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 IPR2016-01213
`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
`
`
`
`
`
`
`____________________
`
`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 IPR2016-01213
`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 IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`
`TABLE OF CONTENTS
`
`Page
`
`V.
`
`Introduction .......................................................................................... 1
`I.
`Summary Of The Argument ................................................................. 2
`II.
`III. Overview Of The ’746 Patent .............................................................. 5
`IV. The Asserted Prior Art .......................................................................... 7
`A. U.S. Patent No. 6,088,532 To Yamamoto ................................. 7
`B. U.S. Patent No. 6,256,452 To Yamamoto ................................. 9
`C.
`The SCSI Specification .............................................................. 9
`D.
`The “Admitted Prior Art”......................................................... 10
`Claim Construction ............................................................................. 10
`A.
`Level Of Ordinary Skill In The Art ......................................... 11
`B.
`Response To The Board’s Claim Construction Of
`“analog signal acquisition channel” ......................................... 12
`Response To Petitioners’ Proposed Claim
`Constructions ............................................................................ 12
`VI. Petitioners Fail To Perform A Proper Obviousness
`Analysis And Therefore Fail To Meet Their Burden ......................... 12
`A.
`Legal Standards For Proving Obviousness .............................. 13
`B.
`Petitioners Fail To Show That Claims 1, 31, And 34
`Are Obvious In View Of Yamamoto, The SCSI
`Specification, Yamamoto 2, And The Admitted
`Prior Art .................................................................................... 16
`Yamamoto’s Configuration And Removable
`1.
`Hard Disks Available At The Time Would
`Not Motivate A POSITA To Use
`Yamamoto’s System Control Circuit To
`Transfer A File Of Digitized Data To The
`Computer As Required By Claims 1 And 31 ................ 17
`
`C.
`
`i
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`
`i.
`
`ii.
`
`Yamamoto’s System Control Circuit 20
`Is A Limited Device That Largely Only
`Sends Command Signals To Other
`Processing Circuits In Yamamoto’s
`Camera ................................................................. 19
`A POSITA Would Understand That The
`Most Efficient
`Implementation Of
`Yamamoto Would Be To Use A SCSI
`Hard Drive, Which Eliminates The
`Need For System Control Circuit 20 To
`Be Involved In File Transfer And
`Speeds The Transfer Process ............................... 27
`iii. A POSITA Would Not Use System
`Control Circuit 20 To Be Involved In
`File Transfer Even If An IDE Hard
`Drive Were Used Because It Would
`Require A More Expensive Processor
`Or Result In Slower Performance ....................... 29
`Yamamoto, The
`SCSI
`Specification,
`Yamamoto 2, And The Admitted Prior Art
`Do Not Disclose Automatically Transferring
`Data From The Analog Source To The Host
`Device As Required By Claim 34 ................................. 33
`Petitioners Also Fail To Meet Their Burden To
`Prove That The Dependent Claims Are Obvious In
`View Of Yamamoto, The SCSI Specification,
`Yamamoto 2, And The Admitted Prior Art ............................. 35
`VII. Conclusion .......................................................................................... 39
`
`
`C.
`
`2.
`
`ii
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`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) ................................................................. 14
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ................................................................. 15
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ................................... 14
`Cuozzo Speed Techs., LLC v. Lee,
`No. 15-446, 136 S. Ct. 2131 (June 20, 2016) ............................................ 10
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ............................................................................ 2, 13, 14
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ................................................................. 11
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ................................................................. 10
`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) ................................................................. 14
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ................................................................. 34
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ........................................................... 15, 35
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ................................................................. 13
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ................................................................. 11
`In re Zurko,
`258 F.3d 1379 (Fed. Cir. 2001) ................................................................. 16
`
`iii
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics
`Rencol Ltd.,
`IPR2014-00309, Paper 83 (PTAB Mar. 23, 2014) .............................. 13, 14
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ..................................................... 15, 16, 31
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................ 13, 14
`Personal Web Technologies, LLC v. Apple, Inc.,
`2016-1174 Slip op. (Fed. Cir. Feb. 14, 2017) ........................................... 14
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................. 11
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................. 15
`Statutes
`35 U.S.C. § 103 ............................................................................................. 13
`35 U.S.C. 316 ............................................................................................ 5, 12
`Other Authorities
`MPEP § 2144.03 ........................................................................................... 31
`Regulations
`37 C.F.R. § 42.100 ........................................................................................ 10
`37 C.F.R. § 42.120 .......................................................................................... 2
`37 C.F.R. § 42.24 .......................................................................................... 40
`37 C.F.R. § 42.8 ............................................................................................ 40
`
`
`
`iv
`
`
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`
`LIST OF EXHIBITS
`
`1405
`
`1406
`
`EXHIBIT NO. TITLE
`1400
`U.S. Patent No. 8,504,746 to Tasler
`1401
`U.S. Patent No. 6,088,532 (Yamamoto)
`1402
`Selected portions of ’746 patent file history
`1403
`Declaration of Paul F. Reynolds, Ph.D.
`Papst’s Opening Claim Construction Brief: Misc.
`1404
`Action No. 07-493 (RMC); Dkt. 640, MDL No. 1880
`American National Standards
`Institute, “ANSI
`X3.131-1994 - Small Computer System Interface-2,”
`(1994)
`American National Standards Institute, Procedures for
`the Development and Coordination of American
`National Standards, Approved by the ANSI Board of
`Directors (Sept. 9, 1993)
`U.S. Patent No. 6,256,452 (Yamamoto2)
`U.S. Patent No. 5,592,256 (Muramatsu)
`Ray Duncan, ed., “The MS-DOS Encyclopedia,”
`Microsoft Press (1988)
`Federal Circuit decision, In re: Papst Licensing Digital
`Cameras Patent Litigation, No. 2014-1110 (Fed. Cir.
`Feb. 2, 2015)
`U.S. Patent No. 5,758,081 to Aytac (“Aytac”)
`JP H4-15853 to Kawaguchi (“Kawaguchi”)
`U.S. Patent No. 5,508,821 to Murata (“Murata”)
`U.S. Patent No. 5,499,378 to McNeill, Jr. et al.
`(“McNeill”)
`Excerpt from the File History of the ’443 Application:
`March 25, 2011 – Notice Under MPEP § 1442.04
`Declaration of Thomas A. Gafford
`
`1407
`1408
`1409
`
`1410
`
`2001
`2002
`2003
`2004
`
`2005
`2006
`
`v
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`I.
`
`Introduction
`
`On June 17, 2016, Petitioners filed a corrected Petition (Paper 6) for
`
`inter partes review of claims of U.S. Patent No. 8,504,746 (“the ’746 patent”)
`
`(Ex. 1400). On September 23, 2016, Patent Owner Papst Licensing GmbH &
`
`Co. KG (“Papst”) filed its Preliminary Response. (Paper 12.) On December
`
`15, 2016, the Patent Trial and Appeal Board (“Board”) entered its decision
`
`(Paper 13, “Decision”) declining to institute trial on Petitioners’ anticipation
`
`ground but instituting trial on the following grounds:
`
` Obviousness of claims 1–3, 6–10, 15, 17–19, 21, 24, 25, 31, 34,
`
`and 35 in view of U.S. Patent No. 6,088,532 to Yamamoto
`
`(“Yamamoto”) (Ex. 1401) in combination with the SCSI
`
`Specification (Ex. 1405) and alleged Admitted Prior Art; and
`
` Obviousness of claim 23 in view of Yamamoto (Ex. 1401) in
`
`combination with U.S. Patent No. 6,256,452 to Yamamoto
`
`(“Yamamoto 2”) (Ex. 1407), U.S. Patent No. 5,592,256 to
`
`1
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`Muramatsu (Ex. 1408), the SCSI Specification (Ex. 1405) and
`
`alleged Admitted Prior Art.1
`
`(Decision at 28.)
`
`In accordance with 37 C.F.R. § 42.120, Papst respectfully requests that
`
`the Board confirm the patentability of the challenged claims of the ’746
`
`patent. This response is supported by the declaration of Papst’s retained
`
`qualified technical expert, Thomas Gafford (Ex. 2006.).
`
`II.
`
`Summary Of The Argument
`
`The Board should deny the obviousness challenge because Petitioners
`
`failed to provide a proper obviousness analysis as required by Graham v. John
`
`Deere Co. of Kansas City, 383 U.S. 1 (1966). Obviousness requires
`
`consideration of the claims as a whole. Petitioners’ piecemeal approach to the
`
`
`
` 1
`
` Claim 23 of the ’746 patent depends from claim 1. Papst asserts that
`
`Petitioners have failed to meet their burden of showing that claim 23 is
`
`obvious for the same reasons set forth for claim 1. However, with respect to
`
`claim 23, Papst does not separately address the limitations of dependent claim
`
`23 apart from those of independent claim 1.
`
`2
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`analysis violates this fundamental maxim and results in it ignoring several
`
`claim elements and their interactions with one another.
`
`Petitioners fail to demonstrate that the challenged claims would have
`
`been obvious based on Yamamoto in view of Yamamoto 2, the SCSI
`
`Specification, and the alleged Admitted Prior Art. First, Petitioners fail to
`
`meet their burden of showing that an analog data acquisition device with a
`
`processor configured to transfer a file of digitized data from the analog data
`
`acquisition device to a computer would have been obvious in view of
`
`Yamamoto, Yamamoto 2, the SCSI Specification, and the other Admitted
`
`Prior Art, as required by independent claims 1 and 31 of the ’746 patent.
`
`Yamamoto does not disclose that its system control circuit is involved in data
`
`transfer in hard disk mode, and the other prior art relied upon by Petitioners
`
`does not provide any reason to modify Yamamoto as such. Petitioners rely on
`
`the testimony of Dr. Reynolds to fill this gap, but that testimony relies on a
`
`series of assumptions unsupported in the prior art or any other documentary
`
`evidence and fails to account for several reasons not to have its system control
`
`circuit control the data transfer from the hard disk.
`
`Second, Petitioners fail to show that it would have been obvious in light
`
`of Yamamoto in combination with Yamamoto 2, the SCSI Specification, and
`
`alleged Admitted Prior Art to provide an analog data acquisition device that
`
`3
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`automatically transfers data from an analog source to a host device in a
`
`manner that causes the analog data acquisition device to appear to be a digital
`
`device, as required by independent claim 34. Yamamoto and Yamamoto 2
`
`both disclose a camera that can be connected to a host computer in a hard disk
`
`mode or a scanner mode. In hard disk mode, the data is read by the host
`
`computer from the disk drive, not from an analog source. In scan mode, the
`
`data is streamed from an analog source directly to the host computer, such that
`
`the analog data acquisition device is identified as an analog device, rather than
`
`a digital device. Petitioners and Dr. Reynolds fail to provide any reason a
`
`POSITA would modify Yamamoto as required by the claim limitation in
`
`claim 34.
`
`Third, the Petitioners fail to meet their burden of showing that
`
`Yamamoto in combination with Yamamoto 2, the SCSI Specification, and the
`
`other admitted prior art render obvious transferring acquired analog data from
`
`the analog data acquisition device to a computer without requiring an end-user
`
`to load software onto the computer or to interact with the computer to set up
`
`a file system as recited in claim 17. Petitioners reliance upon Yamamoto’s use
`
`of a SCSI interface is insufficient to render claim 17 obvious because while
`
`SCSI can facilitate the transfer of data between a target and a host, SCSI does
`
`not alleviate the requirement that compatible file systems exist on the host and
`
`4
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`target. Indeed, Yamamoto 2 teaches away from claim 17 because it cautions
`
`that an end-user must set up a file system on the camera that is compatible
`
`with whatever file system is on the host computer.
`
`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 have failed to carry their burden.
`
`III. Overview Of The ’746 Patent
`The ’746 patent is the result of breakthrough work by inventor Michael
`
`Tasler. 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 any user to purchase, install,
`
`and/or run specialized software for each system. (Ex. 1400 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 connect those
`
`data acquisition systems
`
`to commercially-available, general purpose
`
`computers, and to transfer that information to those computers. (Id. at 1:31–
`
`43.) But at that time—and today—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
`
`5
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`complexity for the operator, or specifically matching interface devices for a
`
`data acquisition system to a host system which may maximize data transfer
`
`rates, but lacks the flexibility to operate with different devices. (Id. at 1:26–
`
`3:24.)
`
`Tasler recognized that the existing options were wasteful and
`
`inefficient. He sought a solution that would achieve high data transfer rates,
`
`without the need for specialized software, while being sufficiently flexible to
`
`operate independent of device or host computer 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, even though the data acquisition
`
`system was not actually a common device, so as to leverage the inherent
`
`capabilities of general-purpose, commercially-available computers. (Id. at
`
`4:13–27.) Accordingly, by using 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 provide a crucial, yet seemingly simple, method
`
`and apparatus for a high data rate, device-independent information transfer.
`
`(Id. at 3:28–31.)
`
`6
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`
`IV. The Asserted Prior Art
`A. U.S. Patent No. 6,088,532 To Yamamoto
`
`Yamamoto is directed to an “image signal reading operation control
`
`device” in the form of a still video camera, lens and optical system, and
`
`electro-developing recording medium.” (Ex. 1401 at 1:1–10.) The system of
`
`Yamamoto includes a system control circuit 20 that controls an optical system
`
`device including exposure control, recording medium control, light source
`
`control, and pixel signal control. (Id. at 7:24–30.) Yamamoto discloses that a
`
`removable hard disk may be mounted to the camera for storing data acquired
`
`by the camera and as an external memory for a computer provided outside the
`
`camera. (Id. at 22:15–23.)
`
`The majority of Yamamoto’s disclosure focuses on the photographic
`
`operation of the camera. Only two columns of the 26-column disclosure relate
`
`to an interface through which digital data recorded by the camera may be
`
`accessed by an external computer. (Id. at 22:15–23:48.) That portion discloses
`
`that the camera can switch between two modes when connected to a computer.
`
`In the first mode, the camera’s hard drive is an external hard drive for the
`
`connected computer. (Id. at 22:26–27 (“In the first mode, the hard disk 71 is
`
`used as the external memory for a [host computer] . . .”), 22:33–35.) In the
`
`second mode, the digitized image data generated by the camera is output
`
`7
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`directly to the external computer through the interface. (Id. at 22:28–32.) In
`
`this mode, the camera operates like a scanner for the external computer. (Id.)
`
`Yamamoto discloses that in the first and second modes, the camera
`
`interfaces with the external computer though through an interface circuit 65
`
`and an output terminal 17. (Id. at 7:43–48.) Yamamoto discloses that one
`
`example of an interface that could be used to connect the camera with the
`
`external computer is a SCSI interface. (Id. at 23:8–13.)
`
`Importantly, Yamamoto does not describe what elements of the camera
`
`are involved in allowing the camera to transfer data from the hard disk of the
`
`camera to a computer connected to the camera. For example, Yamamoto does
`
`not disclose that the system control circuit 20 is involved in transferring data
`
`from the camera to the external computer or whether data transfer is controlled
`
`by another circuit such as interface circuit 65 or a circuit internal to the hard
`
`disk itself. Yamamoto notes that a system control circuit 20 controls “the
`
`whole of the camera” (id. at 6:7–10), but this statement does not address
`
`separate computer control of a removable hard drive. Instead, Yamamoto’s
`
`written description is largely silent as to whether the system control circuit 20
`
`is involved in data transfer in hard disk mode other than stating that the
`
`external “computer outputs commands . . . so that the hard disk 71 is
`
`controlled.” (Id. at 23:38–41.) Yamamoto in fact suggests that in hard disk
`
`8
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`mode, “a ‘SET WINDOW’ command can not be received by the still video
`
`camera.” (Id. at 23:41–43.)
`
`B. U.S. Patent No. 6,256,452 To Yamamoto
`
`Yamamoto 2, like Yamamoto, is directed to a camera with a recordable
`
`medium. (Ex. 1407 at 1:31–34.) The recordable medium can be used for
`
`recording image data and as an external storage device for a computer. (Id.)
`
`Yamamoto 2 discloses that the recordable medium can be a hard disk and
`
`notes that the hard disk must be formatted to the format corresponding to the
`
`operating system of the external computer so that the hard disk can be
`
`accessed in accordance with the operating system of the computer. (Id. at
`
`2:57–65.) Yamamoto 2, like Yamamoto, is silent as to what components of
`
`the camera are involved in transferring files from the hard disk of the camera
`
`to a computer connected to the camera.
`
`C.
`
`The SCSI Specification
`
`The SCSI Specification is “designed to provide an efficient peer-to-
`
`peer I/O bus with up to 16 devices.” (Ex. 1405 at 22.) It is a standard that
`
`“defines an input/output bus for interconnecting computers and peripheral
`
`devices” and includes “command sets for magnetic and optical disks, tapes,
`
`printers, processors, CD-ROMs,
`
`scanners, medium changers, and
`
`9
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`communication devices.” (Id. at 22, 28.) The SCSI Specification does not
`
`address the use of file systems. (Ex. 2006 ¶¶ 49–50.)
`
`D.
`
`The “Admitted Prior Art”
`
`The Board defines the Admitted Prior Art as the following passage from
`
`the ’746 patent: Ex. 1400, e.g., 5:27–54.2 (Decision at 6.) Papst submits that
`
`some of these statements are not admissions of prior art. Regardless,
`
`Petitioners do not demonstrate how the ’746 patent’s statements have any
`
`bearing on whether the combined prior art references would render the
`
`challenged claims obvious in light of Yamamoto, Yamamoto 2, and the SCSI
`
`Specification.
`
`V. Claim Construction
`In an inter partes review, the Board construes claim terms in an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The
`
`claim language should be read in light of the specification as it would be
`
`interpreted by one of ordinary skill in the art. Cuozzo Speed Techs., LLC v.
`
`Lee, No. 15-446, 136 S. Ct. 2131, 2146 (June 20, 2016). The broadest
`
`
`
` 2
`
` The Decision lists Exhibit 1401, which is Yamamoto, but Papst believes it
`
`intended to list Exhibit 1400, which is the ’746 patent.
`
`10
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`reasonable meaning given to claim language must take into account any
`
`definitions presented in the specification. In re Am. Acad. of Sci. Tech. Ctr.,
`
`367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
`
`(Fed. Cir. 2002)). Under this standard, claim terms 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 Abbott Diabetes Care,
`
`Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012) (vacating Board’s rejection of
`
`claims based on incorrect construction of “electrochemical sensor,” which
`
`was inconsistent with meaning ascertained in view of entire specification); see
`
`also In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)).
`
`A.
`
`Level Of Ordinary Skill In The Art
`
`Petitioners’ proposed definition of the level of ordinary skill in the art
`
`(Pet. at 20–21) is mostly consistent with Papst’s view. Papst contends that the
`
`field of the invention relates to “the transfer of data and in particular to interface
`
`devices for communication between a computer or host device and a data
`
`transmit/receive device from which data is to be acquired or with which two-
`
`way communication is to take place.” (See Ex. 1400 at 1:20–24.) A POSITA
`
`would have at least a bachelor’s degree in a related field such as computer
`
`engineering or electrical engineering and at least three years of experience in
`
`11
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`the design, development, and/or testing of hardware and software components
`
`involved with data transfer or in embedded devices and their interfaces with
`
`host systems. Alternatively, a POSITA may have five or more years of
`
`experience in these technologies, without a bachelor’s degree. (Ex. 2006 ¶ 18.)
`
`The Board did not “observe any meaningful differences between the parties’
`
`definition of a person of ordinary skill in the art.” (Decision at 10.)
`
`B. Response To The Board’s Claim Construction Of “analog
`signal acquisition channel”
`
`Although neither party proffered a construction for the term, the Board
`
`construed “analog signal acquisition channel” to be included as “part of the
`
`“analog acquisition device.” (Decision at 9.) Papst agrees with the Board’s
`
`construction.
`
`C. Response To Petitioners’ Proposed Claim Constructions
`
`Although the Board did not address any terms other than the term
`
`discussed above, Papst agrees with using the constructions proposed by Papst
`
`in the D.C. litigations and as set forth in the table on pages 8–9 of the Petition.
`
`VI. Petitioners Fail To Perform A Proper Obviousness Analysis And
`Therefore Fail To Meet Their Burden
`
`Petitioners bear the burden of proving that the instituted claims are
`
`unpatentable by a preponderance of the evidence. 35 U.S.C. 316(e). Each of
`
`the Petitioners’ grounds of invalidity for which the Board instituted trial are
`
`12
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`based upon obviousness. For the reasons set forth below, Petitioners failed to
`
`prove by a preponderance of the evidence that the challenged claims of the
`
`’746 patent are obvious in view of the relied-upon prior art.
`
`A.
`
`Legal Standards For Proving Obviousness
`
`Under 35 U.S.C. § 103, Petitioners must prove that the claimed subject
`
`matter would have been obvious to a person of ordinary skill in the art at the
`
`time of the invention. 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, 383 U.S. at 18.
`
`Proper analysis under § 103 requires proof that if all elements of a
`
`claimed invention are taught or suggested by the prior art, the prior art would
`
`have also suggested to one skilled in the art that they should make the claimed
`
`invention and that they would have a reasonable expectation of success in so
`
`making. In re NuVasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016); Intri-
`
`Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-
`
`00309, Paper 83 at 19 (PTAB Mar. 23, 2014). An invention “composed of
`
`several elements is not proved obvious merely by demonstrating that each of
`
`13
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`its elements was, independently, known in the prior art.” KSR, 550 U.S. at
`
`418. It is not enough to show that multiple references could be combined;
`
`Petitioners must show that a POSITA would have been motivated to pick out
`
`the asserted multiple references and combine them to arrive at the claimed
`
`invention. See Personal Web Techs., LLC v. Apple, Inc., No. 2016-1174, Slip
`
`op. at 11 (Fed. Cir. Feb. 14, 2017).
`
`Petitioners must clearly explain why the invention would have been
`
`obvious with some articulated reasoning and rational underpinning to support
`
`the legal conclusion of obviousness; conclusory statements of obviousness
`
`will not suffice. KSR, 550 U.S. at 418; In Re NuVasive, 842 F.3d at 1383.
`
`Similarly, any expert testimony must explain in detail how specific references
`
`could be combined, which combinations of elements in specific references
`
`would yield a predictable result, and how any specific combination would
`
`operate or read on the asserted claims. See, e.g., Activevideo Networks, Inc. v.
`
`Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012). The
`
`obviousness analysis “should be made explicit” and it “can be important to
`
`identify a reason that would have prompted a person of ordinary skill in the
`
`relevant field to combine the elements in the way the claimed new invention
`
`does.” KSR, 550 U.S. at 418.
`
`14
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`Each Graham factor must be addressed before a conclusion of
`
`obviousness can be reached. In re Cyclobenzaprine Hydrochloride Extended-
`
`Release Capsule Patent Litig., 676 F.3d 1063, 1077 (Fed. Cir. 2012); Intri-
`
`Plex, IPR2014-00309, Paper 83 at 19; Cisco Sys., Inc. v. C-Cation Techs.,
`
`LLC, IPR2014-00454, Paper 12 at 13–15 (PTAB Aug. 29, 2014) (denying
`
`petition’s obviousness grounds). Importantly, the obviousness inquiry must
`
`be taken without any “hint of hindsight,” Star Scientific, Inc. v. R.J. Reynolds
`
`Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011), so as to avoid
`
`“reconstruction by using the patent in suit as a guide through the maze of prior
`
`art references, combining the right references in the right way so as to achieve
`
`the result of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed.
`
`Cir. 2011) (internal citation omitted).
`
`Even in an obviousness analysis, a claim limitation must be proven to
`
`be in the prior art; it may not be proven by conclusory testimony unsupported
`
`by concrete evidence. See K/S HIMPP v. Hear-Wear Techs., LLC, 751 F3d
`
`1362, 1365–67 (Fed. Cir. 2014); see also Arendi S.A.R.L. v. Apple Inc., 832
`
`F.3d 1355, 1363–66 (Fed. Cir. 2016) (reversing Board finding that claim
`
`limitation absent from the asserted prior art was obvious based on common
`
`sense, because finding relied solely on petitioner’s expert declaration that
`
`lacked “evidence and reasoned explanation”). In K/S HIMPP, inter partes
`
`15
`
`
`
`PATENT OWNER RESPONSE IN IPR2016-01213
`U.S. PATENT NO. 8,504,746
`
`reexamination requestor HIMPP asserted that certain dependent claims were
`
`obvious in view of the examiner’s naked assertion during prosecution that the
`
`limitations recited in those claims were “known in the art.” 751 F.3d at 1364.
`
`The Board on appeal rejected HIMPP’s argument, finding that HIMPP failed
`
`to show any underlying factual support in support of its assertion of
`
`obviousness. Id. The Federal Circuit affirmed, holding that “the Board cannot
`
`accept general conclusions about what is ‘basic knowledge’ or ‘common
`
`sense’ as a replacement for documentary evidence for core factual findings in
`
`a determination of patentability” and stating that reliance on such conclusory
`
`statements “lacks substantial evidence support.” Id. at 1366 (citing In re
`
`Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001)).
`
`B.
`
`Petitioners Fail To Show That Claims 1, 31, And 34 Are
`Obvious In View Of Yamamoto, The SCSI Specification,
`Yamamoto 2, And The Admitted Prior Art
`
`Petitioners rely on the disclosure of the “external hard disk mode” of
`
`the Yamamoto device to support their Petition. (Pet. at 33–35.) But Petitioners
`
`fundamentally misunderstand the “external hard disk mode” embodiment and
`
`thus do not appreciate that that embodiment teaches away from the ʼ746
`
`invention. As detail
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
