UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`CANON INC.; CANON USA, INC.;
`CANON FINANCIAL SERVICES, INC.; FUJIFILM CORPORATION;
`FUJIFILM HOLDINGS AMERICA CORPORATION;
`FUJIFILM NORTH AMERICA CORPORATION; JVC KENWOOD
`CORPORATION; JVCKENWOOD USA CORPORATION;
`NIKON CORPORATION; NIKON INC.; OLYMPUS CORPORATION;
`OLYMPUS AMERICA INC.; PANASONIC CORPORATION;
`PANASONIC CORPORATION OF NORTH AMERICA;
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`
`Case IPR2016-01200
`Patent 8,504,746
`____________________
`
`PAPST LICENSING GMBH & CO. KG’S
`PATENT OWNER RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`1
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
`
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction .......................................................................................... 1 
`I. 
`Overview of the ’746 Patent ................................................................. 4 
`II. 
`III.  Overview Of The Applied Art .............................................................. 6 
`A.  Aytac’s CaTbox Requires User-Loaded Specialized
`Software To Function Properly .................................................. 6 
`American National Standard For
`Information
`Systems – Small Computer System Interface-2 (“SCSI
`Specification”) .......................................................................... 11 
`Admitted Prior Art ................................................................... 12 
`C. 
`IV.  Claim Construction ............................................................................. 12 
`A. 
`Level Of Ordinary Skill In The Art ......................................... 13 
`B. 
`Response To The Board’s Claim Construction ....................... 14 
`1. 
`“Without requiring any end user to load software” ....... 14 
`Petitioners Did Not Meet Their Burden To Show The Challenged
`Claims Are Unpatentable ................................................................... 15 
`A. 
`Legal Standards ........................................................................ 15 
`B. 
`Petitioners Fail To Demonstrate The Challenged Claims
`Are Obvious Over Aytac In View Of The SCSI
`Specification And The Alleged Admitted Prior Art ................ 18 
`1. 
`Petitioners Fail To Articulate A Proper Obviousness
`Ground ........................................................................... 18 
`Aytac Cannot Support An Obviousness Conclusion
`For The ’746 Patent ....................................................... 19 
`i. 
`Aytac
`Intended CaTbox To Be A
`Multitasking Device To Solve The Problem
`Of
`Integrating Operation Of Multiple
`Devices With A PC ............................................. 19 
`
`V. 
`
`B. 
`
`2. 
`
`i
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`

`

`
`
`ii. 
`
`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`iii. 
`
`CaTbox Needs Specialized Software
`Installed On The PC To Be A Multitasking
`Device To Solve The Problem Of Integrating
`Operation Of Multiple Devices With A PC ........ 20 
`The ’746 Patent Requires An Automatic File
`Transfer Process That Occurs Without
`Requiring User-Loaded File Transfer
`Enabling Software To Be Loaded Or
`Installed In The Host Device ............................... 24 
`iv.  Aytac Must Be Modified To Not Use Its
`Specialized Drivers To Meet The “Automatic
`File Transfer Process” Claim Limitations ........... 25 
`Not Using The CATSYNC.VXD Driver
`Renders CaTbox Incapable Of Reliably
`Transferring Data To The PC While Also
`Managing Its Intended Multitasking Purpose;
`Therefore This Modification Cannot Support
`An Obviousness Conclusion ............................... 25 
`Petitioners Fail To Demonstrate That The Challenged
`Dependent Claims Are Obvious Over Aytac In View Of
`The SCSI Specification ............................................................ 30 
`VI.  Conclusion .......................................................................................... 31 
`
`
`v. 
`
`C. 
`
`ii
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`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Activevideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................. 17
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ................................................................. 17
`Cuozzo Speed Techs., LLC v. Lee,
`No. 15-446, 136 S. Ct. 2131 (June 20, 2016) ............................................ 12
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ...................................................................................... 15
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142, 1149–50 (Fed. Cir. 2012) ................................................. 13
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ................................................................. 13
`In re Bass,
`314 F.3d 575 (Fed. Cir. 2002) ................................................................... 13
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ................................................................. 10
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ........................................................... 18, 30
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................... 17
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ................................................................. 16
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ................................................................. 13
`In re Zurko,
`258 F.3d 1379 (Fed. Cir. 2001) ................................................................. 18
`Intel Corp. v. MicroUnity Systems,
`Appeal No. 2010-008981 (BPAI Dec. 9. 2010) ........................................ 10
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`IPR2014-00309, Paper 83 (PTAB Mar. 23, 2014) .................................... 16
`
`iii
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`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ..................................................... 17, 18, 30
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................ 3, 15, 16
`Personal Web Techs., LLC v. Apple, Inc.,
`2016-1174 Slip op. (Fed. Cir. Feb. 14, 2017) ........................................... 16
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................. 13
`Plas-Pak Indus. v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) ............................................ 17, 18, 29
`Solaia Tech. LLC v. Arvinvmeritor Inc.,
`2003 U.S. Dist. LEXIS 16482 (N.D. Ill. Sept. 17, 2003) ........................... 9
`Southwest Software, Inc. v. Harlequin, Inc.,
`226 F.3d 1280 (Fed. Cir. 2000) ................................................................... 9
`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ................................................................. 29
`Statutes
`35 U.S.C. § 102 ................................................................................... 8, 10, 11
`35 U.S.C. § 103 ............................................................................................. 15
`35 U.S.C. § 311 ............................................................................................. 11
`35 U.S.C. § 314 ............................................................................................... 1
`35 U.S.C. § 316 ......................................................................................... 2, 15
`Regulations
`37 C.F.R. § 1.96 .............................................................................................. 9
`37 C.F.R. § 42.100 ........................................................................................ 12
`37 C.F.R. § 42.120 .......................................................................................... 1
`37 C.F.R. § 42.24 .......................................................................................... 32
`37 C.F.R. § 42.8 ............................................................................................ 32
`Other Authorities
`MPEP § 608.05 ............................................................................................... 9
`
`
`
`iv
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`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`LIST OF EXHIBITS
`
`EXHIBIT NO. TITLE
`1001
`Declaration of Dr. Paul F. Reynolds, Ph.D.
`1002
`Curriculum Vitae of Dr. Paul F. Reynolds, Ph.D.
`U.S. Patent No. 8,504,746 to Michael Tasler (“the ’746
`1003
`Patent”).
`U.S. Patent No. 5,758,081 to Haluk M. Aytac (“Aytac” or
`“the ’081 Patent”).
`American National Standard for Information Systems,
`Small Computer System Interface-2, ANSI X3.131-1994
`(1994) (“SCSI Specification”).
`Prosecution History of the ’081 Patent.
`Excerpts from the Prosecution History of the ’746 Patent.
`MPEP 6th ed., Rev. 1, Sept. 1, 1995, § 608.05.
`Patent Owner (“Papst”)’s Opening Claim Construction
`Brief and Declaration of Robert Zeidman, filed in related
`litigation in the District of Columbia. In re: Papst
`Licensing Digital Camera Patent Litigation, MDL No.
`1880, Case No. 1:07-mc-00493, Dkt. Nos. 630, 630-12
`(June 3, 2016).
`Ray Duncan, ed., “The MS-DOS Encyclopedia,”
`Microsoft Press (1988).
`Federal Circuit decision, In re: Papst Licensing Digital
`Camera Patent Litigation, No. 2014-1110 (Fed. Cir. Feb.
`2, 2015).
`American National Standards Institute, Procedures for the
`Development and Coordination of American National
`Standards, Approved by the ANSI Board of Directors
`(Sept. 9, 1993).
`Japanese Published Application H4-15853 to Kawaguchi
`(“Kawaguchi”)
`U.S. Patent No. 6,088,532 to Yasuhiro Yamamoto et al.
`(“Yamamoto”)
`U.S. Patent No. 5,508,821
`(“Murata”)
`U.S. Patent No. 5,499,378 to Andre B. McNeill et al.
`(“McNeill”)
`File History Excerpt: August 13, 2009 Amendment
`
`to Kazuyuki Murata
`
`v
`
`1004
`
`1005
`
`1004
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`2001
`
`2002
`
`2003
`
`2004
`2005
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`Declaration of Thomas A. Gafford and Appendices A–C
`thereto
`Deposition Transcript of Paul F. Reynolds taken March 9,
`2017
`
`
`
`2006
`
`2007
`
`
`vi
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`

`

`
`I.
`
`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`Introduction
`This proceeding commenced when Petitioners filed a Petition for Inter
`
`Partes review of claims of U.S. Patent No. 8,504,746 (“the ’746 patent”) (Ex.
`
`1003). Patent Owner Papst Licensing GmbH & Co. KG (“Papst”) timely filed
`
`a Preliminary Response. (Paper 7.) The Patent Trial and Appeal Board
`
`(“Board”) entered its Decision on Institution on December 15, 2016
`
`(“Decision”), by which it ordered the institution of trial on claims 1, 6, 15, 17,
`
`18, 31 and 34 of the ’746 patent pursuant to 35 U.S.C. § 314(a) on the single
`
`ground of obviousness over U.S. Patent No. 5,758,081 to Aytac (Ex. 1004) in
`
`combination with the SCSI Specification (Ex. 1005) and alleged Admitted
`
`Prior Art. (Paper 8.)
`
`Papst respectfully submits this Response in accordance with 37 C.F.R.
`
`§ 42.120, opposing the Petition and responding to the Decision as to the single
`
`instituted ground. This Response is supported by the declaration of Papst’s
`
`retained qualified technical expert, Thomas Gafford (Ex. 2006), as well as
`
`other accompanying exhibits.
`
`First, the Petition proposes a modification of the device disclosed in the
`
`primary reference, Aytac, which renders the device inoperable for its intended
`
`purpose. The ’746 patent claims an analog data acquisition device having a
`
`processor to be involved in an automatic file transfer process to cause a file of
`
`1
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`

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`digitized analog data to be transferred to the computer where “there is no
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`PATENT OWNER RESPONSE IN IPR2016-01200
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`requirement for any user-loaded file transfer enabling software to be loaded
`
`on or installed in the computer . . . .” (Ex. 1003 at 12:24–12:26 (emphasis
`
`added); see also claim 31 at 14:42–14:44 and claim 34 at 16:14–16:16.)
`
`Contrary to the requirements of the claims, Aytac teaches that specialized
`
`software is indeed required to be installed on the host computer to synchronize
`
`the operating systems of the host computer and Aytac’s disclosed device,
`
`CaTbox, which enables reliable transfer of files from the CaTbox to the host
`
`computer. Petitioners take the position that the required drivers are not
`
`needed, but not using the drivers renders the CaTbox unable to reliably
`
`transfer data when performing the multiple functions Aytac intended it to
`
`perform. Such modifications cannot be used to support an obviousness
`
`analysis. Second, Petitioners suggest avoiding this problem by implicitly
`
`construing “end user” in a way that is inconsistent with the specification and
`
`prosecution history and does not comport with the Broadest Reasonable
`
`Interpretation (BRI) standard.
`
`Petitioners bear the burden of proving that the instituted claims are
`
`unpatentable by a preponderance of the evidence. 35 U.S.C. § 316(e). In view
`
`of the modifications proposed to Aytac that renders it inoperable, Petitioners
`
`failed to carry their burden.
`
`2
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`

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`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`The Board should also reject the Petition because Petitioners fail to
`
`sufficiently identify and explain their precise invalidity legal theories and
`
`supporting evidence, in violation of the particularity required by the Board.
`
`Petitioners obscure the source of the alleged teachings of the prior art and even
`
`rely on non-prior art teachings of the challenged ’746 patent in support of its
`
`ground of invalidity. (See, e.g., Pet. at 49–51.) Although the single ground of
`
`invalidity is alleged to be based on Aytac (Ex. 1004) in view of the SCSI
`
`Specification (Ex. 1005), Petitioners fail to provide a proper obviousness
`
`analysis, including considering each claimed invention as a whole,
`
`identification of the limitations not disclosed by Aytac, identification of where
`
`those limitations are taught by the SCSI Specification, and why and how the
`
`particular combination would have been made, i.e., an articulated reasoning
`
`with some rational underpinning to support the conclusion of obviousness.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`For example, Petitioners never once concede which claim limitations
`
`are missing from Aytac and fail to clearly articulate any theory of obviousness
`
`premised on combining the teachings of Aytac and the SCSI Specification.
`
`This is particularly apparent in the way Petitioners disregard Aytac’s intended
`
`purpose and its required specialized software. The Board should therefore
`
`issue a final written decision affirming the validity of the challenged claims.
`
`3
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`
`II. Overview Of The ’746 Patent
`The ’746 patent is the result of breakthrough work by inventor Michael
`
`Tasler. Mr. Tasler created a unique method for achieving high data transfer
`
`rates for data acquisition systems (e.g., still pictures, videos, voice recordings)
`
`to a general-purpose computer, without requiring a user to purchase, install,
`
`and/or run specialized software for each system. (Ex. 1003 at 3:32–36.) At the
`
`time of the invention, there were an increasing number and variety of data
`
`acquisition systems with the ability to capture high volumes of information.
`
`(Id. at 1:44–55.) As such, there was an increasing demand to transfer that
`
`information to commercially-available, general purpose computers. (Id. at
`
`1:31–43.) But at that time, performing that data transfer operation required
`
`either loading specialized, sophisticated software onto a general purpose
`
`computer, which increases the risk of error and the level of complexity for the
`
`operator, or specifically matching interface devices for a data acquisition
`
`system to a host system that may maximize data transfer rates but lacks the
`
`flexibility to operate with different devices. (Id. at 1:26–3:24.)
`
`Mr. Tasler recognized that the existing options were wasteful and
`
`inefficient and sought a solution that would achieve high data transfer rates,
`
`without specialized software, while being sufficiently flexible to operate
`
`independent of device or host manufacturers. (Id. at 3:28–48.) The resulting
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`4
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`

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`invention would allow a data acquisition system to identify itself as a type of
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`U.S. PATENT NO. 8,504,746
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`common device so as to leverage the inherent capabilities of general-purpose,
`
`commercially-available computers. (Id. at 4:13–27.) Accordingly, by using
`
`Mr. Tasler’s invention, users could avoid loading specific software; improve
`
`data transfer efficiency; save time, processing power, and memory space; and
`
`avoid the waste associated with purchasing specialized computers or loading
`
`specific software for each device. (Id. at 3:28–45, 7:32–65, 8:29–36, 9:16–20,
`
`11:29–46.) The ’746 patent claims variations of this concept and provides a
`
`crucial, yet seemingly simple, method and apparatus for a high data rate,
`
`device-independent information transfer. (Id. at 3:28–31.)
`
`Tasler discloses that his interface device could leverage “drivers for
`
`input/output device[s] customary in a host device which reside in the BIOS
`
`system of the host device” (Id. at 10:16–17; see also id. at 4:20–24 (“The
`
`interface device according to the present invention therefore no longer
`
`communicates with the host device or computer by means of a specially
`
`designed driver but the means of a program which is present in the BIOS
`
`system . . .”); 5:13–20 (describing the use of “usual BIOS routines” to issue
`
`INQUIRY instructions to the interface); 7:51–58 (describing use of BIOS
`
`routines).) Similarly, the written description describes also using drivers
`
`included in the operating system. (See, e.g., id. at 5:8–11 (“Communication
`
`5
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`

`

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`between the host system or host device and the interface device is based on
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`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`known standard access commands as supported by all known operating
`
`systems (e.g., DOS, Windows, Unix).”).) Alternatively, if the required
`
`specific driver or drivers for a multi-purpose interface (such as a SCSI
`
`interface) is already present in a host device, such drivers could be used with
`
`Tasler’s interface device instead of, or in addition to customary drivers which
`
`reside in the BIOS. (Id. at 10:14–20.) Accordingly, Tasler contemplated a
`
`universal interface device that could operate independent of the manufacturer
`
`of the computer. (See id. at 11:29–46.) Indeed, the preferred embodiment
`
`discloses that the interface device includes three different connectors, a 50 pin
`
`SCSI connector 1240, a 25 pin D-shell connector 1280, and a 25 pin connector
`
`1282, to allow Tasler’s interface device to connect to a variety of different
`
`standard interfaces that could be present in a host computer. (Id. at 8:37–54,
`
`FIG. 2.)
`
`III. Overview Of The Applied Art
`A. Aytac’s CaTbox Requires User-Loaded Specialized Software
`To Function Properly
`
`Aytac discloses a specialized device to allow communication between
`
`a computer and multiple peripheral devices. Aytac’s title is “Computing and
`
`communications transmitting, receiving system, with a push button interface,
`
`that is continuously on, that pairs up with a personal computer and carries out
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`6
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`mainly communications related routine tasks.” (Ex. 1004.) As the title
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`PATENT OWNER RESPONSE IN IPR2016-01200
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`suggests, Aytac generally relates to a telecommunications apparatus or
`
`“Personal Communicator” in the form of an embedded computer called
`
`“CaTbox” (so named because the device “sits between a Computing and a
`
`Telecommunications apparatus”). (Id. at 4:8–20 (emphasis in original).)
`
`Given the complexity of managing connections to many devices, Aytac
`
`discloses specialized software needed for the device to function properly.
`
`Notably, Aytac includes Source Code that was not printed with or
`
`referenced in the Aytac patent. The Board found that Aytac’s Source Code is
`
`not prior art that may be relied upon in this proceeding, except to show the
`
`level of ordinary skill in the art at the time of the invention. (Decision at 15–
`
`17.) Even when viewed from this limited perspective, the Source Code
`
`supports Papst’s position that specialized code must be installed on the host
`
`computer for Aytac’s CaTbox to work properly—why else would one of
`
`ordinary skill feel compelled to include such software with Aytac’s patent
`
`application? Because Mr. Aytac felt it was needed for the CaTbox to work. If
`
`only regularly-available software were needed, none of this specialized
`
`software would have been needed. Indeed, Petitioners’ expert, Dr. Reynolds,
`
`admitted at deposition that such software would be needed to avoid data
`
`corruption and accomplish the functionality disclosed in Aytac’s disclosure.
`
`7
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`(Ex. 2007 at 92:15–93:10, 95:2–98:2.)
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`PATENT OWNER RESPONSE IN IPR2016-01200
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`With respect to the prior art status of the Source Code, Papst includes
`
`its prior argument regarding the prior art status of the Source Code from its
`
`preliminary response for the Board’s reference.
`
`Petitioners argue that source code filed with the Aytac patent, although
`
`not found in the patent document itself, forms a part of the disclosure of Aytac,
`
`and therefore qualifies as prior art under 35 U.S.C. § 102(e). (Pet. at 17–18.)
`
`Petitioners state that Aytac’s mode of filing the 450 pages of source code
`
`“followed the requirements for computer listing filings in effect” at the time.
`
`(Id. at 18) A closer look at the rules in effect at the time show that Petitioners
`
`are incorrect.
`
`The rules indeed require insertion of a reference to a code appendix at
`
`the beginning of the application:
`
`A statement must be included in the specification to the
`effect that a microfiche appendix is included in the application.
`The specification entry must appear at the beginning of the
`specification immediately following any cross-reference to
`related applications, 37 CFR 1. 77(c)(2). The patent front page
`and the Official Gazette entry will both contain information as to
`the number of microfiche and frames of computer program
`listings appearing in the microfiche appendix.
`
`(Ex. 1008 at 4 (emphasis added).)
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`8
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`PATENT OWNER RESPONSE IN IPR2016-01200
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`Title 37 C.F.R. § 1.96, which is reproduced in MPEP § 608.05,
`
`provides that computer program listings, if 10 printed pages or less, must be
`
`submitted as part of the specification or drawings, but if 11 pages or more,
`
`should be submitted “as an appendix which will not be printed.” (Ex. 1008 at
`
`2–3 (quoting 37 C.F.R. § 1.96 (a), (b)).) Although 37 C.F.R. § 1.96(b)
`
`concludes with the sentence that “[a]ll computer program listings submitted
`
`on paper will be printed as part of the patent” (id. at 3), the 450-page program
`
`listing submitted was not in fact printed as part of the Aytac patent. Thus,
`
`because the owner of the Aytac patent failed to have the patent corrected to
`
`include the program listing, the program listing is not a part of the Aytac
`
`written description. This would be the case even if Aytac had included a
`
`reference to the program listing in the specification, which he failed to do. See
`
`Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1295 (Fed. Cir.
`
`2000) (source code not part of patent even though patent stated source code
`
`was incorporated in appendix because source code was not printed with patent
`
`and was not part of specification, even though filed with application); Solaia
`
`Tech. LLC v. Arvinvmeritor Inc., No. 02-cv-4704, 2003 U.S. Dist. LEXIS
`
`16482, at *22 (N.D. Ill. Sept. 17, 2003) (where source code was referenced in
`
`the patent, but did not append it to certified copy or have required reference
`
`to appendix at the required location after the title of the invention and before
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`9
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`the summary of the invention, source code was not considered part of the
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`PATENT OWNER RESPONSE IN IPR2016-01200
`U.S. PATENT NO. 8,504,746
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`patent document).
`
`Petitioners cite Intel Corp. v. MicroUnity Systems, Appeal No. 2010-
`
`008981 at 7–8 (BPAI Dec. 9. 2010) to argue that the USPTO “has held that
`
`such appendices are part of the written description.” (Pet. at 18.) However,
`
`Intel is factually distinguishable because the patent at issue there actually
`
`included a reference to the microfiche appendix at the appropriate location
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`(see U.S. Patent No. 6,295,599), and as noted by the Board, included at least
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`nine references in the specification to the appendix. Appeal No. 2010-008981
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`at 8. Aytac includes no such source code references. Thus, the code submitted
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`by Aytac does not form part of the Aytac written description and therefore is
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`not prior art under § 102(e).
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`Petitioners do not argue that the code submitted by Aytac qualifies as
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`prior art separate from the Aytac patent. The Aytac code does not separately
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`qualify as a “printed publication,” particularly because Aytac fails to reference
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`the existence of the source code in the specification, and there is no evidence
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`that the source code was otherwise searchable or available to a POSITA. See
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`In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (holding thesis not to be
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`a printed publication despite being available in a library and indexed by the
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`author’s name because index by name only did not make thesis reasonably
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`accessible to the public). Because the unpublished Aytac source code is not a
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`printed publication, it is not prior art for the purposes of an inter partes review.
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`See 35 U.S.C. § 311(b).
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`Further, even if the source code were sufficiently publicly available to
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`be considered a printed publication as of May 26, 1998 when the Aytac patent
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`issued and published (and when the file wrapper became publicly available),
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`it still would not be prior art under 35 U.S.C. § 102(a) or (b) to the ’746 patent,
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`which has a priority date of March 4, 1997 and an effective filing date as of
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`March 3, 1998. Thus, the unpublished Aytac source code is not prior art for
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`the purposes of this inter partes review. Accordingly, to the extent Petitioners
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`rely on the Aytac source code as prior art, the Board must disregard this
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`evidence.
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`Information
`For
`Standard
`National
`B. American
`Systems – Small Computer System Interface-2 (“SCSI
`Specification”)
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`As stated in the 465-page SCSI Specification, the “SCSI protocol is
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`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
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`including one or more hosts.” (Ex. 1005 at 2, 22, 25.) Petitioners rely on this
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`document to show aspects of how a SCSI device works because Aytac
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`discloses that the CaTbox device uses a SCSI connection to a host computer.
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`Although the SCSI Specification sets forth various functionalities for a SCSI
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`device, it does not describe how a standard SCSI driver can support the full
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`functionality of Aytac’s CaTbox.
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`C. Admitted Prior Art
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`Petitioners rely in part on statements regarding the operation of the
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`invention, the prior art, and knowledge of those having ordinary skill in the
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`art within the ’746 patent including 3:37–46, 4:20–22, 5:11–14, 5:21–23,
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`5:37–47, 8:45–50, 10:26–29. Papst submits that some of these statements are
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`not admissions of prior art. (See, e.g., Ex. 1003 at 5:37–47 regarding sending
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`of a virtual boot sequence.) The Petition, however, does not demonstrate how
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`the ’746 patent’s statements have any bearing on whether Aytac’s CaTbox
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`can operate for its intended purpose without installation of its associated
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`specialized software on its host computer.
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`IV. Claim Construction
`In an inter partes review, the Board construes claim terms in an
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`unexpired patent using their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The
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`claim language should be read in light of the specification as it would be
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`interpreted by one of ordinary skill in the art. Cuozzo Speed Techs., LLC v.
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`Lee, No. 15-446, 136 S. Ct. 2131, 2146 (June 20, 2016). The broadest
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`reasonable meaning given to claim language must take into account any
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`definitions presented in the specification. In re Am. Acad. of Sci. Tech. Ctr.,
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`367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
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`(Fed. Cir. 2002)). Under this standard, claim terms are given their ordinary
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`and customary meaning as would be understood by one of ordinary skill in
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`the art in the context of the entire disclosure. See In re Abbott Diabetes Care,
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`Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012) (vacating Board’s rejection of
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`claims based on incorrect construction of “electrochemical sensor,” which
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`was inconsistent with meaning ascertained in view of entire specification); In
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`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)).
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`A.
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`Level Of Ordinary Skill In The Art
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`Petitioners’ proposed definition of the level of ordinary skill in the art
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`(Pet. at 19) is mostly consistent with Papst’s view. Papst contends that the field
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`of the invention relates to “the transfer of data and in particular to interface
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`devices for communication between a computer or host device and a data
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`transmit/receive device from which data is to be acquired or with which two-
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`way communication is to take place.” (See Ex. 1003 at 1:20–24.) A person of
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`ordinary skill in the art (“POSITA”) would have at least a bachelor’s degree in
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`a related field such as computer engineering or electrical engineering and at
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`least three years of experience in the design, development, and/or testing of
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`hardware and software components involved with data transfer or in embedded
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`devices and their interfaces with host systems. Alternatively, a POSITA may
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`have five or more years of experience in these technologies, without a
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`bachelor’s degree. (Ex. 2006 ¶ 17.) The Board noted in its Decision that “the
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`variance between the proffered levels of ordinary skill in the art does not have
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`a meaningful impact on our determination of whether to institute inter partes
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`review.” (Decision at 12.)
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`B. Response To The Board’s Claim Construction
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`1.
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`“without requiring any end user to load software”
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`The Board partially adopted the parties’ proposed construction for the
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`terms “whereby there is no requirement for any user-loaded file transfer
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`enabling software to be loaded on or installed,” “without requiring any end
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`user to load software” and “without requiring any user-loaded file transfer
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`enabling software to be loaded on or installed.” (Decision at 7–9.) The parties
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`proposed “without requiring the end user to install or load specific drivers or
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`software for the [analog data acquisition device/analog data acquisition and
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`interface device] beyond that included in the operating system or BIOS.” (Pet.
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`at 20; Prelim. Resp. at 22; Decision at 7–8.) The Board adopted the
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`construction “without requiring the end user to install or load specific drivers
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`or software for the ADGPD beyond that included in the operating system,
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`BIOS, or drivers for a multi-purpose interface or SCSI interface.” (Id. at 9
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`(emphasis in original).) Papst submits that these claim limitations specify that
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`a user is not required to install or load software onto the host computer, and
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`therefore a manufacturer-installed driver for a multi-purpose interface would
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`be consistent with these limitations. (Ex. 1003 at