pages 491-532. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 9 Issue K. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over JP ’446, Steigerwald ’539, Kassakian Text, Kassakian Article, Ji and de la Cruz as set forth in the Request at pages 541-542. Issue L. Claims 28, 29, 53, 55, 69, 73-76, 82, 85, 86 and 89 are rejected under 35 U.S.C. § 103(a) as being unpatentable over JP ’446, Steigerwald ’539, Kassakian Text and Kassakian Article as set forth in the Request at pages 542-599. Issue M. Claims 38, 51, 52 and 65-67 are rejected under 35 U.S.C. § 103(a) as being unpatentable over JP ’446, Steigerwald ’539, Kassakian Text, Kassakian Article and Cobos II as set forth in the Request at pages 599-612. Issue N. Claims 41 and 70 are rejected under 35 USC 103(a) as being unpatentable over JP ’446, Steigerwald ’539, Kassakian Text, Kassakian Article and de la Cruz as set forth in the Request at pages 612-615. Claims 90-94 were added during the reexamination. In addition to the issues denominated A-N, above, the Examiner rejected claims 90-94 as follows. Claims 90-92 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steigerwald ’090 and Pressman and the combination of JP ’446, Steigerwald ’539, and Kassakian Article. Claim 92 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 93 and 94 are rejected based on the rejection of claim 15 (rejected under 35 U.S.C. § 103(a) as being unpatentable over JP ’446 in view of Steigerwald ’539, Kassakian Text, Kassakian Article and Ji as set forth in Request at pages 427-618). Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 10 E. Patent Owner Contentions Patent Owner advances technical arguments (PO App. Br. 42-60) against the various obviousness rejections adopted by the Examiner and also argues objective evidence of non-obviousness (PO App. Br. 9-41, 61-68), primarily from trial documents associated with the ’497 litigation. These objective evidence arguments include commercial success (PO App. Br. 15- 17), acting against conventional wisdom (PO App. Br. 29), copying (PO App. Br. 32-34), long-felt need (PO App. Br. 26-28), and the invention having been met with disbelief/surprise/skepticism (PO App. Br. 34), in accordance with the “Graham factors” set forth in Graham v. John Deere, 383 U.S. 1 (1966), and followed in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). F. Requester Contentions Requester contends that (1) the various combinations of references adopted by the Examiner render the claims obvious (Resp. Br. 21-26); (2) Patent Owner improperly relies upon evidence from the ’497 litigation (Resp. Br. 11-12); and (3) Patent Owner’s objective evidence is not convincing (Resp. Br. 13-21). G. Issue The issue before us is whether the record establishes that claims 1-9, 11-20, 22-26, 28-36, 38-47, 49-53, 55-62, 64-67, 69-76 and 78-94 would have been obvious to one of ordinary skill in the relevant art at the critical Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 11 date (Jan. 1997). “Obviousness is a question of law based on underlying findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying factual inquiries are: (1) “‘the scope and content of the prior art,’” (2) the “‘differences between the prior art and the claims at issue,’” (3) “‘the level of ordinary skill in the pertinent art,’” and (4) “‘secondary considerations’” of nonobviousness. KSR, 550 U.S. at 406 (quoting Graham, 383 U.S. at 17-18). In assessing the obviousness of patent claims, “[o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.” KSR, 550 U.S. at 418; see also id. (“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (alteration in internal quotation in original). The articulated reasoning and factual under-pinnings of an examiner’s rejection are, thus, essential elements of any stated ground of rejection to which applicants are entitled to notice and a fair opportunity to respond. In reaching our conclusions as to the obviousness rejections, we consider the technical arguments made with respect to the prior art along with the objective evidence related to the question of obviousness. For convenience, we first discuss the technical arguments made by the parties and then the objective evidence of non-obviousness. However, as to each Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 12 rejection, all of the evidence, including our review of the prior art and the objective evidence, has been weighed in reaching our conclusion. Claim 92 is also rejected under 35 U.S.C. § 112. II. CLAIM CONSTRUCTION Claim 1 is illustrative and is reproduced below with the construed portion italicized and with added indentations and labels for ease of reference. 1. A DC-DC power converter system providing plural regulated DC outputs, each having a regulated voltage, comprising: a) a DC input providing an input voltage that varies over a range that is more than plus or minus a few percent; b) a non-regulating isolating step-down converter through which power from the DC input flows first before flowing through any regulation stage, the non-regulating isolating step-down converter providing a non-regulated, isolated DC output having a non-regulated voltage and comprising: i) at least one transformer that is not driven into saturation, the at least one transformer having plural windings including at least one primary winding and at least one secondary winding; ii) plural power MOSFET switches in circuit with the at least one primary winding, the plural power MOSFET switches causing power to flow into the at least one primary winding; iii) control circuitry coupled to the plural MOSFET switches, the control circuitry determining when the power MOSFET switches are turned on and off in a switching cycle at a switching frequency; and iv) plural controlled rectifiers in circuit with the at least one secondary winding, each having a parallel uncontrolled rectifier, each controlled rectifier being turned on for an on-state time and off for an off-state time in synchronization with a voltage waveform of the at least one primary winding to provide the non- regulated, isolated DC output, the voltage waveform of the at least one primary winding having a fixed duty cycle and transition times which are short relative to the on-state and the off-state times of the controlled rectifiers; and Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 13 c) plural non-isolating down-converter switching regulators, each receiving power from the non-regulated, isolated DC output and each providing one of the regulated DC outputs having a regulated voltage. (formatting and emphasis added). The emphasized limitation has corresponding limitations in each of the other independent claims (28, 55, 78, 82, and 86). In construing the claim limitation italicized above, we face the same dearth of clues faced by the District Court in carrying out its claim construction in the ’497 litigation and by the Examiner during prosecution of the reexamination from which this appeal is taken. The ’702 patent does not contain any drawings of the voltage waveform of a primary winding. Nor does it provide any explicit quantization of “short” as it relates to the primary voltage waveform. However, the word “short” is quantized in other contexts. We adopt the same construction adopted by both the District Court and the reexamination Examiner−that in the context of the claims at issue, the upper limit of “short” is 20% of the on-state and the off-state times of the controlled rectifiers. The primary winding is connected to a DC input that is switched. We view the primary winding voltage waveform as being pulse-like (square) rather than sine wave-like because it is connected to a DC source that is switched. Also, we note the use of descriptors “transition” and “duty cycle” which are generally used to describe pulse waveforms. According to embodiments described by the specification and drawings, the primary winding voltage waveform results from high frequency switching of the Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 14 primary winding circuit of the isolating transformer. See, e.g., Q1 and Q2 in Figure 5. The “Summary” portion of the ’702 patent includes language which mirrors the claim language: Each controlled rectifier is turned on and off in synchronization with the voltage waveform across a primary winding to provide an output. Each primary winding has a voltage waveform with a fixed duty cycle and transition times which are short relative to the on-state and off-state times of the controlled rectifiers. A regulator regulates the output while the fixed duty cycle is maintained. ’702 patent, 2:13-19. The specification also tells us: A controller turns on the first and second primary switches in opposition, each for approximately one half of the switching cycle with transition times which are short relative to the on-state and off- state times of the first and second controlled rectifiers. ’702 patent, 2:28-33. The only quantization we find for the word “short” in the ’702 patent relates to the synchronous rectifier having switch transitions that are “short” compared to the overall on-state and off-state portions of the switching cycle: The nearly lossless delivery and recovery of energy is achieved because the circuit topology permits the synchronous rectifier switch transitions to proceed as oscillations between inductors and capacitors. These transitions are short compared to the overall on-state and off-state portions of the switching cycle (e.g. less than 20% of the time is taken up by the transition). This Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 15 characteristic of nearly lossless and relatively short transitions, which we will call soft switching, is distinct from that used in full resonant, quasi-resonant, or multi- resonant converters where the oscillations last for a large portion, if not all, of the on-state and/or off-state time. ’702 patent 8:5-15 (emphasis added). This portion of the specification places an upper limit of “short” at 20% and distinguishes operation of the controlled rectifiers from topologies referred to in the literature as “resonant.” The ’702 patent describes technical challenges in using synchronous rectifiers in high frequency converters as follows: The use of transistors as synchronous rectifiers in high switching frequency converters presents several technical challenges. One is the need to provide properly timed drives to the control terminals of these transistors. This task is made more complicated when the converter provides electrical isolation between its input and output because the synchronous rectifier drives are then isolated from the drives of the main, primary side transistors. Another challenge is the need to minimize losses during the switch transitions of the synchronous rectifiers. An important portion of these switching losses is due to the need to charge and discharge the parasitic capacitances of the transistors, the parasitic inductances of interconnections, and the leakage inductance of transformer windings. ’702 patent, 1:49-62 (emphasis added). Although we do not generally import limitations from a specification into a patent claim, we must fill the void resulting from lack of explanation. Because the claimed rectifiers are synchronized with the primary winding voltage waveform, we construe the “short transitions” of the primary Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 16 winding to be time periods having an upper limit of 20% of the “on-state” and “off-state” time periods of the claimed controlled rectifiers. In the absence of clear guidance, we adopt the only construction of “short” that we can discern from the record. Although it would have been more satisfying to find clearer guidance, we find no reason to deviate from the construction adopted by both the District Court and the Examiner. III. TECHNICAL ARGUMENTS Discussion of the rejections is organized into three sections based on the combinations of primary references used in the numerous rejections. Issues A-D principally rely on the combination of Steigerwald ’090 and Cobos I. Issues E-H principally rely on the combination of Pressman and Kassakian Art. Issues I-N principally rely on the combination of JP ’446 and Steigerwald ’539. The teachings of the secondary references are not in dispute. Each of the independent claims (1, 28, 55, 78, 82, and 86) requires a combination of an isolation stage (UBC) with one or more regulator stages (POLs). The claims further require that the isolation stage use controlled rectifiers to rectify current in the transformer secondary circuit and that those rectifiers are synchronized to the voltage waveform of a transformer primary winding. That voltage waveform must have a fixed duty cycle and transition times which are short relative to the on-state and the off-state times of the controlled rectifiers. A. Rejections based on Steigerwald ’090 and Cobos I (Rejections denominated as Issues A-D) Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 17 The sole figure of Steigerwald ’090 is reproduced below. The sole Figure of Steigerwald ’090, above, “schematically illustrates a multiple-output [V1, V2…Vm] pulsed power supply.” Steigerwald ’090, 2:6-9 A non-regulating isolation stage (left portion of figure including transformer windings) provides an intermediate bus voltage (+DC bus, -DC bus) to linear regulators (semiconductor devices 50, 51, 60 and 61). The linear regulators provide current pulses for powering radar. Steigerwald ’090, Abstract and Figure. Currents flowing in primary windings (22, 26) of transformers (T1, T2) are switched by switching transistors (Qa, Qb). Currents induced in secondary windings (24, 28, 40, 42) are rectified by diodes CRap, CRbp, CRan and CRbn to provide power at the intermediate bus. Transformers T1 and T2 provide isolation between a Main DC Power Bus 12 and the output buses. It is undisputed that Steigerwald ’090 does not Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 18 use controlled rectifiers in its isolation stage, nor does it synchronize controlled rectifiers to a primary winding voltage waveform. Cobos I is an IEEE article published in 1994 that describes circuits including controlled rectifiers for DC/DC “On Board Converters” (“OBC”) in “Distributed Power Systems” (“DPS”) operating at low output voltage (3.3 V). Cobos I, 1676, Abstract. Cobos I Figures 5(a), 5(b), 6, 9 and 10 illustrate the use of synchronous rectifiers in secondary winding circuits. Cobos I Figure 6 is illustrative and is reproduced below. Cobos I Figure 6 above depicts two forward topologies along with their respective waveforms. Patent Owner argues (PO App. Br. 42-43) that one of only ordinary skill at the time of the invention would not have found it obvious to produce the claim 1 invention based on Steigerwald ’090 and Cobos I. We agree. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 19 Patent Owner argues that if one were to substitute the Cobos I synchronous rectifier circuits into Steigerwald ’090 in order to gain efficiency, such efficiency would not be achieved. The Steigerwald ’090 linear regulators would dissipate whatever energy might be saved by substituting controlled rectifiers for the Steigerwald ’090 diodes. PO App. Br. 43. According to Patent Owner, overall efficiency is important and linear regulators are usually quite inefficient. PO App. Br. 43 (citing Pressman 87-91). Requester counters that one of ordinary skill would have known how to improve the efficiency of the Steigerwald ’090 and Cobos I combination. For example, one would have replaced the inefficient linear regulators with switching regulators. Resp. Br. 25. Patent Owner notes, however, that it would not make sense to use switching regulators in Steigerwald ’090 because its circuit arrangement is designed to deliver current pulses. Switching regulators would not permit the required current pulses to be provided. Patent Owner argues that substituting the Cobos I controlled rectifiers into the Steigerwald ’090 topology would have been expected to add significant size and complexity to the circuit and, therefore, doing so would have been against conventional wisdom in January 1997, the priority date of the ’702 patent invention. Making the substitution would require extra control circuitry to create an appropriate driving waveform for the gates of the controlled rectifiers or a self-driven arrangement. PO. App. Br. 44-45. Patent Owner points to Cobos I at 1678, which suggests that external control circuitry would be expected to generate additional power losses, take up Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 20 added space, and cost more. PO App. Br. 44. Furthermore, according to Patent Owner, synchronous rectification rarely was used prior to 1999. PO App. Br. 45 (citing to A-88 at 1 and Kassakian Text, 372). Patent Owner further argues that Steigerwald ’090 teaches away from combination with Cobos I because Steigerwald ’090 prohibits use of an inductor in its output circuit path. PO App. Br. 35-36. The Steigerwald ’090 topology is that of a “capacitance multiplier” circuit12 using a MOSFET linear regulator to deliver rapid current change pulses to radar. Its design objective would be thwarted by a series inductor in its conduction path. PO App. Br. 35 (citing to A3 at 42-43; A60 ¶¶ 7-14, 17, 23 and 27). An inductor acts as impedance to rapid current changes (required for the current pulses). PO App. Br. 36. Patent Owner points to the prosecution history of Steigerwald ’090, which specifically explains the rationale for the use of linear regulators rather than switching regulators as the need to minimize inductance. PO App. Br. 36 (citing to A4 at 21). We have reviewed Steigerwald ’090 and find explicit prohibitions to the use of inductors in its conduction path. See, e.g., claim 1, limitations (a), (d), (e), (h), (j) and (k), each of which specifically requires a “path lacking inductors.” We also reviewed Cobos I to determine what it would have suggested to one of ordinary skill as of the operative date of invention. The Cobos I 12 The topology of Steigerwald ’090 is that of a “capacitance-multiplying converter.” Steigerwald ’090, Abstract. Energy stored in a capacitor (Ce) in the primary circuit is transformed into pulses in the secondary winding circuit. Capacitance multiplying topology is explained in greater detail in Steigerwald ’539. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 21 secondary winding circuits that include controlled rectifiers have inductors in their respective conduction paths. See, e.g., Cobos I, Fig. 6; RAN 23. Only one embodiment is illustrated in Steigerwald ’090, and as noted, its claims specifically exclude inductors. Requester counters that Steigerwald ’090 does not teach away from including an inductor in the conduction path. Resp. Br. 24. In support, Requester notes that not all of the output voltages of the Steigerwald ’090 isolation stage are pulsed outputs. However, as noted by Patent Owner, the outputs that are not pulsed are bias voltages that do not draw substantial power. PO Rebut. Br. 12-13. We find Patent Owner’s argument to be persuasive. Even though there are bias voltages outputted from the Steigerwald ’090 isolation stage, one of ordinary skill would have focused on the conduction paths that provide power. The inductor prohibition on the power delivery buses would have discouraged one of ordinary skill from substituting any circuits that would place an inductance in such conduction paths. Requester further argues that Cobos I does not require an inductor in its conduction path, urging that we compare Cobos I Figure 4 with Cobos I Figures 5, 6, 9 and 10. Requester argues that the inductors shown in Cobos I Figures 4-6, 9 and 10 include an inductor arranged with a capacitor as a filter even though Cobos I Figure 4 uses diodes and Cobos I Figures 5, 6, 9 and 10 use synchronous rectification. Resp. Br. 25. Requester’s point is not clear to us. Nevertheless, the Cobos I drawings show an inductor. Requester has not provided persuasive argument indicating that one of ordinary skill in the art would not have been discouraged from attempting to use the Cobos I Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 22 arrangement of controlled rectifiers, with inductors in the conduction path, to replace the rectifiers in Steigerwald ’090. Patent Owner also argues that a frequency incompatibility between Steigerwald ’090 and Cobos I would have dissuaded one of ordinary skill from making the substitution. PO App. Br. 46. According to Patent Owner, Steigerwald ’090 operates at a switching frequency in the range of 3-10 MHz, whereas Cobos I’s self-driven synchronous rectification topology has an upper limit of 1 MHz and its external driven scheme has an upper limit of 200 kHz. PO App. Br. 46 (citing to A3 at 50-51 and A4 at 15, and 26-27). According to Patent Owner, lowering the Steigerwald ’090 frequency renders it unfit for its purpose and the Cobos I techniques cannot be implemented at higher frequencies. PO App. Br. 47. In the absence of any persuasive evidence or argument as to how one of ordinary skill would have handled the apparent frequency incompatibility, Patent Owner’s argument is persuasive. Patent Owner argues that the claimed “short transition” requirement also would have suggested to one of ordinary skill not to attempt to combine the Steigerwald ’090 and Cobos I topologies. PO App. Br. 46-47. The claims require a controlled rectifier to be synchronized to a primary winding voltage waveform having “short” transitions relative to the on-state and off- state of a controlled rectifier. The Examiner admits that Steigerwald ’090 does not teach that the voltage waveform across the primary winding has short transitions as called for by the claim. PO App. Br. 46. Patent Owner argues that changing the Steigerwald ’090 topology to one such as shown in Cobos I Figure 9 in an attempt to create suitable waveforms (as claimed) Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 23 across the primary winding creates incompatibilities. PO App. Br. 47. Cobos I Figure 9 shows a series inductor, which Steigerwald ’090 cannot tolerate, and the square wave topology of Cobos I Figure 9 cannot be made to operate efficiently in the 3-10 MHz range required by Steigerwald ’090. PO App. Br. 47. The Examiner does not address how one of ordinary skill would have dealt with these incompatibilities. Neither the Examiner nor Requester point to persuasive evidence that Cobos I suggests to one of ordinary skill how to meet the claim requirement related to the primary winding voltage waveform having “short transitions” with respect to the “on-state” and “off-state” of the controlled rectifiers. Thus, Steigerwald ’090 and Cobos I do not meet the limitations of the independent claims and their respective dependent claims. B. Rejections based on Pressman and Kassakian Article (Rejections denominated as Issues E-H) At Requester’s urging, the Examiner adopted rejections denominated as Issues E-H based on Pressman Figure 3-3 (Pressman 79) and Pressman Figure 3-4(b) (Pressman 82). Requester fashioned a drawing depicting an embodiment (“hybrid embodiment”) combining portions of Pressman Figure 3-3 and 3-4(B). The hybrid embodiment includes a leftmost block corresponding to the first two blocks of Pressman Figure 3-3, a central block corresponding to a portion of Pressman Figure 3-3 and a rightmost block corresponding to the rightmost portion of Pressman Figure 3-4(B). This hybrid embodiment is set forth in the Original Request at page 270 and in Respondent’s Brief at page 15. Requester argues that this hybrid Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 24 embodiment shows a DC power source, a non-regulating isolation stage, and a plurality of non-isolating regulation stages. The rejections adopted by the Examiner propose to modify the hybrid embodiment by incorporating into it synchronous rectifiers from Kassakian Art. Patent Owner challenges the newly fashioned Pressman drawing as a starting point for modification and notes that the Examiner in reexamination 95/001,207 withdrew a similar rejection based on the same challenge. PO App. Br. 50. Patent Owner argues that Pressman itself, in its description related to Figure 3-5, indicates that the two stage approaches described with respect to Pressman Figures 3-3 and 3-4 are not preferred, in part because they are not efficient. Pressman describes a preference for a single stage approach using pulse width modulation that would be more efficient. Oral Hearing Transcript 14; Pressman 83 (“The schemes of Figs. 3-3 and 3-4 can be used with only one transformer secondary winding and one filter capacitor to generate a multiplicity of different output voltages at high efficiency as shown in Fig. 3-4B.”). Thus, according to Patent Owner, Pressman teaches away from the two-stage approach on which the rejection depends. Furthermore, Kassakian Art teaches the use of synchronous rectifiers only in a resonant topology. Patent Owner points out the complexity of adapting such synchronous rectifiers to a square wave topology such as Pressman. One such complexity relates to the frequency incompatibilities of Pressman and Kassakian Art. PO App. Br. 51-52. Patent Owner notes that Kassakian Art. specifically teaches away from using square waves (as used in Pressman). PO App. Br. 52. Neither the Examiner nor Requester explain Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 25 how the adaptations required to combine Pressman and Kassakian Art. would be carried out by one of only ordinary skill. We conclude, based on the technical incompatibilities and lack of explanation as to how they would be overcome, that the record does not establish obviousness based on combinations of Pressman and Kassakian Art. C. Rejections based on JP ’446 and Steigerwald ’539 (Rejections denominated as Issues I-L) We also conclude that obviousness rejections based on the combined teachings of JP ’446 and Steigerwald ’539 are not well-founded. Each of independent claims 1, 28, 55, 78, 82 and 86 requires “short” transitions of the primary winding voltage waveform with respect to the on-state and off- state periods of the controlled rectifiers. We are not persuaded that either JP ’446 or Steigerwald ’539 teaches the required claim relationship. Patent Owner argues, and we agree, that self-driven synchronous rectifier circuits have driving waveforms generated by the topology of their respective circuits. PO App. Br. 54. Figure 1 of JP ’446 is reproduced below. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 26 Figure 1 of JP ’446 is a block diagram of a power supply system. JP ’446 discloses an AC/DC power supply including a non-regulating isolation stage (Fig. 1, circuit 20) coupled to plural non-isolating regulation stages (Fig. 1, circuits 31-35) through an intermediate bus. The isolation stage has an AC input (not switched DC). Neither Requester nor the Examiner contends that JP ’446 teaches the “short” transitions limitation. JP ’446’s operation depends on the use of sine waves allowing its topology to operate in “resonance” modes. See JP ’446, Abstract, ¶ 12. Figure 4 of JP ’446, reproduced below, is the only drawing of this reference that shows waveforms associated with operation of the circuit. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 27 Figure 4 of JP ’446 above depicts waveforms. Requester does not allege that these waveforms or any other portion of JP ’446 demonstrate the claimed short transitions of the primary winding voltage waveform. Request 187. However, Requester does argue (and the Examiner adopted the rejection) that Steigerwald ’539 demonstrates the required short transitions. Steigerwald ’539 discloses a capacitance-multiplying converter for supplying distributed pulsed loads. Steigerwald ’539, Title. Steigerwald ’539 embodiments shown in Figures 7, 8 and 9 include controlled rectifiers, albeit without parallel diodes, which rectify current flowing in a secondary Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 28 winding of a transformer. Steigerwald ’539 Figures 10a-10f are reproduced below. Steigerwald ’539 Figs. 10a-10f illustrates voltage waveforms. Steigerwald ’539, 2:40-42. Steigerwald ’539 explains that “FIGS 10d, 10e and 10f illustrate the gate voltage (not primary winding voltage) waveforms for synchronous rectifier SRa for the embodiments of Figs. 7-9, respectively. In Figs. 10d-10f, Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 29 voltage Vt represents the threshold voltage that must be reached before the device SRa turns on.” Steigerwald ’539, 5:25-30. The rejections based on JP ’446 and Steigerwald ’539 rely upon Steigerwald ’539 teaching the required short transitions of the primary winding voltage waveform. Because there is no explanation in Steigerwald ’539 as to this feature, the Examiner relies upon the drawings set forth above. We do not subscribe to the Requester’s and Examiner’s “eye-ball” conclusions based on Figure 10f. As Patent Owner contends, Figures 10a- 10f are not represented as being drawn to scale. See PO App. Br. 55-56. Our review of Steigerwald ’539 reveals no explanation that would lead us to believe that the transitions shown in the drawing come within our claim construction of short transitions of the primary winding voltage waveform. Patent Owner argues that the voltage across the primary winding in Steigerwald ’539’s Figures 4 and 6 embodiments follows a sinusoidal shape as it gradually drops from Vo’ to a negative peak value and then gradually rises back to Vo’ at the end of a half cycle. PO App. Br. 57-58. There is no persuasive evidence to the contrary. Furthermore, the voltage waveforms pictured in Steigerwald ’539 are gate voltage waveforms for driving the controlled rectifiers. No persuasive evidence links these gate driving signals to the claim requirement of short transition times of the primary winding voltage waveform. In the absence of persuasive evidence, the Examiner’s conclusion is speculative. We cannot conclude that each of the independent claims requiring a “short” transition would have been obvious at the time of the invention based on such speculation. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 30 The teachings of the secondary references are not in dispute and we find that they do not overcome the shortcomings of the primary combination of JP ’446 and Steigerwald ’539. D. Claims 90-94 Claims 90-94 depend from claims discussed above. Claims 90-94 stand rejected on art grounds. In addition, claim 92 stands rejected under 35 U.S.C. § 112 as indefinite based on its use of the phrase “are is.” See RAN 10-11. Patent Owner has not argued the section 112 rejection of claim 92. We, therefore, sustain this rejection. In the RAN, the Examiner denied entry of (1) the amendment to claim 92 that would have changed it from “are is” to just “are,” and (2) the amendment to claim 90 from “receiver” to “receive.” IV. OBJECTIVE EVIDENCE A. Introduction In addition to the technical evidence and arguments discussed above, our record includes substantial objective evidence of non-obviousness. Much of the objective evidence comes from parallel District Court litigations, including the ’497 litigation,13 which involved the ’702 patent. Patent Owner contends that various documents and activities related to that litigation constitute objective evidence of non-obviousness. Arguments based on these documents relate to copying, commercial success, 13 Requester was a defendant in the ’497 litigation. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 31 long-felt need, industry praise, acting against conventional wisdom and achieving unexpected results. PO App. Br. 7-39, 63-70. In deciding questions of obviousness, we must consider all four Graham factors including objective evidence of non-obviousness. A prima facie case made by the Examiner is not a conclusion on the ultimate issue of obviousness. The ultimate conclusion of obviousness is a legal conclusion to be reached after weighing all of the evidence on both sides. Apple Inc. v. ITC, 725 F.3d 1356, 1365 (Fed. Cir. 2013). We also are mindful that in KSR, the Supreme Court criticized a rigid approach to determining obviousness based on disclosures of individual prior art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, 550 U.S. at 415-22. B. Procedural Objection to Evidence Requester argues that Patent Owner’s briefing improperly relies on documents not properly made of record in the reexamination. These documents include the Dickens Declaration (A60), exhibits to the Dickens Declaration (A61-A100), Dr. Leeb’s (R26)14 and Mr. Reed’s (R27) trial slides, and documents attached to Patent Owner’s notice and updated notice of related litigation. Resp. Br. 11. The Examiner refused entry of these documents under 37 C.F.R. § 1.116(e) when they were formally introduced as exhibits to Declarations submitted after the ACP. See RAN 2. 14 R26 and R27 are not listed in PO App. Br. Evidence Appendix. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 32 Many of the late-submitted documents correspond to documents that were informally presented prior to issuance of the ACP as attachments to Patent Owner’s notices informing the Office of related litigation and in response to office actions. Documents so-submitted were argued by both sides. In the exercise of our discretion, we disregard only certain documents that were late-submitted without any antecedent basis in the record. These documents are not outcome-determinative in reaching our decision. Substantially all of the documents at issue were made of record, argued, and considered in related reexamination 95/001,207 involving related US Patent 7,072,190. In addition, documents related to the ’497 litigation are a matter of public record. We take note of the public record of the ’497 litigation, including, but not limited to, data sheet exhibits related to alleged infringing products, deposition transcripts, jury findings, damage awards, and court orders including injunction orders. The reexamination record of this case reveals the following. Reexamination was requested on July 23, 2010. The Examiner conducted a “litigation search” on that day, which revealed the ’497 litigation. On October 19, 2010, the Examiner ordered reexamination. On March 4, 2011, the Examiner issued a non-final office action. On May 4, 2011, Patent Owner filed a Notice of Concurrent Proceedings. That notice listed numerous documents at issue and indicated that copies were attached. On May 4, 2011, Patent Owner responded to the non-final action (“Resp.”) by making technical arguments directed to Examiner-cited prior art references and objective evidence arguments based on documents Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 33 previously and concurrently submitted. See Resp. The objective evidence arguments quote from documents previously and concurrently submitted. The objective evidence arguments (the same as those briefed in this appeal) rely on and quote ’497 litigation documents. The arguments include: references showing industry skepticism (id. at 1), adoption by industry of Schlecht topologies (id. at 2), nexus (id. at 6), commercial success (id. at 11), conventional wisdom (id. at 18), unexpected results (id.), copying (id. at 20), long felt need (id. at 24), praise by competitors (id. at 27), praise by vendors (id. 32), praise by the technical press and market researchers (id. at 34) and praise by academia (id. at 36). All of this was well before the date of the ACP. Patent Owner’s response to the non-final office action and Requester’s comments make apparent that there were discovery disputes in the ’497 litigation relating to documents not disclosed to Patent Owner as a result of operation of a protective order.15 We need not resolve questions related to this issue in reaching our decision. On July 25, 2011, Requester filed comments directed to Patent Owner’s arguments (and documents cited in Patent Owner’s response). These comments included both technical argument and counter-argument to Patent Owner’s objective evidence arguments. Requester argued from many of the same documents referred to by Patent Owner. On October 6, 2011, additional documents were submitted into the reexamination including the Declaration of Toni Kammers with 29 attached 15 A protective order in the ’497 litigation barred direct participation in the reexamination by persons reviewing Requester’s confidential documents in the litigation. PO App. Br. 8. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 34 trial documents marked exhibits A-AA and the 36 page declaration of Dr. Dickens which was marked exhibit S to the Kammers Declaration. On November 28, 2011, the Examiner issued the ACP, adopting many of Requester’s positions and arguments which reference various litigation documents of the ’497 litigation. On January 30, 2012, Patent Owner submitted, in response to the ACP, “Comments,” an Amendment, a Petition to waive the page limit, a Declaration of Martin F. Schlecht, and a Declaration of Brooke Ekins with exhibits 1 through 266 (the trial documents) and appropriate fees. This set of trial documents was apparently submitted in response to Requester argument that the previously submitted documents were not properly submitted as attachments to appropriate declarations. The 266 trial papers generally correspond to documents previously submitted as attachments to notices of concurrent litigation. Again, most, if not all, of the trial papers are matters of public record from the trial proceedings. These documents were previously submitted to the USPTO in a related reexamination 95/001,207 on which we rendered an appeal decision in Appeal No. 2012-012209. On August 21, 2012, the Examiner issued the Right of Appeal Notice (“RAN”). At RAN page 2, the Examiner indicates that he has carefully reviewed the Schlecht (Exhibit B) and Ekins (Exhibit C) Declarations and made an “overview” of the 266 trial papers submitted with the Ekins Declaration. The Examiner indicates that these papers “will not be entered” because they are in violation of Rule 1.116(e), which requires that an affidavit or other evidence submitted after an Action Closing Prosecution Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 35 (ACP) be admitted only upon a showing of good and sufficient reasons why it is necessary and was not earlier presented. The RAN indicates that similar sets of documents were timely submitted as exhibits to formal declarations in reexaminations 95/001,206 and 95/001,207. The Examiner adopts various arguments and positions taken by Requester in documents filed prior to the ACP, which discuss and in part rely upon the 266 trial documents listed in the Notice of Concurrent Proceedings. The Examiner repeatedly incorporates from Requester’s “Response.” Requester argues extensively from the trial documents in the Respondent Brief, even though taking the position that the trial documents should not be considered. None of the documents submitted in the reexamination have been expunged from the record. The record suggests that the Examiner has considered all of the arguments made by both Patent Owner and by Requester. Furthermore, as to the few documents that may not have antecedent basis in the record prior to the ACP, consideration of those documents is not outcome determinative. Given all of the facts and circumstances, we find that it would be unjust to ignore the objective evidence documents, particularly because they are of record and have been or will be considered by the Office in other proceedings related to the SynQor family. Notwithstanding Patent Owner’s Seventh Amendment argument16 (PO App. Br. 64-65), we do not blindly accept the determinations of the 16 See In re Construction Equipment, 665 F.3d 1254 (Fed. Cir. 2011), in which the majority did not adopt the dissent view that reexamination was constitutionally barred by res judicata or issue preclusion. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 36 district court. Nevertheless, they are informative with respect to nexus and other issues in this reexamination. The legal issue before us is whether or not this record supports a conclusion that the claims would have been obvious to one of ordinary skill as of the effective date of invention (1997). We find the objective evidence documents helpful in resolving the level of ordinary skill and determining whether the invention was beyond the level of the ordinarily skilled artisan in the field of power conversion. We also find the objective evidence helpful in confirming our conclusions based on the technical arguments above. C. Nexus Patent Owner argues that there is a nexus between the claims at issue and the objective evidence presented. PO App. Br. 19. Requester argues that the objective evidence should not be considered and is not convincing because IBA/UIBA is not recited in the claims. Resp. Br. 13. We conclude, based on our review of the record, including product data sheets, that there is a sufficient nexus between the claims at issue and the products at issue in the ’497 litigation Based, in part, on the ’497 litigation evidence, including the jury verdict, and the scope of the claims, the claims are reasonably commensurate in scope with the products at issue (described by the technical data sheets) in the litigation and here. In the ’497 litigation, Patent Owner asserted claims 56 and 71 of the ’702 patent and claims of other SynQor family patents against Requester and other defendants for induced and contributory infringement under 35 U.S.C. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 37 § 271(b) and (c), alleging that the defendants sold power supply components with knowledge that they would be used in, or were especially made to be used in, infringing systems imported into the United States. Patent Owner also asserted direct infringement under 35 U.S.C. § 271(a) with respect to certain U.S. sales. Claims 56 and 71 of the ’702 patent are directed to the combination of a UBC and POL to form a complete power supply system. The jury found infringement of claims 56 and 71, and awarded damages (lost profits). The District Court issued a permanent injunction against infringing UBCs. PO App. Br. 13. The United States District Court for the Eastern District of Texas entered judgment, which was upheld by the CAFC on appeal.17 Patent Owner argues that this finding indicates that the jury determined that there were no suitable non-infringing alternatives for the infringing UBCs and UIBA systems. The District Court finding of infringement of claims 56 and 71 of the ’702 patent and the jury award of lost profits suggest that claims 56 and 71 are reasonably commensurate in scope with the products at issue in the trial. 17 Synqor, Inc. v. Artesyn Tech., Inc., 709 F.3d 1365 (Fed. Cir. 2013). Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 38 D. Commercial Success Patent Owner argues that objective evidence establishes commercial success of the claimed invention. PO App. Br. 15-19. Requester argues that the commercial success achieved by the ’497 litigation defendants (including Requester) is not a result of the ’702 patent claims subject matter because UIBA is taught by the prior art. Resp. Br. 13-18. Patent Owner argues that devices covered by SynQor family claims replaced previous architectures used in high-end computers and telecommunication equipment, and the number of units sold by the ’497 litigation defendants proves commercial success. The argument is supported by testimony reproduced at PO App. Br. 16, citing to A3 at 11-12; R28 at 5- 6; A25 at 196:5-198:15; A29 at 63:1-12; A3 at 12; A18 at 137:5-139:3; A29 53:7-11. According to Patent Owner, the ’497 litigation infringing products constitute substantially the entire market. PO App. Br. 17 (citing to A9 at 1- 3, R19 at 28-29, A3 at 12-13, A18 at 157:19-158:3, R16 at 2, A23 at 111:6- 23 and 132:9-134:8). As Requester points out, it is true that the claims at issue do not recite IBA or UIBA. Resp. Br. 13. We disagree that UIBA is taught by the prior art. See id. at 13-18. As noted above, see supra Section I, UIBA, as now understood, was a term adopted after the SynQor family inventions. There were intermediate bus power supply circuits prior to the SynQor family inventions. See, e.g., Steigerwald ’090 and JP ’446. UIBA, as we now know the term, was an architecture made possible not just by using an intermediate bus, but also by providing separate isolation and regulation stages optimized in particular Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 39 ways. For example, the isolation stage, per claim 1, requires that the stage be operated at a fixed duty cycle. We conclude that UIBA as now known was not taught by the prior art. We, therefore, do not discount the commercial success evidence submitted by Patent Owner. Based on the evidence submitted at trial, it was established that the UBCs described in the defendants’ data sheets have no substantial non- infringing use other than to create infringing UIBA systems and that there are no suitable non-infringing alternatives to the infringing UIBA systems. On this basis, the jury awarded lost profits. Based on the above, we find that the commercial success described by Patent Owner coupled with the technical arguments above is at least somewhat persuasive of the non-obviousness of making the claimed invention. E. Long-Felt Need Patent Owner argues that the Examiner erred in concluding that there was no long-felt need in the industry for the ’702 patent invention. PO App. Br. 26. According to Patent Owner, SynQor established that, as early as 1991, it was recognized that DPA (distributed power adapter) was becoming more unsuitable for applications requiring multiple “ultra low voltages” at “ultra high currents.” PO App. Br. 26-29. Other contemporaneous publications confirmed that the need increased as lower voltage loads emerged, leading to more voltage rails that increased costs and reduced space for end- components. See A17. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 40 A seemingly alternative approach to the SynQor family inventions was described by Narveson as a “Hybrid DPA.” See PO App. Br. 28; A29. Patent Owner characterizes this alternative as a “failed attempt” because it had significantly lower efficiency due to double conversion. PO App. Br. 28. It is notable that Narveson acknowledged that UIBA, and not his 1996 design, represented the “ultimate dream” of “size/efficiency/cost.” PO App. Br. 29 (citing to A74 at 2-5). However, according to Requester, Narveson (A29) provided a solution (albeit a different solution) to the same problem addressed by the ’702 patent. Resp. Br. 20. Given how the industry flocked to the ’702 patent invention, we conclude that Narveson (A29) acknowledged the industry need but did not meet it. He provided a multi-stage design that was not sufficiently efficient due to the “double conversion.” See PO App. Br. 27 (citing A29 at 1 and A28 at 3). It is significant that the high-end computer market and telecom equipment market turned to the Schlecht solution and adopted it. Patent Owner submits evidence that, even two years after the ’702 patent invention, Requester’s engineers still believed that it “will cost effectively fill a growing need currently addressed with rather expensive [DPA] ‘bricks.’” PO App. Br. 27 (quoting A34 at 1). DPA “bricks” that dominated the switch market (A7 at 22; R39 at 1) were swept aside by Dr. Schlecht’s design, which Cisco and others widely adopted after Dr. Schlecht demonstrated its value. See PO App. Br. 29 (citing to R19 at 28-30). We conclude from the evidence that other designs failed to answer a need that the ’702 patent invention answered. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 41 F. Copying We also find in the record substantial evidence of copying of Dr. Schlecht’s inventions. The Examiner dismissed evidence of copying, concluding that Requester offered a “reasonable explanation” for adopting its designs. This explanation was based on deposition testimony of a Murata employee, Mr. Wanes. There is substantial evidence in the record establishing access and substantial similarity. See PO App. Br. 32 (citing to A3 at 20-21; A4 at 112- 117 and A60 at n.23). Patent Owner documented access to SynQor products and changes in design to match them. See PO App. Br. 33 (citing to R10 at 5, 6, 9-11, 13-14, 16-17; A21-A30; A53 (documenting reverse engineering) and A59). We are not persuaded by Requester’s arguments that Patent Owner failed to prove copying. Resp. Br. 20-21. Requester relies on the distinction between UIBA as defined by Patent Owner and “actual” UIBA. Requester’s argument is that because UIBA was known prior to the ’702 patent invention, it was not copied from Dr. Schlecht. However, the evidence suggests that the industry adopted devices made in accordance with “UIBA” as claimed in the ’702 patent after Dr. Schlecht disclosed his circuits to various power system manufacturers.18 Based on the evidence, we conclude that there is evidence of copying and give it at least some weight. 18 See also the table summarizing models of UBCs and SIBAs offered for sale in the Response (to non-final office action) at 25. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 42 D. Claims 90-94 added during reexamination Claims 90-94 depend from independent claims discussed above. Patent Owner did not list claims 90-94 in the claims appendix of the Appeal Brief. Nor did Patent Owner argue these claims. Given our treatment of the independent claims from which these claims depend, we reverse the prior art rejections of these claims. However, we sustain the rejection of claim 92 under section 112, as explained above. IV. CONCLUSION We conclude that it is appropriate for us to consider the various trial documents and other evidence denominated in the reexamination record as A1-A4, A6-A100 and R1-R8. We further conclude that a legally sufficient nexus exists between the claims under reexamination and the products at issue in the litigation and other evidence for us to consider the objective evidence of non-obviousness presented. The weight of the objective evidence reinforces our view, based on the technical arguments and prior art of record, that the claims at issue would not have been obvious in 1997 to one of only ordinary skill in the power supply art. The record does not establish that claims 1-9, 11-20, 22- 26, 28-36, 38-47, 49-53, 55-62, 64-67, 69-76, and 78-89 would have been obvious to one of ordinary skill in the relevant art at the time of the effective date of the ’702 patent invention. We, therefore, do not sustain any of the obviousness rejections of these claims. Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 43 Patent Owner has not argued claims 90-94 added during the course of the reexamination. Given our treatment of the independent claims, we do not sustain the prior art rejections of claims 90-94. However, we sustain the section 112 rejection of claim 92. VI. ORDER For the reasons given, it is ORDERED that the rejection of claims 1-9, 11-20, 22-26, 28-36, 38- 47, 49-53, 55-62, 64-67, 69-76, 78-91, and 93-94 is reversed; and FURTHER ORDERED that the rejection of claim 92 is sustained. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and Appeal 2013-008869 Inter Partes Reexamination Control No. 95/001,406 Patent No. 7,564,702 44 appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010). peb FOR PATENT OWNER: Bruce H. Stoner Greenblum & Bernstein, P.L.C. 1950 Roland Clarke Place Reston, VA 20191 FOR THIRD-PARTY REQUESTER MURATA MANUFACTURING COMPANY, LTD c/o KEATING & BENNETT, LLP 1800 Alexander Bell Drive, Suite 200 Reston, VA 20191