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 IPR2016-01211
`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
`
`
`
`
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01199
`U.S. PATENT NO. 8,966,144
`
`
`TABLE OF CONTENTS
`
`Page
`
`V. 
`
`Introduction .......................................................................................... 1 
`I. 
`II.  Overview Of The ‘746 Patent .............................................................. 5 
`III.  Overview Of The Applied Art .............................................................. 8 
`A.  Kawaguchi’s SCSI Device Adapter ........................................... 8 
`B.  U.S. Patent No. 5,684,607 To Matsumoto ............................... 10 
`IV.  Claim Construction ............................................................................. 11 
`A. 
`Level Of Ordinary Skill In The Art ......................................... 12 
`B. 
`Claim Construction .................................................................. 13 
`1. 
`“Analog Signal Acquisition Channel” ........................... 13 
`2. 
`Response To Petitioners’ Proposed Claim
`Constructions ................................................................. 13 
`Petitioners Did Not Meet Their Burden To Show The
`Challenged Claims Are Unpatentable ................................................ 13 
`A. 
`Legal Standards ........................................................................ 13 
`B. 
`Petitioners Fail To Demonstrate The Challenged
`Claims Are Obvious Over Kawaguchi In View Of
`Matsumoto ................................................................................ 17 
`Petitioners
`fail
`to articulate a proper
`1. 
`obviousness ground ........................................................ 17 
`Kawaguchi’s Device Uses A Particular
`Separated Data Read Unit And Data Write
`Unit Configuration Set Up To Be A Data
`Relay That Cannot Support A File System ................... 19 
`Independent claim 1 requires the digitized
`analog data to be stored in a file system of the
`data storage memory as at least one file and
`the
`analog data
`acquisition device’s
`processor to execute at least one other
`
`2. 
`
`3. 
`
`i
`
`

`

`5. 
`
`7. 
`
`4. 
`
`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`instruction set to allow transfer of the file to
`the computer................................................................... 20 
`Just because Kawaguchi mentions RAM does
`not mean digitized analog data is stored in the
`data read unit as digitized analog data or as a
`file .................................................................................. 21 
`Otherwise modifying Kawaguchi’s separate
`data read and write units to be able to support
`a file system defeats a stated purpose of
`Kawaguchi’s design and would worsen its
`performance ................................................................... 23 
`provides
`no
`additional
`6.  Matsumoto
`motivation
`to modify Kawaguchi
`to
`overcome the reasons not to so modify
`Kawaguchi
`and
`if
`you
`looked
`to
`Matsumoto’s
`file
`system,
`it
`requires
`specialized file transfer enabling software
`stored on the computer, which is prohibited
`by the claims .................................................................. 26 
`Even If Combined, Kawaguchi in view of
`Matsumoto Fail to Disclose Every Limitation
`of Claim 1 ...................................................................... 30 
`Fourth Element: “wherein the processor
`(i) 
`is configured and programmed
`to
`implement a data generation process by
`which analog data is acquired from the
`analog signal acquisition channel, the
`analog data is processed and digitized,
`and the processed and digitized analog
`data is stored in a file system of the data
`storage memory as at least one file of
`digitized analog data” .......................................... 30 
`(ii)   Sixth Element of Claim 1: “f) wherein
`the processor is further configured and
`programmed to execute at least one
`
`ii
`
`

`

`8. 
`
`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`instruction set stored
`in
`the
`other
`program memory to thereby allow the at
`least one file of digitized analog data
`acquired
`from
`the analog
`signal
`acquisition channel to be transferred to
`the computer using the device driver
`corresponding to said class of devices so
`that the analog data acquisition device
`appears to the computer as if it were a
`device of the class of devices;” ........................... 35 
`(iii)  whereby there is no requirement for any
`user-loaded
`file
`transfer
`enabling
`software to be loaded on or installed in
`the computer in addition to the operating
`system. ................................................................. 37 
`Kawaguchi in view of Matsumoto Fails To
`Render Independent Claim 31 Obvious ......................... 38 
`Second Element: “wherein the processor
`(i) 
`is configured
`to control a data
`generation process by which analog data
`is acquired from the analog source, the
`analog data is processed and digitized,
`and the processed and digitized analog
`data is stored in the memory as digitized
`analog data” ......................................................... 39 
`Fourth Element: “wherein the processor
`is configured to automatically transfer
`the digitized analog data acquired from
`the analog source to the host device in
`response to a digital mass storage device
`data read signal from the host device, in
`a manner that causes the analog data
`acquisition and
`interface device
`to
`appear to be the mass storage device,
`while using the device driver associated
`with the mass storage device to perform
`
`(ii) 
`
`iii
`
`

`

`9. 
`
`(ii) 
`
`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`the automatic transfer without requiring
`any user-loaded file transfer enabling
`software to be loaded on or installed in
`the computer” ...................................................... 39 
`Independent Claim 34 .................................................... 41 
`Second Element: “acquiring analog data
`(i) 
`from an analog source, processing and
`digitizing the analog data, and storing
`the processed and digitized analog data
`in the memory as digitized analog data
`under control of the processor” ........................... 41 
`Fourth
`Element:
`“automatically
`transferring data from the analog source
`to the host device in response to a digital
`data read command from the host
`device, in a manner that causes the
`analog data acquisition device to appear
`to be a digital device instead of as an
`analog data acquisition device, while
`using the device driver to perform the
`automatic
`transfer of
`the acquired
`digitized analog data to the host device
`without requiring any user-loaded file
`transfer enabling software to be loaded
`on or installed in the host device” ....................... 42 
`have
`failed
`to Establish
`10.   Petitioners
`Obviousness of Any of the Dependent
`Claims ............................................................................ 42 
`Claim 2 “wherein the analog data
`(i) 
`acquisition device is a stand alone
`device” ................................................................. 43 
`(ii)  Claims 7 and 26: “wherein the analog
`source comprises a data transmit/receive
`device and “wherein the analog source is
`
`iv
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`designed to receive signals form the
`computer” ............................................................ 43 
`(iii)  Claim 10: “further comprising a
`plurality of independent analog signal
`acquisition channels, each of
`the
`plurality
`of
`channels
`operatively
`coupled to the processor for operatively
`coupling to one of a plurality of analog
`sources such
`that analog data
`is
`simultaneously acquired from at least
`two of the plurality of channels, is
`digitized and
`is coupled
`into
`the
`processor and is processed by the
`processor.” ........................................................... 44 
`(iv)  Claim 19: “wherein the processor is
`configured to cause file allocation table
`information
`to be
`sent
`to
`the
`multipurpose
`interface, wherein
`the
`processor is configured to cause a virtual
`boot sequence
`to be sent
`to
`the
`multipurpose interface which includes at
`least information that is representative
`of a number of sectors of a storage disk,
`and wherein the file allocation table
`information includes at least a start
`location of a file allocation table. ........................ 45 
`(v)  Claim 35: “The method of claim 34,
`further
`comprising
`simultaneously
`acquiring the analog data from each
`respective analog channel of a plurality
`of respective independent acquisition
`channels under control of the processor
`and acquiring analog data from the
`analog source
`time
`independent of
`transferring the acquired analog data to
`the host device. .................................................... 47 
`
`v
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`U.S. PATENT NO. 8,504,746
`VI.  Conclusion .......................................................................................... 49 
`
`
`Conclusion ........................................................................................ .. 49
`
`VI.
`
`vi
`
`Vi
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Activevideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................. 15
`Arendi S.A.R.L. v. Apple Inc.,
`2016 U.S. App. LEXIS 14652 (Fed. Cir. Aug. 10, 2016) ......................... 16
`Cuozzo Speed Techs., LLC v. Lee,
`No. 15-446, 136 S. Ct. 2131 (June 20, 2016) ............................................ 11
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................... 14, 15, 18, 27
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ................................................................. 11
`In re Am. Acad. of Sci. Tech. Ctr., In re,
`367 F.3d 1359 (Fed. Cir. 2004) ................................................................. 11
`In re Bass,
`314 F.3d 575 (Fed. Cir. 2002) ................................................................... 11
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ................................................................. 15
`In re Fritch,
`972 F.2d 1260, 1266 (Fed. Cir. 1992) ....................................................... 42
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................. 16
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ................................................................. 14
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ................................................................. 12
`In re Zurko,
`258 F.3d 1379 (Fed. Cir. 2001) ................................................................. 17
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`IPR2014-00309, Paper 83 (PTAB Mar. 23, 2014) .............................. 14, 15
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................... passim
`
`vii
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`
`Personal Web Technologies, LLC v. Apple, Inc.,
`2016-1174 Slip op. (Fed. Cir. Feb. 14, 2017) ..................................... 14, 27
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)(en banc) .................................................. 12
`Plas-Pak Indus. v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) ........................................................ 15
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................. 16
`Statutes
`35 U.S.C. § 103 ....................................................................................... 13, 14
`35 U.S.C. § 316(e) .......................................................................................... 5
`Regulations
`37 C.F.R. § 42.100 ........................................................................................ 11
`37 C.F.R. § 42.107 .......................................................................................... 3
`37 C.F.R. § 42.24 .......................................................................................... 50
`37 C.F.R. § 42.8 ............................................................................................ 50
`Other Authorities
`MPEP § 2141 ................................................................................................ 26
`
`
`
`viii
`
`
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`
`LIST OF EXHIBITS
`
`EXHIBIT NO. TITLE
`1201
`U.S. Patent No. 8,504,746 (’746 patent)
`Memorandum Order of Judge Collyer in Misc. Action No.
`07-493 (RMC); MDL Docket No. 1880 (D.D.C., May 6,
`2008).
`Intentionally not included
`Declaration of Dr. Paul F. Reynolds
`Papst Litigation Claim Constructions
`JP H4-15853
`Certified Translation of JP H4-15853 (Kawaguchi)
`U.S. Patent No. 5,684,607 (Matsumoto)
`DASM-AD14 Product Brochure
`JP H5-344283
`Certified Translation of JP H5-344283 (Takahashi)
`U.S. Patent No. 5,592,256 (Muramatsu)
`U.S. Patent No. 5,724,155 (Saito)
`Digital Equipment Corporation Shippable Products
`Catalog
`U.S. Patent No. 5,758,081 to Haluk Aytac (“Aytac”)
`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”)
`Wikipedia Entry for “Compact Disc”
`Excerpt from IBM Dictionary of Computing (George
`McDaniel ed., 10th ed. 1993)
`Excerpt from MPEP § 2141(November 2015)
`Declaration of Thomas A. Gafford
`Second Certified Translation of
`(Kawaguchi)
`Side by Side Comparison of Kawaguchi Translations (Ex.
`1207 v. 2009
`Deposition Transcript of Paul F. Reynolds taken March 9,
`2017
`
`1202
`
`1203
`1204
`1205
`1206
`1207
`1208
`1209
`1210
`1211
`1212
`1213
`1214
`2001
`2002
`
`2003
`
`2004
`2005
`2006
`2007
`2008
`2009
`
`2010
`
`2011
`
`
`to Kazuyuki Murata
`
`JP H4-15853
`
`ix
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`
`
`Introduction
`This proceeding commenced when Petitioners filed a Petition for Inter
`
`I.
`
`Partes review of claims of U.S. Patent No. 8,504,746 (“the ’746 patent”) (Ex.
`
`1201). Patent Owner Papst Licensing GmbH & Co. KG (“Papst”) timely filed
`
`a Preliminary Response. (Paper 10). 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 1-12, 15,
`
`17-21, 23-31, 34, and 35 (“the challenged claims”) of the ‘746 patent pursuant
`
`to 35 U.S.C. § 314(a). (Paper 11.) Trial has been commenced on the following
`
`grounds:
`
` Claims 1-12, 15, 17-19, 26, 29-31, 34, and 35 as allegedly
`
`unpatentable under 35 U.S.C. § 103(a) over Unexamined
`
`Japanese Patent Application Publication H4-15853
`
`to
`
`Kawaguchi (“Kawaguchi”) (Ex. 1206/1207/2009/2010)1 in
`
`
`
` 1
`
` Papst submits an independent translation of Kawaguchi (Ex. 2009) and a
`
`side-by-side comparison of both translations (Ex. 2010) for the Board’s
`
`reference. Papst submits that the second translation is easier to understand in
`
`1
`
`
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`combination with U.S. Patent No. 5,684,607 to Matsumoto
`
`(“Matsumoto”) (Ex. 1208)
`
` Claims 21, 24, 25, 27, and 28 as being unpatentable under 35
`
`U.S.C. § 103(a) over Kawaguchi
`
`in combination with
`
`Matsumoto, and DASM-AD14 (Ex. 1209)
`
` Claim 20 as being unpatentable under 35 U.S.C. § 103(a) over
`
`Kawaguchi in combination with Matsumoto and U.S. Patent No.
`
`5,724,155 to Saito (“Saito”) (Ex. 1213)
`
` Claim 23 as being unpatentable under 35 U.S.C. § 103(a) over
`
`Kawaguchi in combination with Matsumoto, Saito, and U.S.
`
`Patent No. 5,592,256 to Muramatsu (“Muramatsu”) (Ex. 1212)
`
`The Board denied the other grounds asserted in the Petition, i.e., claims
`
`1-12, 14-15, 17-19, 26, 29-31, 34, and 35 as anticipated by Kawaguchi, and
`
`
`
`many places than the translation submitted by Petitioner, and clarifies
`
`important aspects of Kawaguchi’s invention. At Deposition, Dr. Reynolds
`
`noted that Petitioners’ translation (Ex. 1207) included apparent errors. (Ex.
`
`2011 at 109:19-110:6; 123:22-124:12.) Papst includes citations to both
`
`translations whenever possible.
`
`2
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`Claim 14 as unpatentable over Kawaguchi in view of Matsumoto and JP H5-
`
`344283 to Takahashi. (Ex. 1210/1211.) (Decision at 20.)
`
`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
`
`instituted grounds. This Response is supported by the declaration of Papst’s
`
`retained qualified technical expert, Thomas Gafford (Ex. 2008), as well as
`
`other accompanying exhibits.
`
`Claim 1 of the ‘746 patent specifies, inter alia, an analog data
`
`acquisition device having a processor “configured and programmed to
`
`implement a data generation process by which analog data is acquired from
`
`the analog signal acquisition channel, the analog data is processed and
`
`digitized, and the processed and digitized analog data is stored in a file system
`
`of the data storage memory as at least one file of digitized analog data.” In
`
`addition, claim 1 specifies the processor is “further configured and
`
`programmed to execute at least one other instruction set stored in the program
`
`memory to thereby allow the at least one file of digitized analog data acquired
`
`from the analog signal acquisition channel to be transferred to the computer
`
`using the device driver corresponding to said class of devices so that the
`
`analog data acquisition device appears to the computer as if it were a device
`
`3
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`of the class of devices.” Claims 31 and 34 have similar limitations but without
`
`the explicit requirement of storage in a file system as at least one file.
`
`Contrary to the requirements of the claims, Kawaguchi discloses that
`
`the data transferred between the Engineering Work Station (“EWS”) and the
`
`attached peripheral is not stored in a file system of a data storage memory of
`
`the SDC as at least one file but instead would simply be transferred as
`
`“arbitrary data” through the separate data reading and data writing units
`
`functioning as data relays. As such, no storage of the digitized analog data in
`
`memory, let alone storage as a file in a file system, is suggested by
`
`Kawaguchi. The specialized structure of the SDC’s separate data reading and
`
`writing units with different IDs also prohibits a file system from being
`
`integrated with Kawaguchi’s SDC.
`
`Modifying Kawaguchi’s SDC to read on the challenged claims would
`
`require combining the separate data reading and writing units into a single
`
`read/write unit, changing the SDC’s principle of operation and rendering the
`
`SDC unable to perform its intended function of permitting high speed
`
`processing via the separate reading and writing units. Such modifications
`
`cannot be used to support an obviousness analysis. If one looked to
`
`Matsumoto for the motivation to add a file system to Kawaguchi, Matsumoto
`
`teaches that specialized software is required for a host computer to identify
`
`4
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`and access the files in its file system, a teaching ignored by Petitioners and
`
`contrary to the requirements of the claims that require no specialized file
`
`transfer enabling software be installed.
`
`Petitioners bear the burden of proving that the instituted claims are
`
`unpatentable by a preponderance of the evidence. 35 U.S.C. § 316(e).
`
`Petitioners fail to provide a proper Graham analysis that obscures the actual
`
`basis for the instituted ground. For this additional reason, Petitioners failed to
`
`carry their burden.
`
`The Board should therefore issue a final written decision affirming the
`
`validity of the challenged claims.
`
`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. 1201 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
`
`5
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`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 2:22–41, 3:28–31.) The
`
`resulting invention would allow a data acquisition system to identify itself as
`
`a type of 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.)
`
`6
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
`Mr. 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
`
`between the host system or host device and the interface device is based on
`
`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 Mr. Tasler’s interface device instead of, or in
`
`addition to customary drivers which reside in the BIOS. (Id. at 10:14–20.)
`
`Accordingly, Mr. 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
`
`7
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`includes three different connectors, a 50 pin SCSI connector 1240, a 25 pin
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`D-shell connector 1280, and a 25 pin connector 1282, to allow Mr. Tasler’s
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`interface device to connect to a variety of different standard interfaces that
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`could be present in a host computer. (Id. at 8:37–54, FIG. 2.)
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`III. Overview Of The Applied Art
`A. Kawaguchi’s SCSI Device Adapter
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`The title of the Kawaguchi patent is “SCSI device adapter.” (Ex. 2009
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`at 2; see also Ex. 1207 at 1.) As the title suggests, Kawaguchi generally relates
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`to a SCSI device adapter (also referred to herein as SCSI device converter or
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`“SDC”) for connecting non-SCSI peripheral devices to an engineering work
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`station. (2009 at 2-3, see also Ex. 1207 at 3.) In particular, Kawaguchi states:
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`“the object of the present invention is to provide a general-use SCSI device
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`adapter that can easily connect a peripheral device that has a standard bus that
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`is different from that of an SCSI bus, such as a PC-compatible bus, or the like,
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`to the SCSI interface of an EWS that was built for the purpose of connecting
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`with a hard disk, and, in particular, to provide a general-use SCSI device
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`adapter that can apply an interrupt from the peripheral device side.” (Ex. 2009
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`at 2, Ex. 1207 at 3.) Kawaguchi discloses that the device converter is able to
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`input and output data to the SCSI interface of an Engineering Work Station
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`(EWS) from a peripheral device using four separate portions or units
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`identified as different logical devices, including a data writing unit, a data
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`reading unit, a control data writing unit, and an interrupt data reading unit.
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`(Ex. 2009 at 3, compare Ex. 1207 at 3, 8.) Kawaguchi discloses: “The SCSI
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`device adapter performs input/output of data to/from an EWS SCSI interface
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`through the same standard as the SCSI interface for a hard disk, the EWS to
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`write and read arbitrary data to/from four types of data writing portions and
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`reading portions that function as data relays with the peripheral device.” (Ex.
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`2009 at 2, compare Ex. 1207 at 4.) (Emphasis added.)
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`The EWS “operates by reading from, or writing to, the individual
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`writing portions and reading portions using the same procedure as for four
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`hard disk devices.” (Ex. 2009 at 3; compare Ex. 1206 at 6.) Kawaguchi
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`explains that “the controlling portion (16) controls the inputting and
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`outputting of data from/to the peripheral devices (4), (5), and (6) through the
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`device interfaces (8), (9), and (10). That is, it outputs, to an output device (4)
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`such as a plotter, the data that is written to the data writing portion (11), [and]
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`inputs, into the data reading portion (12) the data that has been written in from
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`an input device (5), such as a CD-ROM.” (Ex. 2009 at 3; compare Ex. 1207
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`at 6.) Kawaguchi states that “the EWS (1) recognizes the individual writing
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`portions and reading portions (11), (12), (13), and (14) as individual devices,
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`and thus, in the EWS (1), the processing efficiency is high, as the different
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`writing programs and reading programs for the individual writing portions and
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`reading portions (11), (12), (13), and (14) are launched simultaneously and
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`processed in parallel.” (Ex. 2009 at 3; compare Ex. 1207 at 6.)
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`B. U.S. Patent No. 5,684,607 To Matsumoto
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`Matsumoto is entitled “Facsimile apparatus using a small computer
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`system interface” and discloses a fax machine including a SCSI interface for
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`connecting with a host computer. (Ex. 1208 at abstract.) Matsumoto notes an
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`object of the invention is to increase data transfer speed over known RS-232C
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`or GPIB interfaces through use of a SCSI interface. (Id. at 1:23-27, 1:37-47.)
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`Matsumoto discloses a file management section 10 that manages documents
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`created inside the facsimile apparatus. (Id. at 3:20-23.) Matsumoto discloses
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`control of the apparatus by the host computer (3:27-34) via a number of non-
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`SCSI, device specific commands. (See, e.g., id. at 6:5-16: “File Information
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`Request Command”, 8:65-9:9: “File Designation Command”; 9:10-27: “Data
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`Read Command”; Ex. 2008 ¶ 40.) Because the commands taught in
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`Matsumoto are device specific, the host computer requires special application
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`software to be installed on the host computer to implement the functionality
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`disclosed in Matsumoto, including the requesting and transfer of a file from
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`the facsimile apparatus to the host computer. (Ex. 2008 ¶ 40.) Matsumoto
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`confirms that special software would be needed on the host computer, stating
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`that use of a SCSI standard interface with the facsimile apparatus allows “the
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`number of steps required for the development of applications on the host
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`computers side can be reduced.” (Ex. 1208 at 15:43-45.)
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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); see
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`also In 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. 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 15) 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. 1201 at 1:20–24.) A POSITA
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`would have at least a bachelor’s degree in a related field such as computer
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`engineering or electrical engineering and at least three years of experience in
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`the design, development, and/or testing of hardware and software components
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`involved with data transfer or in embedded devices and their interfaces with
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`host systems. Alternatively, a POSITA may have five or more years of
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`experience in these technologies, without a bachelor’s degree. (Ex.