throbber
Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Entered: December 15, 2016
`
`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,1
`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 IPR2016-01213
`Patent 8,504,746 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`
`
`
`
`1 Although Fujifilm Holdings America Corporation is not listed with the
`other Petitioners in the section entitled “Real Parties-In-Interest” in this
`Petition, we presume, for purposes of this Decision, that this deficiency is a
`typo. Patent Owner appears to agree with this understanding. Prelim. Resp.
`8 n.2 (“The instant Petition appears to inadvertently omit FUJIFILM
`Holdings America Corporation from its list of real-parties-in-interest.
`However, [it] appears in the Power of Attorney ([Paper 2]), as well as the
`other [related] petitions.”).
`
`

`
`Case IPR2016-01213
`Patent 8,504,746 B2
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I.
`
`INTRODUCTION
`
`Petitioner, listed above, filed a Corrected Petition requesting an inter
`
`partes review of claims 1–3, 6–10, 15, 17–19, 21, 23–25, 31, 34, and 35
`
`(“the challenged claims”) of U.S. Patent No. 8,504,746 B2 (Ex. 1400, “the
`
`’746 patent”). Paper 6 (“Pet.”). Patent Owner, Papst Licensing GmbH &
`
`Co., KG, filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`
`For the reasons that follow, we institute an inter partes review as to all
`
`the challenged claims.
`
`A. Related Matters
`
`The parties indicate that the ’746 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. 10–13; Paper 7, 1–3. This patent has also been challenged
`
`in several other petitions for inter partes review. Pet. 13; Paper 7, 4–5.
`
`B. The ’746 Patent
`
`The ’746 patent describes an interface device 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. 1400, 1:20–22,
`
`1:56–59. According to the ’746 patent, using a specific driver to match very
`
`closely to an individual host system would achieve high data transfer rates
`
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`Patent 8,504,746 B2
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`across the interface, but the specific driver cannot be used with other host
`
`systems. Id. at 2:6–21. Several solutions to this problem were known in the
`
`art. Id. at 2:22–3:24. 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 2:25–30. The plug-in card provided a printer
`
`interface for enhancing data transfer rates. Id. at 2:30–34. 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 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 ’746 patent indicates that the “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 3:32–36. Figure 1 of the ’746 patent, reproduced below,
`
`illustrates a block diagram of an interface device.
`
`
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`Patent 8,504,746 B2
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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 4:59–5:10. 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
`
`specific driver software for the interface card. Id. at 3:49–55, 8:37–41.
`
`According to the ’746 patent, SCSI interfaces were known to be present on
`
`most host devices or laptops. Id. at 8:37–41. 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 11:29–35.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 31, and 34 are independent.
`
`Claims 2, 3, 6–10, 15, 17–19, 21, and 23–25 depend directly or indirectly
`
`from claim 1 and claim 35 depends directly from independent claim 34.
`
`Claim 1 is illustrative:
`
`1. An analog data acquisition device operatively connectable to
`a computer through a multipurpose interface of the computer, the
`computer having an operating system programmed so that, when
`the computer receives a signal from the device through said
`multipurpose interface of the computer indicative of a class of
`devices, the computer automatically activates a device driver
`corresponding to the class of devices for allowing the transfer of
`data between the device and the operating system of the
`computer, the analog data acquisition device comprising:
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`Patent 8,504,746 B2
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`a) a program memory;
`
`b) an analog signal acquisition channel for receiving a signal
`from an analog source;
`
`c) a processor operatively interfaced with the multipurpose
`interface of the computer, the program memory, and a data
`storage memory when the analog data acquisition device is
`operational;
`
`d) wherein the processor 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;
`
`e) wherein when the analog acquisition device is operatively
`interfaced with the multipurpose interface of the computer, the
`processor executes at least one instructions set stored in the
`program memory and thereby automatically causes at least one
`parameter indicative of the class of devices to be sent to the
`computer through the multipurpose interface of the computer,
`independent of the analog source, wherein the analog data
`acquisition device is not within the class of devices; and
`
`f) wherein 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 of the class of
`devices;
`
`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.
`
`Ex. 1400, 11:48–12:26 (emphasis added).
`
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`Case IPR2016-01213
`Patent 8,504,746 B2
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`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the prior art references listed below (Pet. 6–7).
`
`
`
`Reference
`
`Yamamoto US 6,088,532, issued July 11, 2000
`
`SCSI
`Specification
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC.,
`AMERICAN NATIONAL STANDARD FOR INFORMATION
`SYSTEMS – SMALL COMPUTER SYSTEM INTERFACE-2,
`ANSI X3.131-1994 (1994)
`
`Yamamoto 2
`
`
`US 6,256,452 B1, issued July 3, 2001 (filed Feb. 19,
`1997; continuation of an application filed Sept. 8, 1995)
`
`Muramatsu US 5,592,256, issued Jan. 7, 1997
`
`See e.g. 5:27–54
`
`Admitted
`Prior Art
`
`
`Exhibit
`
`1401
`
`1405
`
`1407
`
`1408
`
`1401
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 7):2
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1–3, 6–10, 15, 17–19, 21,
`24, 25, 31, 34, and 35
`
`§ 102(e) Yamamoto
`
`
`
`2 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.
`
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`Case IPR2016-01213
`Patent 8,504,746 B2
`
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1–3, 6–10, 15, 17–19, 21,
`24, 25, 31, 34, and 35
`
`§ 103(a)
`
`23
`
`§ 103(a)
`
`Yamamoto, Yamamoto 2, the
`SCSI Specification, and
`Admitted Prior Art3
`Yamamoto Yamamoto 2,
`Muramatsu, the SCSI
`Specification, and the Admitted
`Prior Art4
`
`II. ANALYSIS
`
`A. Claim Construction
`
`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).
`
`
`
`3 Although discussed in the Petitioner’s analysis, the SCSI Specification and
`the Admitted Prior Art are omitted inadvertently from the statement of the
`asserted ground. See, e.g., Pet. 20, 26, 44. Therefore, we treat the statement
`as mere harmless error and presume that Petitioner intended to assert that the
`challenged claims are unpatentable based, in part on the SCSI Specification
`and the Admitted Prior Art.
`
`4 Petitioner asserts that claim 23, which depends from claim 1, is
`unpatentable over Yamamoto and Muramatsu, but also relies upon its
`analysis in connection with claim 1. Therefore, we presume that Petitioner
`also intended to assert that claim 23 is unpatentable over Yamamoto, in
`combination with Yamamoto 2, Muramatsu, the SCSI Specification, and the
`Admitted Prior Art.
`
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`We note that only those claim terms and elements which 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. 7–9; Prelim. Resp. 16–17, 20–28. For purposes of this Decision,
`
`we find it necessary to address only the claim term “analog signal
`
`acquisition channel.”
`
`“analog signal acquisition channel”
`
`Independent claim 1 recites that the “analog data acquisition device”
`
`comprises “an analog signal acquisition channel for receiving a signal from
`
`an analog source.” Ex. 1400, 11:5960. This channel is part of the claimed
`
`“analog data acquisition device,” along with “a program memory,” and “a
`
`processor operatively interfaced with the multipurpose interface of the
`
`computer.” Ex. 1400, 11:48–67. The claimed analog signal acquisition
`
`channel must receive a signal, including “analog data,” from an analog
`
`source. See Ex. 1400, 11:59–12:4 (reciting “an analog signal acquisition
`
`channel for receiving a signal from an analog source” and “analog data is
`
`acquired from the analog signal acquisition channel”).
`
`Claims 31 and 34 do not recite an “analog signal acquisition channel.”
`
`Instead, claims 31 and 34 simply require acquiring analog data from an
`
`analog source. In claim 31, the analog source is operatively interfaced with
`
`the processor, whereas in claim 34, there is no recited relationship between
`
`the processor and the analog source. Petitioner does not identify any
`
`meaningful difference between the claims with regard to the acquisition of
`
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`analog data. Neither party proffers a construction for “analog signal
`
`acquisition channel.” We find, however, that the claim language differences
`
`between these independent claims warrant that we clarify the scope of the
`
`“analog signal acquisition channel” in claim 1.
`
`For purposes of this Decision, we are persuaded that the ’746 patent
`
`indicates that the analog signal acquisition channel is separate and distinct
`
`from the claimed analog source. The Specification is consistent with this
`
`understanding. For example, interface 10 implements an “analog input” by
`
`“means of the blocks 1505–1535,” which include an 8-channel multiplexer
`
`1520. Ex. 1400, 9:34–37. And Figure 2 of the ’746 patent depicts
`
`multiplexer 1520 as part of interface 10 with its output signal 1525 feeding
`
`into analog/digital converter 1530. Taken together, this description of the
`
`multiplexer of interface 10 receiving an analog signal through connection
`
`16, and outputting this signal to an analog/digital converter, informs us that
`
`interface 10 receives an analog signal through connection 16 from an analog
`
`source—referred to as the “data transmit/receive device” on the other end of
`
`connection 16 in Figures 1 and 2.
`
`Accordingly, we determine that for purposes of this Decision, the
`
`“analog signal acquisition channel” is part of the analog acquisition device.
`
`B. 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
`
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`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.” Pet. 20–21 n.2 (citing Ex. 1403 ¶ 40.)
`
`Dr. Reynolds further testifies that such an artisan also would have been
`
`“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 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. 18. 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 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).
`
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`C. Obviousness over Yamamoto, in Combination with Yamamoto 2
`the SCSI Specification, and the Admitted Prior Art
`
`Petitioner asserts that claims 1–3, 6–10, 15, 17–19, 21, 24, 25, 31, 34,
`
`and 35 (all the challenged claims except claim 23) are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Yamamoto, combined with Yamamoto
`
`2, the SCSI Specification, and the Admitted Prior Art. Pet. 7, 20, 26–68.
`
`Overview of Yamamoto
`
`Yamamoto discloses an electronic camera having an image sensor for
`
`recording analog image data, and a hard disk that can be used as a storage
`
`device to an external computer via a SCSI interface. Ex. 1401, 1:7–10,
`
`4:21–30, 7:43–48, 23:8–13. Figure 30 of Yamamoto is reproduced below
`
`with highlights added by Petitioner (Pet. 33).
`
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`As illustrated in Figure 30 of Yamamoto, the camera comprises:
`
`system control circuit 20 (highlighted in pink), image sensor 44, e.g., a
`
`charge-coupled devices (CCD) sensor (highlighted with a red box),
`
`analog-to-digital (A/D) converter 62 (highlighted in yellow), image
`
`processing circuit 63 (highlighted in yellow), memory 64 (highlighted in
`
`blue), image recording device 67 (highlighted in purple), hard disk 71
`
`(highlighted in orange), and output terminal 17 (highlighted in light blue).
`
`Id. at 6:7–8:5, 22:16–67.
`
`Overview of Yamamoto 2
`
`
`
`Yamamoto 2, likewise, describes an electronic camera having a sensor
`
`for recording image data, and a hard disk device that can be used as a
`
`storage device to an external computer. Ex. 1407, Abs. The hard disk
`
`device has a file system and file allocation table so that the user can search
`
`the hard disk for stored image data. Id. at 3:58–62.
`
`Figure 1 of Yamamoto 2 is reproduced below.
`
`
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`As illustrated in Figure 1 of Yamamoto 2, the electronic camera
`
`comprises an optical system (not shown), system control circuit 11, hard
`
`disk device 13, solid state imaging device (CCD) 14, analog-to-digital (A/D)
`
`converter 16, memory 19, interface 22, and external computer 23. Id. at
`
`2:47–3:37. System control circuit 11 comprises a microcomputer which
`
`controls the entire electronic camera, and RAM 12. Id. at 2:51–53. An
`
`image signal corresponding to an object image is generated in CCD 14, and
`
`is converted into a digital signal in A/D converter 16. Id. at 2:66–3:9. The
`
`digital image data are stored in memory 19, and then transferred and
`
`recorded on a predetermined area of the hard disk mounted in hard disk
`
`device 13. Id. at 2:53–55, 3:26–28, 4:1–4. In one of the operational modes,
`
`hard disk device 13 is connected to external computer 23 through interface
`
`22, so that the hard disk of the electronic camera can be operated as an
`
`external storage device of external computer 23. Id. at 2:55–57, 3:34–36.
`
`Overview of the SCSI Specification
`
`
`
`The SCSI Specification is a technical Specification published by the
`
`American National Standard for Information Systems to set forth the SCSI
`
`standards. According to the SCSI Specification, the SCSI protocol “is
`
`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
`
`including one or more hosts.” Ex. 1405, Abs. The primary objective of the
`
`SCSI interface is “to provide host computers with device independence
`
`within a class of devices.” Id. at 6. The SCSI-2 “standard defines an
`
`input/output bus for interconnecting computers and peripheral devices.” Id.
`
`at 1. “It includes the necessary specification of the mechanical, electrical,
`
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`and functional characteristics of the interface to allow interoperability of
`
`conforming devices.” Id. “SCSI-2 includes command sets for magnetic and
`
`optical disks, tapes, printers, processors, CD-ROMs, scanners, medium
`
`changers, and communications devices.” Id. at Abs. “The command set
`
`definitions allow a sophisticated operating system to obtain all required
`
`initialization information from the attached SCSI-2 devices.” Id. at 6.
`
`Analysis
`
`Analog signal acquisition signal (claim 1)
`
`After considering Petitioner’s contentions regarding claim 1 and
`
`Patent Owner’s arguments in opposition, we are persuaded that Petitioner
`
`has demonstrated a reasonable likelihood of prevailing on showing that
`
`Yamamoto teaches the recited “analog signal acquisition channel.”
`
`In the section of its analysis titled “An analog signal acquisition
`
`channel of claim 1,” Petitioner states that “Yamamoto discloses a line sensor
`
`44,” which “serves as a photoelectric conversion device” converting “an
`
`optical image to an electric signal” and “receives analog information from
`
`the photoelectric elements of the camera and converts it to an electric signal
`
`on a CCD, which can then be converted to digital information that forms a
`
`digital image.” Pet. 37.
`
`Petitioner addresses the analog signal acquisition channel again in its
`
`discussion of several of claim 1’s dependent claims explaining that “the
`
`Yamamoto camera can convert the ‘pixel signals’ (digitized analog data)
`
`acquired from the line sensor 44 into a form that permits an external
`
`computer to receive it in a file format typical of a data stored on a hard
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`disk.” Pet. 52–53. Further, referring to Figure 19 of Yamamoto, Petitioner
`
`asserts that “the Yamamoto camera may have multiple light sources (42a–
`
`42c), scanner optical systems (43a–43c), line sensors (44a–44c), line sensor
`
`drive circuits (47a–47c), amplifiers (61a–61c) and A/D converters (62a–
`
`62c).” Id. at 53. According to Petitioner “[t]hese devices comprise a
`
`plurality of analog sources from which analog data can be simultaneously
`
`acquired, digitized, and processed by the image processing circuit 63, under
`
`control of the system control circuit 20 (processor).” Id. Thus, Petitioner
`
`concludes that Yamamoto discloses “a plurality of independent analog signal
`
`acquisition channels, each of the plurality of channels.” Id.; see also Pet.
`
`67–68 (stating similar reasoning to conclude that Yamamoto discloses the
`
`limitation added by claim 35).
`
`Given Petitioner’s explanation summarized above, we presume that
`
`Petitioner equates line sensor 44 to the claimed analog signal acquisition
`
`channel, which is shown to send output through analog/digital converter 62.
`
`We also presume that Petitioner is mapping “the photoelectric elements of
`
`the camera” as the analog source. See Pet. 37. We agree, for purposes of
`
`this Decision, that Yamamoto discloses line sensor 44 (analog signal
`
`acquisition device) receiving an optical image from the photoelectric
`
`elements of the camera (analog source) and converting it to an electric
`
`signal, which in turn is sent to analog/digital converter 62 for digitization.
`
`Ex. 1401, 6:66–7:5, 7:31–33.
`
`Upon review of the Petitioner’s contentions and supporting evidence,
`
`we determine that Petitioner has established sufficiently for purposes of this
`
`Decision that Yamamoto, in combination with Yamamoto 2, the SCSI
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`Specification, and the Admitted Prior Art suggests an “analog signal
`
`acquisition channel” as required by claim 1.
`
`The file transfer limitations
`
`
`
`Each independent claim requires the processor to be involved in
`
`transferring at least one file of digitized analog data to the host device. See,
`
`e.g., Ex. 1400, 12:15–23. The claims additionally require that “there is no
`
`requirement for any user-loaded file transfer enabling software to be loaded
`
`on or installed in the computer.” Id. at 12:24–26, 14:42–44, 16:14–16.
`
`Petitioner asserts that Yamamoto, in combination with Yamamoto 2,
`
`the SCSI Specification, and the Admitted Prior Art renders these file
`
`transfer limitations obvious. Pet. 42–50. In particular, Petitioner alleges
`
`that automatic recognition of a peripheral device (e.g., a disk drive or
`
`scanner) connected to a host computer via an i/o port was known in the art.
`
`Id. at 43–44. Petitioner notes that the SCSI Specification includes an
`
`INQUIRY command to discover device type, vendor, product, and revision
`
`information of attached devices. Id. at 44; Ex. 1403 ¶¶ 106, 58, 59.
`
`Petitioner also points out that the ’746 patent confirms that automatic
`
`recognition technology was known in the art. Pet. 44 (citing Ex. 1400,
`
`5:27–30, 34–37, 47–50, 53–54).
`
`According to Petitioner, Yamamoto describes that the camera’s hard
`
`disk, which stores the digitized analog image data, can be used as an
`
`external memory to a computer, using a SCSI interface. Id. at 48; Ex. 1401,
`
`23:45–46. Petitioner alleges that Yamamoto’s camera, when connected to
`
`the computer as a SCSI device, would respond to an INQUIRY command
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`from the computer with a parameter indicating it is a SCSI hard disk drive,
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`and then would exchange file system information with the computer so that
`
`the computer can use camera’s hard disk as an external storage. Pet. 48.
`
`Petitioner further explains that the computer, when using the camera’s hard
`
`disk as an external memory via a SCSI interface, will issue SCSI READ
`
`commands to read the digitized data files from the hard disk as it would
`
`read a file from a SCSI hard disk. Pet. 49; Ex. 1401, 22–23; Ex. 1403
`
`¶¶ 120, 65–75.
`
`Petitioner additionally alleges that “the end user is not involved in the
`
`actual process of effecting the transfer of the file of digitized analog data,
`
`nor is the end user required to load or install ‘any user-loaded file transfer
`
`enabling software.” Id. at 49–50 (citing Ex. 1403 ¶¶ 114–123). Dr.
`
`Reynolds testifies that there is no need for any “user-loaded file transfer
`
`enabling software,” in that the file transfer is handled by standard SCSI
`
`drivers in the camera and the computer. Ex. 1403 ¶ 119.
`
`Patent Owner counters that Yamamoto does not disclose any
`
`processor that is involved in a data transfer process between the computer
`
`and an external computer. Prelim. Resp. 25. Patent Owner argues that
`
`“Yamamoto discloses that when digitized data is sent from the camera in
`
`scanner mode the camera is identified as a scanner, and data is sent without
`
`a digital read command” and “[w]hen in the hard disk mode, Yamamoto’s
`
`device identifies itself as a hard disk, but in this mode Yamamoto does not
`
`disclose ‘transferring data from the analog source to the host device.’” Id.
`
`at 27 (citing Ex. 1401, 23:4–49).
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`Upon consideration of the parties’ contentions and supporting
`
`evidence, we are not persuaded by Patent Owner’s arguments, as they
`
`narrowly focus only on Yamamoto, and do not consider the prior art
`
`combination, as a whole, in light of the general knowledge of an ordinarily
`
`skilled artisan. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
`
`1986) (noting that a reference “must be read, not in isolation, but for what it
`
`fairly teaches in combination with the prior art as a whole”). In a
`
`patentability analysis, “the reference need not satisfy an ipsissimis verbis
`
`test.” See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
`
`Furthermore, when considering whether a claimed invention would have
`
`been obvious, “the knowledge of such an artisan is part of the store of
`
`public knowledge that must be consulted.” Ariosa Diagnostics v. Verinata
`
`Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015); Randall Mfg. v. Rea,
`
`733 F.3d 1355, 1362 (Fed. Cir. 2013).
`
`It is not disputed that one of ordinary skill in the art would be familiar
`
`with SCSI interfaces and device drivers. Ex. 1400, 1:49–53, 8:37–45;
`
`Ex. 1403 ¶ 35; Pet. 20–21 n.2; Ex. 1405. Notably, the ’746 patent confirms
`
`that SCSI interfaces were present on most host devices or laptops at the
`
`time of the invention (Ex. 1400, 8:37–41), and that the plug-and-play
`
`standard were known to those skilled in the art (id. at 7:11–20). The ’746
`
`patent also confirms that a SCSI interface is a multi-purpose interface,
`
`which provides both an interface card and specific driver software for the
`
`interface card, and that the SCSI driver “is normally included by the
`
`manufacturer of the multi-purpose interface.” Id. at 3:49–55, 10:14–24.
`
`Moreover, the ’746 patent acknowledges that communication between a
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`host system and an interface device is based on known standard access
`
`commands, including the INQUIRY instructions, “as supported by all
`
`known operating systems (e.g., DOS, Windows, Unix).” Id. at 5:8–11,
`
`5:18–20.
`
`Here, Yamamoto provides a device in an electronic camera, which
`
`“electronically develops an image on a recording medium, and reads the
`
`image from the recording medium.” Ex. 1401, 1:7–10 (emphasis added).
`
`Significantly, as Petitioner explains (Pet. 31), Yamamoto discloses a system
`
`control circuit that controls the camera as a whole, including all other
`
`circuits. Ex. 1401, 6:7–10, 7:27–30, 7:35–36, 7:60–63. Yamamoto also
`
`discloses that a computer has a capability to use the camera’s hard disk,
`
`which stores the digitized image data, as an external memory by using a
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`SCSI interface. Ex. 1401, 4:24–27, 22:16–23:44.
`
`Yamamoto further discloses that, in response to the computer’s
`
`INQUIRY command when the computer is connected to the camera via a
`
`SCSI interface, the “camera outputs data indicating that the external hard
`
`disk mode is set.” Id. at 23:30–37 (emphasis added). As Dr. Reynolds
`
`explains, upon receiving an INQUIRY command, the SCSI target “will
`
`respond with a table of data containing information about its device type, its
`
`vendor identification, its product identification, its revision level, and other
`
`required data.” Ex. 1403 ¶ 59 (citing Ex. 1405, 123–127) (emphasis
`
`added). Dr. Reynolds also testifies that the INQUIRY command and
`
`INQUIRY response part of SCSI communications between the SCSI
`
`initiator (the computer) and the SCSI target (the camera) is automatic and
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`hidden from a user, and that no user intervention or participation is
`
`required. Id. ¶ 61 (citing Ex. 1405, 123–127).
`
`Based on the evidence currently in this record, we are persuaded that
`
`Petitioner has shown sufficiently, for purposes of this Decision, that the
`
`prior art combination suggests that Yamamoto’s system control circuit is
`
`adapted to be involved in an automatic file transfer process, sending a
`
`digitized analog data file to the computer from the camera’s hard disk. As
`
`Petitioner explains (Pet. 48), the computer, when using the camera’s hard
`
`disk as an external memory via a SCSI interface, will issue SCSI READ
`
`commands to read the digitized data files from the hard disk. Ex. 1403 ¶¶
`
`116–118. Dr. Reynolds testifies that there is no need for a user-loaded file
`
`transfer enabling software because the file transfer is handled by standard
`
`SCSI drivers in the Yamamoto camera and the computer. Id. ¶ 122.
`
`File System Limitation (Claim 1)
`
`
`
`Claim 1 requires “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” (“the file system limitation”).
`
`Petitioner asserts that Yamamoto, in combination with Yamamoto 2,
`
`the SCSI Specification, and the Admitted Prior Art suggest this limitation
`
`would have been obvious. Pet. 39–42. Petitioner explains that it would
`
`have been obvious to an ordinarily skilled artisan that, the data stored on an
`
`external hard disk, usable by an arbitrary computer, would be stored in a file,
`
`managed by a file system. Pet. 41.
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`As discussed above, Dr. Reynolds testifies that it was conventional at
`
`the time of the invention that the computer’s operating system would attempt
`
`to identify file system information on the first sector of the disk. Id. ¶ 65
`
`(citing Ex. 1409, 91). Patent Owner does not dispute this assertion. Prelim.
`
`Resp. 29–30 (arguing only that Petitioner relies on the knowledge of a
`
`person of ordinary skill in the art, supporting obviousness, but not
`
`anticipation by Yamamoto).
`
`For the foregoing reasons, Petitioner has demonstrated adequately for
`
`purposes of this Decision that Yamamoto, in combinatio

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