throbber
Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: December 15, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON INC., CANON U.S.A., 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.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01212
`Patent 8,966,144 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`I.
`INTRODUCTION
`Canon Inc., Canon U.S.A., 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. (collectively “Petitioner”) filed a
`corrected Petition requesting an inter partes review of claims 1–6, 8, 10, 13–
`16, 22, 27–40, 42–49, 52–55, 59–65, 77, and 80–87 (“the challenged
`claims”) of U.S. Patent No. 8,966,144 B2 (Ex. 1201, “the ’144 patent”).
`Paper 4 (“Pet.”). Patent Owner, Papst Licensing GmbH & Co., KG (“Patent
`Owner”), filed a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we institute an inter partes review as to the challenged claims.
`
`A. Related Matters
`
`The parties indicate that the ’144 patent is involved in Papst Licensing
`GmbH & Co. KG v. Canon Inc., Case No. 1:15-cv-01692 (D.D.C.) and other
`proceedings. Pet. 4–6; Paper 5, 1–3.
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`B. The ’144 Patent
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`The ’144 patent describes interface devices for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1201, 1:18–22,
`1:54–57. According to the ’144 patent, using a specific driver to match very
`closely to an individual host system would achieve high data transfer rates
`across the interface, but the specific driver cannot be used with other host
`systems. Id. at 2:4–19. Several solutions to this problem were known in the
`art. Id. at 2:20–3:25. For example, IOtech introduced an interface device
`for laptops, using a plug-in card for converting the personal computer
`memory card association (PCMCIA) interface into a known standard
`interface (IEEE 1284). Id. at 2:23–29. The plug-in card provided a printer
`interface for enhancing data transfer rates. Id. at 2:29–33. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:10–14. The interface appeared as a floppy
`disk drive to the host, allowing a floppy disk drive and another peripheral
`device to be connected to the host device. Id. at 3:17–19.
`The ’144 patent indicates that its “invention is based on the finding
`that both a high data transfer rate and host device-independent use can be
`achieved if a driver for an input/output device customary in a host device” is
`utilized. Id. at 3:33–37. Figure 1 of the ’144 patent, reproduced below,
`illustrates a block diagram of an interface device.
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`As shown in Figure 1 above, interface device 10 connects to a host
`device via host line 11, and to a data transmit/receive device via output
`line 16. Id. at 4:62–5:10. Interface device 10 includes first connecting
`device 12, second connecting device 15, digital signal processor 13, and
`memory means 14. Id. In a preferred embodiment, the interface device is
`attached to a host device via a multi-purpose interface—e.g., a small
`computer systems interface (SCSI) interface—which includes both an
`interface card and the driver for the interface card. Id. at 3:51–57, 8:42–46.
`According to the ’144 patent, SCSI interfaces were known to be present on
`most host devices or laptops. Id. at 8:42–46. By using a standard interface
`of a host device and by simulating an input/output device to the host device,
`the interface device “is automatically supported by all known host systems
`without any additional sophisticated driver software.” Id. at 11:38–44.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 84, and 86 are independent.
`Claims 2–6, 8, 10, 13–16, 22, 27–40, 42–49, 52–55, 59–65, 77, 80–83
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`depend ultimately from claim 1; claim 85 depends from claim 84; and
`claim 87 depends from claim 86. Claim 1 is illustrative:
`1. An analog data generating and processing device (ADGPD),
`comprising:
`an input/output (i/o) port;
`a program memory;
`a data storage memory;
`a sensor designed to transmit data;
`a processor operatively interfaced with the i/o port, the program
`memory, the data storage memory and the sensor;
`wherein the processor is adapted to be involved in a data
`generation process by which the sensor generates analog data,
`the analog data is processed, and the processed analog data is
`stored in the data storage memory as at least one file of digitized
`analog data;
`wherein the processor also is adapted to be involved in an
`automatic recognition process in which, when the i/o port is
`operatively interfaced with a multi-purpose interface of a
`computer, the processor executes at least one instruction set
`stored in the program memory and thereby causes at least one
`parameter which provides identification information regarding
`the ADGPD to be automatically sent through the i/o port and to
`the multi-purpose interface of the computer
`(a) without requiring any end user to load any software
`onto the computer at any time,
`(b) without requiring any end user to interact with the
`computer to set up a file system in the ADGPD at any time,
`(c) before a time when the computer is able to receive the
`at least one file of digitized analog data from the data storage
`memory, and
`(d) regardless of the identity of a manufacturer of the
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`computer, wherein the at least one parameter is consistent with
`the ADGPD being responsive to commands issued from a
`customary driver;
`wherein the processor is further adapted to be involved in an
`automatic file transfer process in which, when the i/o port is
`operatively interfaced with the multi-purpose interface of the
`computer, and after the at least one parameter has been received
`by the multi-purpose interface of the computer, the processor
`executes at least one other instruction set stored in the program
`memory and thereby causes the at least one file of digitized
`analog data to be transferred to the computer regardless of the
`identity of the manufacturer of the computer and without
`requiring any user-loaded file transfer enabling software to be
`loaded on or installed in the computer at any time.
`Ex. 1201, 11:56–12:36 (emphases added).
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the prior art references listed below.
`Matsumoto
`US 5,684,607
`Nov. 4, 1997
`(Ex. 1208)
`Kawaguchi
`JP H4-15853
`Jan. 21, 1992
`(Ex. 1206)1
`Analogic, DASM-AD14, 14-Bits, 2 MHz A-to-D SCSI Substation for
`the Most Demanding Data Acquisition Applications (1992) (Ex. 1209,
`“DASM-AD14”).
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`Interface-2, ANSI X3.131-1994 (1994) (Ex. 1204, Appendix A-4, “the SCSI
`Specification”).2
`
`
`1 Citations to Kawaguchi are to the English translation (Ex. 1207).
`2 Citations to the SCSI Specification refer to the original page numbers.
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`Admitted Prior Art (see, e.g., Ex. 1201, 3:37–46, 4:20–22, 5:11–14,
`5;21–23, 5:37–47, 8:45–50, 10:26–29).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 7–8)3:
`
`Challenged Claims
`1–6, 8, 10, 13–16, 22,
`27–40, 42–49, 52–55,
`59–65, 77, and 80–87
`1–6, 8, 10, 13–16, 22,
`27–40, 42–49, 52–55,
`59–65, 77, and 80–87
`
`Basis
`§ 102(b)
`or
`§ 103(a)
`
`§ 103(a)
`
`49, 52, and 53
`
`§ 103(a)
`
`
`
`Reference(s)
`
`Kawaguchi
`
`Kawaguchi, Matsumoto, the SCSI
`Specification, and Admitted Prior
`Art4
`Kawaguchi, Matsumoto,
`DASM-AD14, the SCSI
`Specification, and Admitted Prior
`Art
`
`
`3 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§§ 102 and 103 in this Decision.
`4 Although discussed in the Petitioner’s analysis, the SCSI Specification and
`the Admitted Prior Art are omitted inadvertently from the statements of the
`asserted grounds. Therefore, we treat the statements of the asserted grounds
`as harmless error and presume that Petitioner intended to assert that the
`challenged claims are unpatentable based, in part, on these prior art.
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`II. DISCUSSION
`
`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The parties propose
`constructions for several claim terms. Pet. 8–10; Prelim. Resp. 25–26. For
`purposes of this Decision, we find it necessary to address only the claim
`terms identified below.
`
`“analog data generating and processing device”
`The claim term “analog data generating and processing device” or
`
`“ADGPD” appears in each independent claim of the ’144 patent. Ex. 1201,
`11:57–58, 16:11–12, 17:25–26. At this juncture, the parties did not proffer a
`construction for this claim term. Apart from the title and claims, the
`Specification does not use the term “analog data generating and processing
`device.” See generally Ex. 1201. Rather, the Specification focuses on an
`interface device for communication between a host device and a data
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`transmit/receive device. See, e.g., id. at Abs., 1:18–22, 3:29–32, Figs. 1, 2.
`To bridge the gap between the disclosure of the purported invention in
`the Specification and the claim terms that are not otherwise described in the
`Specification, we turn to claims 1 and 2, which recite the structural elements
`of these devices. In claim 1, the “analog data generating and processing
`device” is required to include an input/output (i/o) port, a program memory,
`a data storage memory, a sensor designed to transmit data, and a processor.
`Id. at 11:57–12:36. Claim 2, which depends from claim 1, further recites
`“wherein the i/o port, the program memory, the data storage memory, and
`the processor form an interface device that is designed to have the analog
`data transferred to it from the sensor.” Id. at 12:37–40 (emphasis added).
`Essentially, these claims define an “analog data generating and processing
`device” as an interface device having, at least, a sensor. In that light, we
`construe the claim term “analog data generating and processing device” to
`encompass “an interface device having a sensor.” Put differently, an
`interface device and its sensors jointly form an analog data generating and
`processing device.
`
`“sensor”
`Each independent claim recites “a sensor designed to transmit data.”
`See, e.g., Ex. 1201, 11:62. Claim 17, which depends from claim 1, requires
`the “sensor” to comprise a “data transmit/receive device.” Id. at 13:7–8. At
`this juncture, the parties did not proffer a construction for this claim term.
`Apart from the claims, the term “sensor” does not appear in the Specification
`of the ’144 patent. Rather, as noted above, the Specification focuses on an
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`interface device for communication between a host device and a data
`transmit/receive device. Id. at 1:18–22, 3:29–32, 6:11–13, Figs. 1, 2. In that
`light, we construe a “sensor” to encompass a “data transmit/receive
`device”—a device that is capable of transmitting and/or receiving data.
`
`“multi-purpose interface”
`Each independent claim recites “the i/o port is operatively interfaced
`
`with a multi-purpose interface of a computer.” See, e.g., Ex. 1201, 12:5–7.
`At this juncture, the parties did not proffer a construction for the term
`“multi-purpose interface.” The Specification of the ’144 patent describes
`“the interface device according to the present invention is to be attached to a
`host device by means of a multi-purpose interface of the host device which
`can be implemented, for example, as a small computer systems interface
`(SCSI) interface or as an enhanced printer interface.” Id. at 3:51–56
`(emphases added). The Specification also indicates that SCSI interfaces are
`present on most host devices or laptops. Id. at 8:45–46. Petitioner’s
`Declarant, Paul F. Reynolds, Ph.D., testifies that SCSI is “a standard for
`attaching a range of peripheral device types to computers,” and “SCSI is
`designed to be multi-purpose: to both support a variety of devices and to
`operate with a variety of operating systems.” Ex. 1204 ¶ 64. In light of the
`Specification and the evidence regarding the knowledge of an ordinarily
`skilled artisan, we construe a “multi-purpose interface” to encompass a
`“SCSI interface.”
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`“customary driver”
`The claim term “customary driver” appears in each independent
`claim. Ex. 1201, 12:22–23, 17:10, 18:24. For instance, claim 1 recites “the
`at least one parameter is consistent with the ADGPD being responsive to
`commands issued from a customary driver.” Id. at 12:20–23 (emphasis
`added). Claim 29, which depends from claim 1, further recites “wherein the
`at least one parameter is consistent with the ADGPD being responsive to a
`SCSI inquiry command.” Id. at 13:38–40 (emphasis added).
`Petitioner proposes to construe this term as “driver normally part of
`commercially available computer systems at the time of the invention.” Pet.
`9–10. Patent Owner disagrees, arguing that Petitioner improperly adds the
`temporal limitation “at the time of the invention.” Prelim. Resp. 25–26.
`We note that “the ordinary and customary meaning of a claim term is
`the meaning that the term would have to a person of ordinary skill in the art
`in question at the time of the invention, i.e., as of the effective filing date of
`the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`Cir. 2005) (en banc) (emphasis added); see also PC Connector Solutions
`LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005) (meaning of
`claim “must be interpreted as of [the] effective filing date” of the patent
`application). Moreover, in this proceeding, we determine the patentability of
`the challenged claims based on prior art that is available before or at the time
`of the invention. Therefore, it is not necessary to recite expressly “at the
`time of the invention” in our claim construction.
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`The Specification of the ’144 patent indicates that “both a high data
`transfer rate and host device-independent use can be achieved if a driver for
`an input/output device customary in a host device, normally present in most
`commercially available host devices, is utilized.” Ex. 1201, 3:33–37
`(emphases added). The Specification further explains that “[d]rivers for
`input/output devices customary in a host device which are found in
`practically all host devices are, for example, drivers for hard disks, for
`graphics devices or for printer devices.” Id. at 3:37–40 (emphases added).
`The Specification also indicates that SCSI interfaces are present on most
`host devices or laptops, and SCSI drivers are “normally included by the
`manufacturer of the multi-purpose interface.” Id. at 8:45–46, 10:23–33.
`In that light, we construe a “customary driver” to encompass “a driver
`normally present in a commercially available computer system (e.g., a hard
`disk driver or a SCSI driver).”
`
`“the processor adapted to be involved in a data generation process”
`Each independent claim recites “the processor is adapted to be
`
`involved in a data generation process by which the sensor generates analog
`data, the analog data is processed, and the processed analog data is stored in
`the data storage memory as at least one file of digitized analog data.” See,
`e.g., Ex. 1201, 11:66–12:3. Patent Owner implicitly construes this claim
`term to require the processor to be involved directly “in every aspect of the
`data generation process.” Prelim. Resp. 33–35 (emphasis added).
`At this juncture, we decline to import this extraneous limitation into
`the claims. It is well-settled that if a feature is not necessary to give
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`meaning to what the inventor means by a claim term, it would be
`“extraneous” and should not be read into the claim. Hoganas AB v. Dresser
`Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours &
`Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`On this record, we are not persuaded that the processor of the ADGPD
`is required to be involved directly in every aspect of the data generation
`process. In fact, each independent claim expressly requires that the sensor
`itself generates the data. See, e.g., Ex. 1201, 11:66–12:1 (“a data generation
`process by which the sensor generates analog data”). Patent Owner does not
`identify where the Specification discloses the processor is involved in
`generating the analog data. The Specification, at most, discloses that the
`processor reads the generated data, and transfers the data to the host, but it
`does not describe how the processor is involved directly in generating the
`data. Id. at 5:3–7 (“a data transmit/receive device . . . from which data is to
`be read, i.e. acquired, and transferred to the host device”).
`In light of the foregoing, we decline to construe “the processor is
`adapted to be involved in a data generation process” to require the processor
`to be involved directly in every aspect of the process.
`
`“automatic recognition process”
`Each independent claim requires the processor of the ADGPD to be
`adapted to be involved in an “automatic recognition process,” sending
`“identification information regarding the ADGPD” to the multi-purpose
`interface of the computer. See, e.g., Ex. 1201, 12:4–36. As an initial matter,
`we note that the word “automatic” normally does not exclude all possible
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`human intervention. See WhitServe, LLC v. Computer Packages, Inc., 694
`F.3d 10, 19 (Fed. Cir. 2012); CollegeNet, Inc. v. ApplyYourself, Inc., 418
`F.3d 1225, 1235 (Fed. Cir. 2005).
`For the claim term “automatic recognition process,” the parties agree
`to adopt the claim construction proposed by Patent Owner in the related
`District Court proceeding—“process by which the computer recognizes the
`ADGPD upon connection with the computer without requiring any user
`intervention other than to start the process.” Pet. 8–9 (citing Ex. 1205);
`Prelim. Resp. 25. According to the Specification of the ’144 patent, the
`communication between the host system and the interface device is “based
`on known standard access commands as supported by all known operating
`systems (e.g., DOS®, Window®, Unix®).” Ex. 1201, 5:11–14. When the
`host system is connected to the interface device and is booted, “usual BIOS
`routines or multi-purpose interface programs issue an instruction, known by
`those skilled in the art as the INQUIRY instruction.” Id. at 5:17–23. In
`response to the INQUIRY instruction, the interface device sends a signal to
`the host system, identifying a connected hard disk drive. Id. at 5:24–30. In
`light of the Specification, we adopt the parties’ proposed construction,
`construing an “automatic recognition process” as “a process by which the
`computer recognizes the ADGPD upon connection with the computer
`without requiring any user intervention other than to start the process.”
`
`“without requiring any end user to load software”
`We observe that each independent claim recites several negative
`limitations in apparatus claims. For instance, claim 1 requires the automatic
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`recognition process to occur “without requiring any end user to load any
`software onto the computer at any time,” and requires the automatic file
`transfer process to occur “without requiring any user-loaded file transfer
`enabling software to be loaded on or installed in the computer at any time.”
`Ex. 1201, 12:4–23.
`For these limitations, the parties agree to adopt the claim construction
`proposed by Patent Owner in the related District Court proceeding—
`“without requiring the end user to install or load specific drivers or software
`for the ADGPD beyond that included in the operating system or BIOS.”
`Pet. 8–9 (citing Ex. 1205); Prelim. Resp. 25 (emphasis added). However,
`the parties’ proposed claim construction may improperly exclude SCSI
`drivers and drivers for multi-purpose interfaces that do not necessarily
`reside in the operating system or BIOS.
`The Specification discloses that a SCSI interface is a multi-purpose
`interface, and that a multi-purpose interface comprises “both an interface
`card and specific driver software for the interface card.” Ex. 1201, 3:51–57
`(emphasis added). Significantly, the Specification indicates that, at the time
`of the invention, multi-purpose interfaces can be, but are not necessarily,
`integrated into the BIOS system. Id. at 3:59–4:1. The Specification also
`makes clear that “communication between the host device and the multi-
`purpose interface can take place not only via drivers for input/output device
`customary in a host device which reside in the BIOS system of the host
`device but also via specific interface drivers which, in the case of SCSI
`interfaces, are known as multi-purpose interface ASPI (advanced SCSI
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`programming interface) drivers.” Id. at 10:23–29 (emphases added).
`Interpreting the negative limitations to exclude the drivers for a
`multi-purpose interface would be unreasonable when the very same claim,
`claim 1, also requires a multi-purpose interface. Id. at 12:6–7. As discussed
`above, claim 29, which depends from claim 1, requires a SCSI interface and
`SCSI driver. Id. at 13:38–40. Therefore, the parties’ proposed claim
`construction would be inconsistent with the Specification and those claims.
`In view of the foregoing, we construe the claim phrases—“without
`requiring any end user to load software onto the computer at any time” and
`“without requiring any user-loaded file transfer enabling software to be
`loaded on or installed in the computer at any time”—as “without requiring
`the end user to install or load specific drivers or software for the ADGPD
`beyond that included in the operating system, BIOS, or drivers for a multi-
`purpose interface or SCSI interface,” adding “drivers for a multi-purpose
`interface or SCSI interface” to the parties’ proposed claim construction.
`
` “a first computer” and “a second computer that is manufactured by a
`company other than the company that manufactured the first computer
`Claim 86 requires an automatic recognition process and automatic
`transfer process to occur for a “first computer” and “second computer that is
`manufactured by a company other than the company that manufactured the
`first computer.” Ex. 1201, 17:41–18:18. Citing to the prosecution history,
`Petitioner takes the position that Patent Owner “clearly and unmistakably
`disavowed the first computer and the second computer as limitations of the
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`claims,” and argues that “these phrases must not be given any patentable
`weight and should be ignored.” Id. at 59–60 (citing Ex. 1203).
`However, there is a “heavy presumption” that a claim term carries its
`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). It is well-settled
`that “the doctrine of prosecution disclaimer only applies to unambiguous
`disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir.
`2012). Here, the statement in the prosecution history cited by Petitioner that
`“neither the first computer nor the second computer are [sic] elements of the
`claims” is, at most, ambiguous.
`Therefore, we decline to ignore the “computer” claim elements, as
`urged by Petitioner. Rather, we agree with Patent Owner that the
`“computer” elements recited in claim 86 “are not part of the analog data
`generating and processing device.” but substantively similar to “regardless
`of the identity of a manufacturer of the computer,” as recited in claim 1.
`Prelim. Resp. 48–49. Based on the present record, we adopt Patent Owner’s
`proposed claim construction as it is consistent with the Specification. See
`Ex. 1201, 3:33–37, 11:38–44.
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). In that regard, Dr. Reynolds testifies that a person having
`ordinary skill in the art at the time of the invention “would have had at least
`a four-year degree from a reputable university in electrical engineering,
`computer science, or related field of study, or equivalent experience, and at
`least two [years of] experience in studying or developing computer
`interfaces or peripherals.” Ex. 1204 ¶ 39. Dr. Reynolds further testifies that
`such an artisan also would “be familiar with operating systems (e.g.,
`MS-DOS, Windows, Unix) and their associated file systems (e.g., a [file
`allocation table (“FAT”)] file system), device drivers for computer
`components and peripherals (e.g., mass storage device drivers), and
`communication interfaces (e.g., SCSI and PCMCIA interfaces).” Id. Patent
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`Owner confirms that Petitioner’s statements regarding the level of ordinary
`skill in the art are mostly consistent with Patent Owner’s view, but
`nonetheless contends that an ordinarily skilled artisan would have at least
`three years of experience, or, alternatively, five or more years of experience
`without a bachelor’s degree. Prelim. Resp. 24. We do not observe any
`meaningful differences between the parties’ definition of a person of
`ordinary skill in the art. Our analysis in this Decision is supported by either
`level of skill. We further find that the prior art (e.g., Ex. 1204, Appendix
`A-4) in the instant proceeding reflects the level of ordinary skill in the art at
`the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001).
`
`D. Obviousness over Kawaguchi and Matsumoto, in view of the SCSI
`Specification and Admitted Prior Art
`
`Petitioner asserts that claims 1–6, 8, 10, 13–16, 22, 27–40, 42–49, 52–
`55, 59–65, 77, 80–87 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over Kawaguchi, in combination with Matsumoto, the SCSI Specification,
`and Admitted Prior Art. Pet. 17–62. Patent Owner opposes. Prelim. Resp.
`26–55. We have carefully considered the parties’ contentions and
`supporting evidence in this record. At this juncture, we determine that
`Petitioner has established that there is reasonable likelihood that the
`petitioner would prevail with respect to this ground of unpatentability. In
`our discussion below, we first provide a brief overview of the asserted prior
`art, and then we analyze certain claim limitations in detail as examples.
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`Overview of Kawaguchi
`Kawaguchi discloses a SCSI device converter for connecting a
`plurality of peripheral devices to an engineering workstation. Ex. 1207, 2.
`Figure 1 of Kawaguchi is reproduced below.
`
`
`
`As shown in Figure 1 of Kawaguchi, SCSI device converter 3
`includes: SCSI interface 7 for connecting to engineering workstation 1;
`personal computer input/output bus interfaces 8, 9 for connecting to output
`device (plotter) 4 and input device (CD-ROM) 5, respectively; and
`bi-directional parallel bus interface 10 for connecting to interrupt control
`device (sequencer) 6. SCSI device converter 3 can be adapted to
`accommodate any other type of device interface, including analog-to-digital
`converter 19 to receive analog data from an analog sensor 18. Id. at 5. SCSI
`device converter 3 also implements data writing unit 11, data reading unit
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`12, control data writing 13, interrupt data reading unit 14, code converting
`unit 15, control unit 16, and interrupt control unit 17, by using a
`microcomputer, ROM, and RAM. Id.
`The engineering workstation is said to have a SCSI interface “as
`standard equipment for connecting with the hard disk.” Id. at 5. According
`to Kawaguchi, “the SCSI device converter is able to input and output data to
`a SCSI interface of an [engineering workstation] using the same standards as
`SCSI interface for a hard disk.” Id. at 4. The SCSI driver of the engineering
`workstation is used as a driver for connecting a hard disk, performing
`operations in accordance with the SCSI standards. Id. at 7.
`Figure 2 of Kawaguchi is reproduced below.
`
`
`As shown in Figure 2 of Kawaguchi, the processing procedure
`includes an initialization process which includes: “Inquiry” that represents
`reporting of attribute information of a target and logical units (identification
`code of a device type); “Start/Stop Unit” that represents start/stop of the
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`logical unit; “Test Unit Ready” that represents testing whether or not the
`logical unit is available; and “Mo

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