Thomas v. Pippin, Patent Interference 105

• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
• Writing for the Court: PER CURIAM.
• Decision Date: 26 January 2015
• Parties: C. DOUGLASS THOMAS and ALAN E. THOMAS v. JACK D. PIPPIN Patent 7, 506, 190 C1 Patent 7, 937, 599 Application 12/321, 798 Application 13/727, 433 Junior Party Application 13/786, 274 Senior Party Technology Center 2100
• Docket Number: Patent Interference 105,105,956 McK,959 McK,957 McK,958 McK

C. DOUGLASS THOMAS and ALAN E. THOMAS Patent 7, 506, 190 C1 Patent 7, 937, 599 Application 12/321, 798 Application 13/727, 433 Junior Party
v.
JACK D. PIPPIN

Application 13/786, 274 Senior Party Technology Center 2100

Patent Interference Nos. 105, 956 McK, 105, 957 McK, 105, 958 McK, 105, 959 McK

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 26, 2015

(electronic delivery): Attorney for Junior Party – Thomas: Richard Neifeld Robert Hahl Neifeld IP Law, PC, C. Douglas Thomas IpVenture, Inc.

Attorney for Senior Party – Pippin: R. Danny Huntington William N. Hughet Rothwell, Figg, Ernst & Manbeck, PC

Before FRED E. McKELVEY, RICHARD E. SCHAFER, and HUNG H. BUI, Administrative Patent Judges.

PER CURIAM.

JUDGMENT 37 C.F.R. §41.127(a)

In view of the Decision on Motions (Paper 295), it is

ORDERED that judgment on priority as to all Counts be entered against junior party C. Douglass Thomas and Alan E. Thomas, and real party in interest Ip Venture, Inc.;

FURTHER ORDERED that with respect to Interference 105, 956, claims 1-17, 20, and 22-26 of Thomas involved U.S. Patent 7, 506, 190 are CANCELLED, 35 U.S.C. 135(a);^[1]

FURTHER ORDERED that with respect to Interference 105, 957, claims 1-28 of Thomas involved U.S. Patent 7, 937, 599 are CANCELED, 35 U.S.C. 135(a);

FURTHER ORDERED that with respect to Interference 105, 958, claims 1-27 of Thomas involved application 12/321, 798 are FINALLY REFUSED; and

FURTHER ORDERED that with respect to Interference 105, 959, claim 1-24 of Thomas involved application 13/727, 433 are FINALLY REFUSED;

FURTHER ORDERED that a copy of the Decision on Motions (Paper 295) and this Judgment be entered in the administrative records of

(1)involved Thomas U.S. Patent 7, 506, 190

(2)involved Thomas U.S. Patent 7, 937, 599

(3)involved Thomas application 12/321, 798

(4)involved Thomas application 13/727, 433

(5)involved Pippin application 13/786, 274,

(6) Interference 105, 956,

(7) Interference 105, 957,

(8) Interference 105, 958, and

(9) Interference 105, 959;

FURTHER ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office, Patent Trial and Appeal Board (37 C.F.R. §§ 90.1 and 104.2); and

FURTHER ORDERED that attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 2014 WL 2167677 (D. Mass. 2014).

NOTICE: "Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the interference, shall be in writing and a true copy thereof filed in the Patent and Trademark Office before the termination of the interference as between the said parties to the agreement or understanding." 35 U.S.C. 135(c); see also Bd.R. 205 (settlement agreements).

DECISION ON MOTIONS 37 C.F.R. §41.125

I. Introduction

The case before us relates to four consolidated interferences involving (1) two Junior Party^[1] Thomas patents and two Junior Party Thomas applications versus (2) Senior Party^[2] Pippin application 13/786, 274^[3] (Pippin '274):

(1)Interference 105, 956 between claims 1-17, 20, 22-26^[4] of Thomas Patent 7, 506, 190^[5] (Thomas '190) and claim 1 of Pippin '274 (Paper 1, pp. 6-8);

(2)Interference 105, 957 between claims 1–28 of Thomas Patent 7, 937, 599^[6] (Thomas '599) and claim 1 of Pippin '274 (Paper 1, pp. 6-8);

(3)Interference 105, 958 between claims 1–27 of Thomas application 12/321, 798^[7] (Thomas '798) and claim 1 of Pippin '274 (Paper 1, pp. 6-8); and

(4)Interference 105, 959 between claims 1–24 of Thomas application 13/727, 433^[8] (Thomas '433) and claim 1 of Pippin '274 (Paper 1, pp. 6-8).

The terminology "this interference" as used in this opinion should be construed as referring collectively to Interferences 105, 956 through 105, 959.

All post-declaration papers in this interference have been filed in administrative record of Interference 105, 956. Order (Paper 3); First Redeclaration^[9] (Paper 215).

Pending are the following motions:

(1) Thomas Motion 1 (Paper 177) seeks entry of judgment against claim 1 of Pippin '274 based on:

(i) an alleged lack of written description under 35 U.S.C. § 112, first paragraph, and

(ii) an alleged indefiniteness under 35 U.S.C. § 112, second paragraph.

Paper 177, pp. 1-17.

Pippin opposes (Paper 197).

Thomas did not file a reply.

(2) Thomas Motions 5.1 through 5.4 (Papers 193-196) seek entry of judgments of no interference-in-fact between the subject matter of certain Thomas claims and the subject matter of claim 1 of Pippin '274:

(i) Thomas Motion 5.1 (Paper 193) seeks entry of judgment of no interference-in-fact between claims 1-17, 20, 22-26 of Thomas '190 (all the remaining claims) and claim 1 of Pippin '274. Pippin opposes (Paper 226). Thomas has replied (Paper 274).

(ii) Thomas Motion 5.2 (Paper 194) seeks entry of judgment of no interference-in-fact between 1–28 of Thomas '599 (all the claims) and claim 1 of Pippin '274. Pippin opposes (Paper 227). Thomas did not reply.

(iii) Thomas Motion 5.3 (Paper 195) seeks entry of judgment of no interference-in-fact between claims 1-27 of Thomas '798 (all the claims) and claim 1 of Pippin '274. Pippin opposes (Paper 228). Thomas did not reply.

(iv) Thomas Motion 5.4 (Paper 196) seeks entry of judgment of no interference-in-fact between claims 1-24 of Thomas '433 (all the claims) and claim 1 of Pippin '274. Pippin opposes (Paper 229). Thomas did not reply.

(3) Thomas Motion 6 (Paper 178) seeks to designate claims 10 and 18–26 of Thomas '190 as not corresponding to the Count. Pippin opposes (Paper 230). Thomas has replied (Paper 278).

(4) Thomas Motion 7 (Paper 179) seeks to designate claims 26-27 of Thomas '798 as not corresponding to the Count. Pippin opposes (Paper 231). Thomas has replied (Paper 277).

(5) Pippin Miscellaneous Motion 4 (Paper 96) seeks entry of an order vacating authorization for Thomas to file Motion 1 and Motions 5.1-5.4. Thomas opposes (Paper 98). Pippin has replied (Paper 100). An opinion in support of our decision with respect to Pippin Motion 4 has been entered as a separate paper (Paper 296).

II. Background

Pippin requested an interference between (1) claim 1 of Pippin '274 and (2) claims of the Thomas patents and applications. Interference Request (Ex. 1003, pp. 8–60). 37 C.F.R. § 41.202(a)

The involved Thomas patents and applications are part of a family of related patents and pending continuation applications ("the Thomas family").

All the claims of seven patents^[10] of the Thomas family have been canceled as a result of adverse final decisions in Interferences 105, 801, 105, 802 and 105, 803.

The interfering subject matter is directed to methods and systems for power and thermal management in computer systems including a microprocessor having a clock speed.

During operation of the system, the microprocessor temperature is sensed.

If a predetermined temperature is reached, an active cooling device (fan) is activated and the clock speed of the microprocessor is reduced to decrease the heat generated.

The interfering subject matter is represented by Count 1, which is the same as claim 1 of Pippin '274.

Claim 1 of Pippin '274 is (1) identical to claim 34 of Pippin's parent application 10/464, 482 ("Pippin '482") filed on June 19, 2003 and (2) was the Count in each of the three prior interferences: 105, 801, 105, 802, and 105, 803.

Count 1 (identical to Pippin claim 1) reads [matter in brackets added]:

A computer system comprising:

[1] an active cooling device;

[2] a microprocessor comprising:

[2.1] a register storing a register value corresponding to a threshold temperature;

[2.2] a programmable thermal sensor receiving the register value, wherein the programmable thermal sensor generates a first interrupt signal if a microprocessor temperature exceeds the threshold temperature,

wherein the active cooling device is activated in response to the first interrupt signal, and wherein the active cooling device comprises a fan, and [3] clock circuitry for providing a clock signal for the microprocessor,

wherein a frequency of the clock signal is reduced in response to the first interrupt signal.

Paper 215, pp. 3-4 (Count 1); Paper 15, p. 3 (clean copy of Pippin Claim 1).

All Thomas claims have been designated as corresponding to the Count:

(1)claims 1–17, 20, and 22–26 of Thomas '190

(2)claims 1–28 of Thomas '599,

(3)claims 1–27 of Thomas '798, and

(4)claims 1–24 of Thomas '433. Paper 215, pp. 4–10.

With respect to Count 1, the parties have been accorded an earlier constructive reduction to practice date (i.e., benefit for the purpose of priority) of:

Earliest Thomas date: 20 June 1994

Earliest Pippin date: 21 September 1993

Thomas has not contested the September 21, 1993 benefit date accorded to Pippin. Paper 64, p. 19.

Moreover, Thomas does not allege a date of invention prior to the earliest date accorded to Pippin (21 September 1993).

Accordingly, there was no need to authorize motions based on priority. Paper 64, p. 19.

Assuming that Thomas does not prevail on its motions, Pippin prevails on the issue of priority and all Thomas claims designated to corresponding to the Count would be unpatentable.

A. Witnesses

Thomas relies on the testimony of Dr. Jose Renau. See

(1)First Declaration of Jose Renau, Ph.D., in support of Thomas Motion 1 (Paper 177). Ex. 2009 (Renau CV), Ex. 2010.

(2)Second Declaration of Jose Renau, Ph.D., in support of Thomas Motion 5.1 (Paper 193), Ex. 2019.

(3)Third Declaration of Jose Renau, Ph.D., in support of Thomas Motion 5.2 (Paper 194), Ex. 2020.

(4)

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