`571-272-7822
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` Paper 13
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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,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
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`(“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
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`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
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`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,
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`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
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`systems. Id. at 2:6–21. Several solutions to this problem were known in the
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`art. Id. at 2:22–3:24. For example, IOtech introduced an interface device
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`for laptops, using a plug-in card for converting the personal computer
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`memory card association (PCMCIA) interface into a known standard
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`interface (IEEE 1284). Id. at 2:25–30. The plug-in card provided a printer
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`interface for enhancing data transfer rates. Id. at 2:30–34. In another
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`example, a floppy disk drive interface was used for connecting a host device
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`to a peripheral device. Id. at 3:10–14. The interface appeared as floppy disk
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`drive to the host, allowing a floppy disk drive and another peripheral device
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`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
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`achieved if a driver for an input/output device customary in a host device” is
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`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
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`device via host line 11, and to a data transmit/receive device via output line
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`16. Id. at 4:59–5:10. Interface device 10 includes first connecting device
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`12, second connecting device 15, digital signal processor 13, and memory
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`means 14. Id. In a preferred embodiment, the interface device is attached to
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`a host device via a multi-purpose interface—e.g., a small computer systems
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`interface (SCSI) interface—which includes both an interface card and
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`specific driver software for the interface card. Id. at 3:49–55, 8:37–41.
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`According to the ’746 patent, SCSI interfaces were known to be present on
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`most host devices or laptops. Id. at 8:37–41. By using a standard interface
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`of a host device and by simulating an input/output device to the host device,
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`the interface device “is automatically supported by all known host systems
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`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.
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`Claims 2, 3, 6–10, 15, 17–19, 21, and 23–25 depend directly or indirectly
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`from claim 1 and claim 35 depends directly from independent claim 34.
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`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;
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`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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`Patent 8,504,746 B2
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`D. Prior Art Relied Upon
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`Petitioner relies upon the prior art references listed below (Pet. 6–7).
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`
`
`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
`
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`US 6,256,452 B1, issued July 3, 2001 (filed Feb. 19,
`1997; continuation of an application filed Sept. 8, 1995)
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`Muramatsu US 5,592,256, issued Jan. 7, 1997
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`See e.g. 5:27–54
`
`Admitted
`Prior Art
`
`
`Exhibit
`
`1401
`
`1405
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`1407
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`1408
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`1401
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`E. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability (Pet. 7):2
`
`Challenged Claims
`
`Basis
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`Reference(s)
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`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
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`
`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
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`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
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`controversy need to be construed, and only to the extent necessary to resolve
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`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999). The parties propose constructions for several claim
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`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
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`acquisition channel.”
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`“analog signal acquisition channel”
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`Independent claim 1 recites that the “analog data acquisition device”
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`comprises “an analog signal acquisition channel for receiving a signal from
`
`an analog source.” Ex. 1400, 11:5960. This channel is part of the claimed
`
`“analog data acquisition device,” along with “a program memory,” and “a
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`processor operatively interfaced with the multipurpose interface of the
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`computer.” Ex. 1400, 11:48–67. The claimed analog signal acquisition
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`channel must receive a signal, including “analog data,” from an analog
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`source. See Ex. 1400, 11:59–12:4 (reciting “an analog signal acquisition
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`channel for receiving a signal from an analog source” and “analog data is
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`acquired from the analog signal acquisition channel”).
`
`Claims 31 and 34 do not recite an “analog signal acquisition channel.”
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`Instead, claims 31 and 34 simply require acquiring analog data from an
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`analog source. In claim 31, the analog source is operatively interfaced with
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`the processor, whereas in claim 34, there is no recited relationship between
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`the processor and the analog source. Petitioner does not identify any
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`meaningful difference between the claims with regard to the acquisition of
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`Patent 8,504,746 B2
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`analog data. Neither party proffers a construction for “analog signal
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`acquisition channel.” We find, however, that the claim language differences
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`between these independent claims warrant that we clarify the scope of the
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`“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
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`from the claimed analog source. The Specification is consistent with this
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`understanding. For example, interface 10 implements an “analog input” by
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`“means of the blocks 1505–1535,” which include an 8-channel multiplexer
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`1520. Ex. 1400, 9:34–37. And Figure 2 of the ’746 patent depicts
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`multiplexer 1520 as part of interface 10 with its output signal 1525 feeding
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`into analog/digital converter 1530. Taken together, this description of the
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`multiplexer of interface 10 receiving an analog signal through connection
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`16, and outputting this signal to an analog/digital converter, informs us that
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`interface 10 receives an analog signal through connection 16 from an analog
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`source—referred to as the “data transmit/receive device” on the other end of
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`connection 16 in Figures 1 and 2.
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`Accordingly, we determine that for purposes of this Decision, the
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`“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
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`may be considered, including the “type of problems encountered in the art;
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`prior art solutions to those problems; rapidity with which innovations are
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`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,
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`computer science, or related field of study, or equivalent experience, and at
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`least two [years of] experience in studying or developing computer
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`interfaces or peripherals.” Pet. 20–21 n.2 (citing Ex. 1403 ¶ 40.)
`
`Dr. Reynolds further testifies that such an artisan also would have been
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`“familiar with operating systems (e.g., MS-DOS, Windows, Unix) and their
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`associated file systems (e.g., a [file allocation table (“FAT”)] file system),
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`device drivers for computer components and peripherals (e.g., mass storage
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`device drivers), and communication interfaces (e.g., SCSI and PCMCIA
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`interfaces).” Id.
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`Patent Owner confirms that Petitioner’s statements regarding the level
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`of ordinary skill in the art are mostly consistent with Patent Owner’s view,
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`but nonetheless contends that an ordinarily skilled artisan would have at
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`least three years of experience, or, alternatively, five or more years of
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`experience without a bachelor’s degree. Prelim. Resp. 18. We do not
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`observe any meaningful differences between the parties’ definition of a
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`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
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`proceeding reflects the level of ordinary skill in the art at the time of the
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`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
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`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
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`recording analog image data, and a hard disk that can be used as a storage
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`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:
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`system control circuit 20 (highlighted in pink), image sensor 44, e.g., a
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`charge-coupled devices (CCD) sensor (highlighted with a red box),
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`analog-to-digital (A/D) converter 62 (highlighted in yellow), image
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`processing circuit 63 (highlighted in yellow), memory 64 (highlighted in
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`blue), image recording device 67 (highlighted in purple), hard disk 71
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`(highlighted in orange), and output terminal 17 (highlighted in light blue).
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`Id. at 6:7–8:5, 22:16–67.
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`Overview of Yamamoto 2
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`
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`Yamamoto 2, likewise, describes an electronic camera having a sensor
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`for recording image data, and a hard disk device that can be used as a
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`storage device to an external computer. Ex. 1407, Abs. The hard disk
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`device has a file system and file allocation table so that the user can search
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`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
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`comprises an optical system (not shown), system control circuit 11, hard
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`disk device 13, solid state imaging device (CCD) 14, analog-to-digital (A/D)
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`converter 16, memory 19, interface 22, and external computer 23. Id. at
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`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
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`image signal corresponding to an object image is generated in CCD 14, and
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`is converted into a digital signal in A/D converter 16. Id. at 2:66–3:9. The
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`digital image data are stored in memory 19, and then transferred and
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`recorded on a predetermined area of the hard disk mounted in hard disk
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`device 13. Id. at 2:53–55, 3:26–28, 4:1–4. In one of the operational modes,
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`hard disk device 13 is connected to external computer 23 through interface
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`22, so that the hard disk of the electronic camera can be operated as an
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`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,
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`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.
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`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
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`conforming devices.” Id. “SCSI-2 includes command sets for magnetic and
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`optical disks, tapes, printers, processors, CD-ROMs, scanners, medium
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`changers, and communications devices.” Id. at Abs. “The command set
`
`definitions allow a sophisticated operating system to obtain all required
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`initialization information from the attached SCSI-2 devices.” Id. at 6.
`
`Analysis
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`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
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`optical image to an electric signal” and “receives analog information from
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`the photoelectric elements of the camera and converts it to an electric signal
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`on a CCD, which can then be converted to digital information that forms a
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`digital image.” Pet. 37.
`
`Petitioner addresses the analog signal acquisition channel again in its
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`discussion of several of claim 1’s dependent claims explaining that “the
`
`Yamamoto camera can convert the ‘pixel signals’ (digitized analog data)
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`acquired from the line sensor 44 into a form that permits an external
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`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
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`plurality of analog sources from which analog data can be simultaneously
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`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
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`acquisition channels, each of the plurality of channels.” Id.; see also Pet.
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`67–68 (stating similar reasoning to conclude that Yamamoto discloses the
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`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
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`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.
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`Ex. 1401, 6:66–7:5, 7:31–33.
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`Upon review of the Petitioner’s contentions and supporting evidence,
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`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
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`acquisition channel” as required by claim 1.
`
`The file transfer limitations
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`
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`Each independent claim requires the processor to be involved in
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`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,
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`5:27–30, 34–37, 47–50, 53–54).
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`According to Petitioner, Yamamoto describes that the camera’s hard
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`disk, which stores the digitized analog image data, can be used as an
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`external memory to a computer, using a SCSI interface. Id. at 48; Ex. 1401,
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`23:45–46. Petitioner alleges that Yamamoto’s camera, when connected to
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`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
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`the computer can use camera’s hard disk as an external storage. Pet. 48.
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`Petitioner further explains that the computer, when using the camera’s hard
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`disk as an external memory via a SCSI interface, will issue SCSI READ
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`commands to read the digitized data files from the hard disk as it would
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`read a file from a SCSI hard disk. Pet. 49; Ex. 1401, 22–23; Ex. 1403
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`¶¶ 120, 65–75.
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`Petitioner additionally alleges that “the end user is not involved in the
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`actual process of effecting the transfer of the file of digitized analog data,
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`nor is the end user required to load or install ‘any user-loaded file transfer
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`enabling software.” Id. at 49–50 (citing Ex. 1403 ¶¶ 114–123). Dr.
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`Reynolds testifies that there is no need for any “user-loaded file transfer
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`enabling software,” in that the file transfer is handled by standard SCSI
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`drivers in the camera and the computer. Ex. 1403 ¶ 119.
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`Patent Owner counters that Yamamoto does not disclose any
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`processor that is involved in a data transfer process between the computer
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`and an external computer. Prelim. Resp. 25. Patent Owner argues that
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`“Yamamoto discloses that when digitized data is sent from the camera in
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`scanner mode the camera is identified as a scanner, and data is sent without
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`a digital read command” and “[w]hen in the hard disk mode, Yamamoto’s
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`device identifies itself as a hard disk, but in this mode Yamamoto does not
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`disclose ‘transferring data from the analog source to the host device.’” Id.
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`at 27 (citing Ex. 1401, 23:4–49).
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`Upon consideration of the parties’ contentions and supporting
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`evidence, we are not persuaded by Patent Owner’s arguments, as they
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`narrowly focus only on Yamamoto, and do not consider the prior art
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`combination, as a whole, in light of the general knowledge of an ordinarily
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`skilled artisan. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
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`1986) (noting that a reference “must be read, not in isolation, but for what it
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`fairly teaches in combination with the prior art as a whole”). In a
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`patentability analysis, “the reference need not satisfy an ipsissimis verbis
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`test.” See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
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`Furthermore, when considering whether a claimed invention would have
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`been obvious, “the knowledge of such an artisan is part of the store of
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`public knowledge that must be consulted.” Ariosa Diagnostics v. Verinata
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`Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015); Randall Mfg. v. Rea,
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`733 F.3d 1355, 1362 (Fed. Cir. 2013).
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`It is not disputed that one of ordinary skill in the art would be familiar
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`with SCSI interfaces and device drivers. Ex. 1400, 1:49–53, 8:37–45;
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`Ex. 1403 ¶ 35; Pet. 20–21 n.2; Ex. 1405. Notably, the ’746 patent confirms
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`that SCSI interfaces were present on most host devices or laptops at the
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`time of the invention (Ex. 1400, 8:37–41), and that the plug-and-play
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`standard were known to those skilled in the art (id. at 7:11–20). The ’746
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`patent also confirms that a SCSI interface is a multi-purpose interface,
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`which provides both an interface card and specific driver software for the
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`interface card, and that the SCSI driver “is normally included by the
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`manufacturer of the multi-purpose interface.” Id. at 3:49–55, 10:14–24.
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`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
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`commands, including the INQUIRY instructions, “as supported by all
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`known operating systems (e.g., DOS, Windows, Unix).” Id. at 5:8–11,
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`5:18–20.
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`Here, Yamamoto provides a device in an electronic camera, which
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`“electronically develops an image on a recording medium, and reads the
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`image from the recording medium.” Ex. 1401, 1:7–10 (emphasis added).
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`Significantly, as Petitioner explains (Pet. 31), Yamamoto discloses a system
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`control circuit that controls the camera as a whole, including all other
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`circuits. Ex. 1401, 6:7–10, 7:27–30, 7:35–36, 7:60–63. Yamamoto also
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`discloses that a computer has a capability to use the camera’s hard disk,
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`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.
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`Yamamoto further discloses that, in response to the computer’s
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`INQUIRY command when the computer is connected to the camera via a
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`SCSI interface, the “camera outputs data indicating that the external hard
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`disk mode is set.” Id. at 23:30–37 (emphasis added). As Dr. Reynolds
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`explains, upon receiving an INQUIRY command, the SCSI target “will
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`respond with a table of data containing information about its device type, its
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`vendor identification, its product identification, its revision level, and other
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`required data.” Ex. 1403 ¶ 59 (citing Ex. 1405, 123–127) (emphasis
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`added). Dr. Reynolds also testifies that the INQUIRY command and
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`INQUIRY response part of SCSI communications between the SCSI
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`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
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`required. Id. ¶ 61 (citing Ex. 1405, 123–127).
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`Based on the evidence currently in this record, we are persuaded that
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`Petitioner has shown sufficiently, for purposes of this Decision, that the
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`prior art combination suggests that Yamamoto’s system control circuit is
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`adapted to be involved in an automatic file transfer process, sending a
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`digitized analog data file to the computer from the camera’s hard disk. As
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`Petitioner explains (Pet. 48), the computer, when using the camera’s hard
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`disk as an external memory via a SCSI interface, will issue SCSI READ
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`commands to read the digitized data files from the hard disk. Ex. 1403 ¶¶
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`116–118. Dr. Reynolds testifies that there is no need for a user-loaded file
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`transfer enabling software because the file transfer is handled by standard
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`SCSI drivers in the Yamamoto camera and the computer. Id. ¶ 122.
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`File System Limitation (Claim 1)
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`
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`Claim 1 requires “the processed and digitized analog data is stored in
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`a file system of the data storage memory as at least one file of digitized
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`analog data” (“the file system limitation”).
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`Petitioner asserts that Yamamoto, in combination with Yamamoto 2,
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`the SCSI Specification, and the Admitted Prior Art suggest this limitation
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`would have been obvious. Pet. 39–42. Petitioner explains that it would
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`have been obvious to an ordinarily skilled artisan that, the data stored on an
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`external hard disk, usable by an arbitrary computer, would be stored in a file,
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`managed by a file system. Pet. 41.
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`As discussed above, Dr. Reynolds testifies that it was conventional at
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`the time of the invention that the computer’s operating system would attempt
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`to identify file system information on the first sector of the disk. Id. ¶ 65
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`(citing Ex. 1409, 91). Patent Owner does not dispute this assertion. Prelim.
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`Resp. 29–30 (arguing only that Petitioner relies on the knowledge of a
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`person of ordinary skill in the art, supporting obviousness, but not
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`anticipation by Yamamoto).
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`For the foregoing reasons, Petitioner has demonstrated adequately for
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`purposes of this Decision that Yamamoto, in combinatio