30
Sep
By Eric Schweibenz
On September 28, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 23 and Order No. 24 in Certain Notebook Computer Products and Components Thereof (Inv. No. 337-TA-705).  In Order No. 23, ALJ Rogers denied Respondents Wistron Corporation, Wistron InfoComm (Texas) Corporation, and Wistron InfoComm Technology (America) Corporation’s (collectively, “Wistron”) motion for summary determination of invalidity of U.S. Patent No. 7,156,693 (the ‘693 patent).  In Order No. 24, ALJ Rogers denied Wistron’s motion for summary determination of invalidity of U.S. Patent No. 5,430,867 (the ‘867 patent).

According to Order No. 23, Wistron argued in its motion that the Cirque Hidden Touch Surface/Advanced Glidepoint Technology (the “Cirque HTS technology”) anticipates the asserted claims of the ‘693 patent.  Wistron also argued that the asserted claims of the ‘693 patent would have been obvious in view of the Cirque HTS technology.

Complainant Toshiba Corporation (“Toshiba”) opposed the motion, arguing that Wistron could not rely on the amorphous Cirque HTS technology as its basis for anticipation because it is inappropriate to lump various documents together in an attempt to create a single “technology” prior art reference.  Toshiba further argued that a Cirque specification document relied on by Wistron was not prior art because it included a confidential label and was not publicly available.  With regard to obviousness, Toshiba argued that Wistron had provided a legally insufficient analysis because it had failed to explain how the combination of references rendered the claims obvious or why one of ordinary skill in the art would have had a reason to combine the references.  Toshiba also argued that evidence of secondary considerations precluded summary determination of obviousness.

The Commission Investigative Staff (“OUII”) also opposed Wistron’s motion.  OUII argued that there was a factual dispute regarding whether or not the Cirque specification document qualified as a prior art printed publication under 35 U.S.C. § 102.  OUII also noted that Toshiba’s expert had provided testimony that the Cirque HTS technology does not teach all of the limitations of the asserted claims, and OUII therefore argued that summary determination of invalidity was inappropriate.  Finally, OUII argued that Toshiba’s evidence of secondary considerations also precluded summary determination of invalidity.

After considering the parties’ arguments, ALJ Rogers determined that Wistron’s anticipation analysis was deficient and did not entitle it to summary determination.  According to the Order, “[s]imply asserting that Cirque designed and manufactured a touchpad that could be used underneath device surfaces is not sufficient to demonstrate anticipation of the asserted claims.”  ALJ Rogers also found that there was a factual dispute as to whether the Cirque specification document qualified as a prior art printed publication under 35 U.S.C. § 102 -- and this also precluded summary determination.  With respect to obviousness, ALJ Rogers found Wistron’s argument deficient because it “lacks any substantive analysis and is instead limited to conclusory statements regarding obviousness void of any citations to supporting evidence.”  ALJ Rogers further found that there was a genuine issue of material fact concerning the existence and effect of Toshiba’s alleged evidence of secondary considerations.  Accordingly, ALJ Rogers denied Wistron’s motion for summary determination of invalidity of the ‘693 patent.

In Order No. 24, ALJ Rogers denied Wistron’s motion for summary determination of invalidity of the ‘867 patent.  According to the Order, Wistron argued in its motion that the asserted claims of the ‘867 patent would have been obvious in view of a 1985 IBM Technical Disclosure Bulletin, a 1987 IBM Technical Disclosure Bulletin, and the admitted prior art described in the ‘867 patent specification.

Toshiba opposed the motion, arguing that summary determination of invalidity was improper because there was no established claim construction and Wistron had acknowledged that the parties disputed the scope of the claims.  Toshiba also argued that the prior art references failed to disclose all of the limitations of the asserted claims, and that Wistron had failed to offer any evidence regarding why one of ordinary skill in the art would have combined the references.  Finally, Toshiba argued that evidence of secondary considerations precluded summary determination of obviousness.

OUII also opposed Wistron’s motion.  OUII claimed that Wistron only addressed a single claim of the ‘867 patent in its motion and ignored the rest of the asserted claims.  OUII also argued that there were factual disputes as to whether the references disclosed all the limitations of the asserted claims and whether there would have been a reason to combine the references -- and that these factual disputes precluded summary determination.  Finally, OUII argued that secondary considerations weighed against a summary determination of obviousness.

ALJ Rogers determined that there was a genuine issue of material fact regarding whether one of ordinary skill in the art would have had a reason to combine the prior art references to arrive at the asserted claims of the ‘867 patent.  The ALJ also found that there was a genuine issue of material fact regarding the existence and effect of Toshiba’s alleged evidence of secondary considerations.  Accordingly, ALJ Rogers found that summary determination was inappropriate, and denied Wistron’s motion.
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