throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 12
`
`
`
` 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,
`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 IPR2016-01216
`Patent 8,966,144 B2
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PER CURIAM
`
`Opinion concurring filed by Administrate Patent Judge CHANG.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`I.
`INTRODUCTION
`Canon Inc., Canon U.S.A., Inc., Canon Financial Services, Inc.,
`FUJIFILM Corporation, FUJIFILM Holdings America Corporation,
`FUJIFILM North America Corporation, JVC KENWOOD Corporation,
`JVCKENWOOD USA Corporation, Nikon Corporation, Nikon Inc.,
`Olympus Corporation, Olympus America Inc., Panasonic Corporation,
`Panasonic Corporation of North America, Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a
`corrected Petition requesting an inter partes review of claims 7, 9, 11, 12,
`17–21, 23–26, 41, 50, 51, 56–58, 66–76, 78, and 79 (“the challenged
`claims”) of U.S. Patent No. 8,966,144 B2 (Ex. 1201, “the ’144 patent”).
`Paper 4 (“Pet.”). Patent Owner, Papst Licensing GmbH & Co., KG (“Patent
`Owner”), filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we hereby institute an inter partes review as to the challenged claims.
`
`A. Related Matters
`
`The parties indicate that the ’144 patent is involved in Papst Licensing
`GmbH & Co. KG v. Canon Inc., Case No. 1:15-cv-01692 (D.D.C.) and other
`proceedings. Pet. 58–61; Paper 8, 1–3.
`
`2
`
`

`
`B. The ’144 Patent
`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`The ’144 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. 1201, 1:18–22,
`1:54–57. According to the ’144 patent, using a specific driver to match very
`closely to an individual host system would achieve high data transfer rates
`across the interface, but the specific driver cannot be used with other host
`systems. Id. at 2:4–19. Several solutions to this problem were known in the
`art. Id. at 2:20–3:25. For example, IOtech introduced an interface device
`for laptops, using a plug-in card for converting the personal computer
`memory card association (PCMCIA) interface into a known standard
`interface (IEEE 1284). Id. at 2:23–29. The plug-in card provided a printer
`interface for enhancing data transfer rates. Id. at 2:29–33. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:10–14. The interface emulated as a floppy
`disk drive to the host, allowing a floppy disk drive and another peripheral
`device to be connected to the host device. Id. at 3:17–19.
`The ’144 patent indicates that its “invention is based on the finding
`that both a high data transfer rate and host device-independent use can be
`achieved if a driver for an input/output device customary in a host device” is
`utilized. Id. at 3:32–37. Figure 1 of the ’144 patent, reproduced below,
`illustrates a block diagram of an interface device.
`
`3
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`
`
`As shown in Figure 1 above, interface device 10 connects to a host
`device via host line 11, and to a data transmit/receive device via output
`line 16. Id. at 4:62–5:10. Interface device 10 includes first connecting
`device 12, second connecting device 15, digital signal processor 13, and
`memory means 14. Id. In a preferred embodiment, the interface device is
`attached to a host device via a multi-purpose interface—e.g., a small
`computer systems interface (SCSI) interface—which includes both an
`interface card and the driver for the interface card. Id. at 3:51–57, 8:42–46.
`According to the ’144 patent, SCSI interfaces were known to be present on
`most host devices or laptops. Id. at 8:42–46. By using a standard interface
`of a host device and by simulating an input/output device to the host device,
`the interface device “is automatically supported by all known host systems
`without any additional sophisticated driver software.” Id. at 11:38–44.
`
`4
`
`

`
`C. Illustrative Claims
`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`None of the challenged claims in the instant proceeding is
`independent. Claims 7, 9, 11, 12, 17–21, 23–24, 41, 50, 51, 56, 57, 66–76,
`78, and 79 depend ultimately from claim 1. Claims 1 and 17 are illustrative:
`1. An analog data generating and processing device (ADGPD),
`comprising:
`an input/output (i/o) port;
`a program memory;
`a data storage memory;
`a sensor designed to transmit data;
`a processor operatively interfaced with the i/o port, the program
`memory, the data storage memory and the sensor;
`wherein the processor is adapted to be involved in a data
`generation process by which the sensor generates analog data,
`the analog data is processed, and the processed analog data is
`stored in the data storage memory as at least one file of digitized
`analog data;
`wherein the processor also is adapted to be involved in an
`automatic recognition process in which, when the i/o port is
`operatively interfaced with a multi-purpose interface of a
`computer, the processor executes at least one instruction set
`stored in the program memory and thereby causes at least one
`parameter which provides identification information regarding
`the ADGPD to be automatically sent through the i/o port and to
`the multi-purpose interface of the computer
`(a) without requiring any end user to load any software
`onto the computer at any time,
`(b) without requiring any end user to interact with the
`computer to set up a file system in the ADGPD at any time,
`(c) before a time when the computer is able to receive the
`5
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`at least one file of digitized analog data from the data storage
`memory, and
`(d) regardless of the identity of a manufacturer of the
`computer, wherein the at least one parameter is consistent with
`the ADGPD being responsive to commands issued from a
`customary driver;
`wherein the processor is further adapted to be involved in an
`automatic file transfer process in which, when the i/o port is
`operatively interfaced with the multi-purpose interface of the
`computer, and after the at least one parameter has been received
`by the multi-purpose interface of the computer, the processor
`executes at least one other instruction set stored in the program
`memory and thereby causes the at least one file of digitized
`analog data to be transferred to the computer regardless of the
`identity of the manufacturer of the computer and without
`requiring any user-loaded file transfer enabling software to be
`loaded on or installed in the computer at any time.
`Ex. 1201, 11:56–12:36 (emphases added).
`17. The ADGPD of claim 1, wherein the sensor comprises a data
`transmit/receive device.
`Id. at 13:7–8.
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the prior art references listed below.1
`Matsumoto
`US 5,684,607
`Nov. 4, 1997
`(Ex. 1208)
`Muramatsu
`US 5,592,256
`Jan. 7, 1997
`(Ex. 1212)
`Saito
`
`US 5,724,155
`Mar. 3, 1998
`(Ex. 1213)
`
`
`1 Citations to Kawaguchi are to the English translation (Ex. 1207), and
`citations to Takahashi are to the English translation (Ex. 1211).
`6
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`(Ex. 1206)
`
`(Ex. 1210)
`
`Jan. 21, 1992
`JP H4-15853
`Kawaguchi
`(Ex. 1207, English translation, “Kawaguchi”).
`Takahashi
`
`JP H05-344283 Dec. 24, 1993
`(Ex. 1211, English translation, “Takahashi”).
`Analogic, DASM-AD14, 14-Bits, 2 MHz A-to-D SCSI Substation for
`the Most Demanding Data Acquisition Applications (1992) (Ex. 1209,
`“DASM-AD14”).
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`Interface-2, ANSI X3.131-1994 (1994) (Ex. 1204, Appendix A-4, “the SCSI
`Specification”).2
`Admitted Prior Art (see, e.g., Ex. 1201, 3:37–46, 4:20–22, 5:11–14,
`5;21–23, 5:37–47, 8:45–50, 10:26–29).
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 8–9)3:
`
`Challenged Claim(s)
`7, 9, 11, 12, 17–21,
`23–24, 41, 50, 51, 56,
`57, 66–76, 78, and 79
`
`Basis
`§ 102(b)
`or
`§ 103(a)
`
`Kawaguchi
`
`Reference(s)
`
`
`2 Citations to the SCSI Specification refer to the original page numbers.
`3 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§§ 102 and 103 in this Decision.
`
`7
`
`

`
`Reference(s)
`Kawaguchi, Matsumoto, the SCSI
`Specification, and Admitted Prior
`Art4
`Kawaguchi, Matsumoto, Takahashi,
`the SCSI Specification, and Admitted
`Prior Art
`Kawaguchi, Matsumoto,
`DASM-AD14, the SCSI
`Specification, and Admitted Prior Art
`
`Kawaguchi, Matsumoto, Saito, the
`SCSI Specification, and Admitted
`Prior Art
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`Challenged Claim(s)
`7, 9, 11, 12, 17–21,
`23–25, 41, 50, 51, 56–
`58, 66–76, 78, and 79
`
`26
`
`57, 68–70, 75, and 765
`
`§ 103(a)
`
`41, 50, 51, 56, 78, and
`79
`
`§ 103(a)
`
`66
`
`§ 103(a)
`
`Kawaguchi, Matsumoto, Muramatsu,
`the SCSI Specification, and Admitted
`Prior Art
`
`
`4 Although discussed in the Petitioner’s analysis, the SCSI Specification and
`the Admitted Prior Art are omitted inadvertently from the statements of the
`asserted grounds. Therefore, we treat the statements of the asserted grounds
`as 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.
`5 Although the statement of this asserted ground includes claims 49 and 53
`(Pet. 9), Petitioner proffers no analysis as to these claims, and Petitioner’s
`statement under 37 C.F.R. § 42.104(b)(1) does not identify these claims
`(id. at 6). Therefore, we do not include these claims in this ground.
`8
`
`

`
`II. DISCUSSION
`
`A. Claim Construction
`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The parties propose
`constructions for several claim terms. Pet. 9–11; Prelim. Resp. 25–26. For
`purposes of this Decision, we find it necessary to address only the claim
`terms identified below.
`
`“analog data generating and processing device”
`The claim term “analog data generating and processing device” or
`
`“ADGPD” appears in claim 1. Ex. 1201, 11:57–58. At this juncture, the
`parties did not proffer a construction for this claim term. Apart from the title
`and claims, the Specification of the ’144 patent does not use the term
`“analog data generating and processing device.” See generally Ex. 1201.
`Rather, the Specification focuses on an interface device for communication
`
`9
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`between a host device and a data transmit/receive device. Id. at Abs., 1:18–
`22, 3:29–32, Figs. 1, 2.
`To bridge the gap between the disclosure of the purported invention in
`the Specification and the claim terms that are not otherwise described in the
`Specification, we turn to claims 1 and 2, which recite the structural elements
`of these devices. In claim 1, the “analog data generating and processing
`device” is required to include an input/output (i/o) port, a program memory,
`a data storage memory, a sensor designed to transmit data, and a processor.
`Id. at 11:57–12:36. Claim 2, which depends from claim 1, further recites
`“wherein the i/o port, the program memory, the data storage memory, and
`the processor form an interface device that is designed to have the analog
`data transferred to it from the sensor.” Id. at 12:37–40 (emphasis added).
`Essentially, these claims define an “analog data generating and processing
`device” as an interface device having, at least, a sensor. In that light, we
`construe the claim term “analog data generating and processing device” to
`encompass “an interface device having a sensor.” Put differently, an
`interface device and its sensors jointly form an analog data generating and
`processing device.
`
`“sensor”
`Claim 1 recites “a sensor designed to transmit data.” Ex. 1201, 11:62.
`
`Claim 17, which depends from claim 1, requires the “sensor” to comprise a
`“data transmit/receive device.” Id. at 13:7–8. At this juncture, the parties
`did not proffer a construction for this claim term. Apart from the claims, the
`term “sensor” does not appear in the Specification of the ’144 patent.
`10
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`Rather, as noted above, the Specification focuses on an interface device for
`communication between a host device and a data transmit/receive device.
`Id. at 1:18–22, 3:29–32, 6:11–13, Figs. 1, 2. In that light, we construe a
`“sensor” to encompass a “data transmit/receive device”—a device that is
`capable of transmitting and/or receiving data.
`
`“multi-purpose interface”
`Claim 1 recites “the i/o port is operatively interfaced with a
`
`multi-purpose interface of a computer.” Ex. 1201, 12:5–7. At this juncture,
`the parties did not proffer a construction for the term “multi-purpose
`interface.” The Specification of the ’144 patent describes “the interface
`device according to the present invention is to be attached to a host device
`by means of a multi-purpose interface of the host device which can be
`implemented, for example, as a small computer systems interface (SCSI)
`interface or as an enhanced printer interface.” Id. at 3:51–56 (emphases
`added). The Specification also indicates that SCSI interfaces are present on
`most host devices or laptops. Id. at 8:45–46. Petitioner’s Declarant, Paul F.
`Reynolds, Ph.D., testifies that SCSI is “a standard for attaching a range of
`peripheral device types to computers,” and “SCSI is designed to be
`multipurpose: to both support a variety of devices and to operate with a
`variety of operating systems.” Ex. 1204 ¶ 64.
`
`In light of the Specification and the evidence before us regarding the
`general knowledge of an ordinarily skilled artisan, we construe a
`“multi-purpose interface” to encompass a “SCSI interface.”
`
`11
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`“customary driver”
`The claim term “customary driver” appears in claim 1. Ex. 1201,
`12:22–23. For instance, claim 1 recites “the at least one parameter is
`consistent with the ADGPD being responsive to commands issued from a
`customary driver.” Id. at 12:20–23 (emphasis added). Claim 29, which
`depends from claim 1, further recites “wherein the at least one parameter is
`consistent with the ADGPD being responsive to a SCSI inquiry command.”
`Id. at 13:38–40 (emphasis added).
`Petitioner proposes to construe this term as “driver normally part of
`commercially available computer systems at the time of the invention.”
`Pet. 11. Patent Owner disagrees, arguing that Petitioner improperly adds the
`temporal limitation “at the time of the invention.” Prelim. Resp. 25–26.
`We note that “the ordinary and customary meaning of a claim term is
`the meaning that the term would have to a person of ordinary skill in the art
`in question at the time of the invention, i.e., as of the effective filing date of
`the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`Cir. 2005) (en banc) (emphasis added); see also PC Connector Solutions
`LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005) (meaning of
`claim “must be interpreted as of [the] effective filing date” of the patent
`application). Moreover, in this proceeding, we determine the patentability of
`the challenged claims based on prior art that is available before or at the time
`of the invention. Therefore, it is not necessary to recite expressly “at the
`time of the invention” in our claim construction.
`
`12
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`The Specification of the ’144 patent indicates that “both a high data
`transfer rate and host device-independent use can be achieved if a driver for
`an input/output device customary in a host device, normally present in most
`commercially available host devices, is utilized.” Ex. 1201, 3:33–37
`(emphases added). The Specification further explains that “[d]rivers for
`input/output devices customary in a host device which are found in
`practically all host devices are, for example, drivers for hard disks, for
`graphics devices or for printer devices.” Id. at 3:37–40 (emphases added).
`The Specification also indicates that SCSI interfaces are present on most
`host devices or laptops, and SCSI drivers are “normally included by the
`manufacturer of the multi-purpose interface.” Id. at 8:45–46, 10:23–33.
`In light of the Specification, we construe a “customary driver” to
`encompass “a driver normally present in a commercially available computer
`system (e.g., a hard disk driver or a SCSI driver).”
`
`“the processor adapted to be involved in a data generation process”
`Claim 1 recites “the processor is adapted to be involved in a data
`
`generation process by which the sensor generates analog data, the analog
`data is processed, and the processed analog data is stored in the data storage
`memory as at least one file of digitized analog data.” Ex. 1201, 11:66–12:3.
`Patent Owner implicitly construes this limitation to require the processor to
`be involved directly “in every aspect of the claimed data generation
`process.” Prelim. Resp. 33–35 (emphasis added).
`At this juncture, we decline to import this extraneous limitation into
`the claims. It is well-settled that if a feature is not necessary to give
`13
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`meaning to what the inventor means by a claim term, it would be
`“extraneous” and should not be read into the claim. Hoganas AB v. Dresser
`Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours &
`Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`On this record, we are not persuaded that the processor of the ADGPD
`is required to be involved directly in every aspect of the data generation
`process. In fact, claim 1 expressly requires that the sensor itself generates
`the data. Ex. 1201, 11:66–12:1 (“a data generation process by which the
`sensor generates analog data”). Patent Owner does not identify where the
`Specification discloses the processor is involved in generating the analog
`data. The Specification, at most, discloses that the processor reads the
`generated data, and transfers the data to the host, but it does not describe
`how the processor is involved directly in generating the data. Id. at 5:3–7
`(“a data transmit/receive device . . . from which data is to be read, i.e.
`acquired, and transferred to the host device”).
`In light of the foregoing, we decline to construe “the processor is
`adapted to be involved in a data generation process” to require the processor
`to be involved directly in every aspect of the process.
`
`“automatic recognition process”
`Claim 1 requires the processor to be adapted to be involved in an
`“automatic recognition process,” sending “identification information
`regarding the ADGPD” to the multi-purpose interface of the computer.
`Ex. 1201, 12:4–36. As an initial matter, we note that the word “automatic”
`normally does not exclude all possible human intervention. See WhitServe,
`14
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`LLC v. Computer Packages, Inc., 694 F.3d 10, 19 (Fed. Cir. 2012);
`CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir.
`2005).
`For the claim term “automatic recognition process,” the parties agree
`to adopt the claim construction proposed by Patent Owner in the related
`District Court proceeding—“process by which the computer recognizes the
`ADGPD upon connection with the computer without requiring any user
`intervention other than to start the process.” Pet. 10 (citing Ex. 1205);
`Prelim. Resp. 25. According to the Specification of the ’144 patent, the
`communication between the host system and the interface device “is based
`on known standard access commands as supported by all known operating
`systems (e.g., DOS®, Window®, Unix®).” Ex. 1201, 5:11–14. When the
`host system is connected to the interface device and is booted, “usual BIOS
`routines or multi-purpose interface programs issue an instruction, known by
`those skilled in the art as the INQUIRY instruction.” Id. at 5:17–23. In
`response to the INQUIRY instruction, the interface device sends a signal to
`the host system, identifying a connected hard disk drive. Id. at 5:24–30. In
`light of the Specification, we adopt the parties’ proposed construction,
`construing an “automatic recognition process” as “a process by which the
`computer recognizes the ADGPD upon connection with the computer
`without requiring any user intervention other than to start the process.”
`
`“without requiring any end user to load software”
`Claim 1 recites several negative functional limitations in apparatus
`claims. For instance, claim 1 requires the automatic recognition process to
`15
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`occur “without requiring any end user to load any software onto the
`computer at any time,” and requires the automatic file transfer process to
`occur “without requiring any user-loaded file transfer enabling software to
`be loaded on or installed in the computer at any time.” Ex. 1201, 12:4–23.
`For these limitations, the parties agree to adopt the claim construction
`proposed by Patent Owner in the related District Court proceeding—
`“without requiring the end user to install or load specific drivers or software
`for the ADGPD beyond that included in the operating system or BIOS.”
`Pet. 10 (citing Ex. 1205); Prelim. Resp. 25. However, the parties’ proposed
`claim construction may improperly exclude SCSI drivers and drivers for
`multi-purpose interfaces that are not necessarily included in the operating
`system or BIOS.
`The Specification discloses that a SCSI interface is a multi-purpose
`interface, and that a multi-purpose interface comprises “both an interface
`card and specific driver software for the interface card.” Ex. 1201, 3:51–57
`(emphasis added). Significantly, the Specification indicates that, at the time
`of the invention, multi-purpose interfaces can be, but are not necessarily,
`integrated into the BIOS system. Id. at 3:59–4:1. The Specification also
`makes clear that “communication between the host device and the
`multi-purpose interface can take place not only via drivers for input/output
`device customary in a host device which reside in the BIOS system of the
`host device but also via specific interface drivers which, in the case of SCSI
`interfaces, are known as multi-purpose interface ASPI (advanced SCSI
`programming interface) drivers.” Id. at 10:23–29 (emphases added).
`
`16
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`Interpreting the negative limitations to exclude the drivers for a
`multi-purpose interface would be unreasonable when the very same claim,
`claim 1, also requires a multi-purpose interface. Id. at 12:6–7. Claim 29,
`which depends from claim 1, also requires a SCSI driver to issue a SCSI
`INQUIRY command. Id. at 13:38–40. Therefore, the parties’ proposed
`construction would be inconsistent with the Specification and those claims.
`In view of the foregoing, we construe the claim phrases—“without
`requiring any end user to load software onto the computer at any time” and
`“without requiring any user-loaded file transfer enabling software to be
`loaded on or installed in the computer at any time”—as “without requiring
`the end user to install or load specific drivers or software for the ADGPD
`beyond that included in the operating system, BIOS, or drivers for a multi-
`purpose interface or SCSI interface,” adding “drivers for a multi-purpose
`interface or SCSI interface” to the parties’ proposed claim construction.
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`
`17
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). In that regard, Dr. Reynolds testifies that a person having
`ordinary skill in the art at the time of the invention “would have had at least
`a four-year degree from a reputable university in electrical engineering,
`computer science, or related field of study, or equivalent experience, and at
`least two [years of] experience in studying or developing computer
`interfaces or peripherals.” Ex. 1204 ¶ 39. Dr. Reynolds further testifies that
`such an artisan also would “be familiar with operating systems (e.g.,
`MS-DOS, Windows, Unix) and their associated file systems (e.g., a [file
`allocation table (“FAT”)] file system), device drivers for computer
`components and peripherals (e.g., mass storage device drivers), and
`communication interfaces (e.g., SCSI and PCMCIA interfaces).” Id. Patent
`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
`
`18
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`without a bachelor’s degree. Prelim. Resp. 24–25. 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 note that the prior art (e.g., Ex. 1204, Appendix
`A-4) in the instant proceeding reflects the level of ordinary skill in the art at
`the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001).
`
`D. Obviousness over Kawaguchi, Matsumoto, the SCSI Specification,
`and the Admitted Prior Art
`
`Petitioner asserts that claims 7, 9, 11, 12, 17–21, 23–25, 41, 50, 51,
`56–58, 66–76, 78, and 79 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kawaguchi, in combination with Matsumoto, the SCSI
`Specification, and Admitted Prior Art. Pet. 18–39. Patent Owner opposes.
`Prelim. Resp. 27–47. We have carefully considered the parties’ contentions
`and supporting evidence in this record. At this juncture, we determine that
`Petitioner has established that there is reasonable likelihood that Petitioner
`would prevail with respect to this ground of unpatentability. In our
`discussion below, we first provide a brief overview of the asserted prior art,
`and then we analyze certain claim limitations in detail as examples.
`
`Overview of Kawaguchi
`Kawaguchi discloses a SCSI device converter for connecting a
`plurality of peripheral devices to an engineering workstation. Ex. 1207, 2.
`Figure 1 of Kawaguchi is reproduced below.
`
`19
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`
`
`As shown in Figure 1 of Kawaguchi, SCSI device converter 3
`includes: SCSI interface 7 for connecting to engineering workstation 1;
`personal computer input/output bus interfaces 8, 9 for connecting to output
`device (plotter) 4 and input device (CD-ROM) 5, respectively; and
`bi-directional parallel bus interface 10 for connecting to interrupt control
`device (sequencer) 6. SCSI device converter 3 can be adapted to
`accommodate any other type of device interface, including analog-to-digital
`converter 19 to receive analog data from an analog sensor 18. Id. at 5. SCSI
`device converter 3 also implements data writing unit 11, data reading unit
`12, control data writing 13, interrupt data reading unit 14, code converting
`unit 15, control unit 16, and interrupt control unit 17, by using a
`microcomputer, ROM, and RAM. Id.
`
`20
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`The engineering workstation has a SCSI interface “as standard
`equipment for connecting with the hard disk.” Id. at 5. According to
`Kawaguchi, “the SCSI device converter is able to input and output data to a
`SCSI interface of an [engineering workstation] using the same standards as
`SCSI interface for a hard disk.” Id. at 4. The SCSI driver of the engineering
`workstation is used as a driver for connecting a hard disk, performing
`operations in accordance with the SCSI standards. Id. at 7.
`Figure 2 of Kawaguchi is reproduced below.
`
`
`As shown in Figure 2 of Kawaguchi, the processing procedure
`includes an initialization process which includes: “Inquiry” that represents
`reporting of attribute information of a target and logical units (identification
`code of a device type); “Start/Stop Unit” that represents start/stop of the
`logical unit; “Test Unit Ready” that represents testing whether or not the
`logical unit is available; and “Mode Sense” that represents reporting of
`various parameter values (data format and storage medium configuration).
`21
`
`

`
`Case IPR2016-01216
`Patent 8,966,144 B2
`
`
`
`Id. at 7. The initialization process allows the writing and reading units of the
`SCSI device converter to be activated for the host engineering workstation.
`After the initialization process, the host engineering workstation “performs
`writing to or reading from the writing units and reading units.” Id.
`Specifically, “Read Extended” represents “reading data from a designated
`block, i.e., the data reading unit (12) or the interrupt data reading unit (14).”
`Id. And “Write Extended” presents “writing data to a designated block, i.e.,
`the data writing unit (11) or the control data writing unit (13).” Id.
`
`Overview of Matsumoto
`
`Matsumoto discloses a “facsimile apparatus having a scanner for
`reading original images, a memory for stori

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket