UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CANON INC., ET AL.
`Petitioner
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`v .
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`PAPST LICENSING GMBH & CO. KG,
`Patent Owner
`
`Case IPR2016-01223
`Patent No. 8,504,746
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`PETITIONERS’ REQUEST FOR REHEARING
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`LA 13967073v9
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CANON INC., ET AL.
`Petitioner
`
`v .
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner
`
`Case IPR2016-01223
`Patent No. 8,504,746
`
`PETITIONERS’ REQUEST FOR REHEARING
`
`
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`
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`LA 13967073v9
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`Petitioners’ Request for Rehearing
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`I.
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`INTRODUCTION
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`The Board denied institution of an inter partes review trial on all of the
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`challenged claims (claims 1-25, 27-30, 33 and 35) of U.S. Patent No. 8,504,746
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`(“the ’746 Patent”). See Paper No. 10, entered December 15, 2016 (the
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`“Decision”). The Board’s sole basis for denial was that Petitioners had not shown
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`sufficiently that the prior art McNeill reference discloses or would have made
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`obvious the claimed “analog signal acquisition channel.” Id. at 10-14. The Board,
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`however, misapprehended Petitioners’ position regarding the disclosure of the
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`claimed “analog signal acquisition channel.” In particular, the Board mistakenly
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`believed that the Petition relied on the “communications channel” connecting the
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`scanner and the target computer of the McNeill prior art as the “analog signal
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`acquisition channel.” Decision at 10.
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`The Petition, however, actually relied on McNeill's disclosure of a scanner
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`itself as disclosing an “analog signal acquisition channel.” As explained in the
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`Petition and supporting expert declaration, McNeill’s scanner generates analog
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`data and transmits such data along an “analog signal acquisition channel” to an
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`analog to digital (A/D) converter. Petition at 34, 40-41; Ex. 1306, ¶¶ 98, 109. This
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`disclosure of McNeill is confirmed by the Board’s grant of institution of an inter
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`partes review of a related patent, U.S. Patent No. 8,966,144. IPR2016-01225,
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`Paper 10, at 25-26. Accordingly, pursuant to 37 C.F.R. §42.71(d), Petitioners
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`LA 13967073v9
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`1
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`Petitioners’ Request for Rehearing
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`respectfully request reconsideration that Claims 1-12, 14-15, 17-21, 24-25, 27-30,
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`33 and 35 are anticipated under 35 U.S.C. § 102(b) by McNeill (Ground 1); that
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`Claims 1-22, 24-25, 27-30, 33 and 35 are obvious under 35 U.S.C. § 103 in light of
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`McNeill in view of the knowledge of a PHOSITA (Ground 2); that Claim 23 is
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`obvious under 35 U.S.C. § 103 in light of McNeill in view of Muramatsu (Ground
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`3); and that Claims 13, 16, and 22 are obvious under 35 U.S.C. § 103 in light of
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`McNeill in view of Admitted Prior Art (Ground 4).
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`II. LEGAL STANDARD
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R.
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`§42.71(d). “When rehearing a decision on petition, the panel will review the
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`decision for an abuse of discretion.” 37 C.F.R. §42.71(c). “An abuse of discretion
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`occurs where the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is
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`based on an erroneous conclusion of law; (3) rests on clearly erroneous fact
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`findings; or (4) involves a record that contains no evidence on which the Board
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`could rationally base its decision.” Stevens v. Tamai, 366 F.3d 1325, 1329 (Fed.
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`Cir. 2004) (quoting Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wash., 334
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`F.3d 1264, 1266-67 (Fed. Cir. 2003)).
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`LA 13967073v9
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`2
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`Petitioners’ Request for Rehearing
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`III. ARGUMENT
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`
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`A.
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`The Board Misapprehended the Portion of the McNeill Reference
`to Which Petitioners Relied as Disclosing the Claimed “Analog
`Signal Acquisition Channel.”
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`The Board misapprehended Petitioners’ position to be that the claimed
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`“analog signal acquisition channel” is disclosed by the “communications channel”
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`connecting the scanner and the target computer of the McNeill reference. Decision
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`at 10. Referring to this “communications channel,” the Board determined that
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`“[n]othing in this analysis, however, explains how the communications channel is
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`an analog data acquisition channel.” Id. at 11 (emphasis in original). The Board
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`further concluded that “[n]or does Petitioner point to anything else in McNeill that
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`it is relying on for disclosure of such an analog data acquisition channel.” Id. As
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`explained below, Petitioners did not rely on the “communications channel” as the
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`claimed “analog signal acquisition channel.” Instead, Petitioners rely on the
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`channel connecting the analog sensor (CCD sensor) to the A/D converter in the
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`scanner disclosed in McNeill as the claimed “analog signal acquisition channel.”
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`Specifically, in their Petition and supporting expert declaration, Petitioners
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`explained that McNeill discloses the use of numerous types of analog peripheral
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`devices, including scanners:
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`McNeill states that his invention provides “access to a multiplicity of
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`peripherals in a SCSI environment.” Col. 3:21-22. In the figure above,
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`LA 13967073v9
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`3
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`Petitioners’ Request for Rehearing
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`an example of a peripheral is the “mag disk” (16). The ’378 patent
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`discloses attachment of multiple analog peripheral devices including
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`scanners, CD-ROMs and communications devices, both SCSI and
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`non-SCSI. Col. 3:17-21; Col. 2:14-15; Col. 8:24-29; Col. 4:44-53;
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`Col. 7:37-8:6, 19-20; Fig. 2. Therefore, McNeill discloses an analog
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`data acquisition device. Ex. 1306, ¶ 88.
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`Petition at 31-32 (emphasis added); Ex. 1306, ¶ 88.
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`Petitioners and their expert explained that McNeill’s disclosure of an analog
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`scanner as a peripheral device necessarily requires an analog signal acquisition
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`channel for transmitting the analog signal from the analog image sensing
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`mechanism (CCD sensor) in the scanner to the analog-to-digital converter in the
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`scanner:
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`McNeill discloses that the target system can emulate any type of
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`peripheral, including analog devices. Col. 1:59-64. One of these
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`devices is a scanner, which is an analog device. It is implicit and
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`inherent for a scanner to have an analog signal acquisition channel for
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`receiving a signal from analog source. A typical scanner at the priority
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`date of the ‘746 patent had a CCD and analog to digital circuitry to
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`produce a digital representation of an image. This image would then
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`be transmitted to an interface device (e.g. McNeill’s target computer)
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`LA 13967073v9
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`4
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`Petitioners’ Request for Rehearing
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`across a peripheral device communications channel, such as a SCSI bus
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`or a parallel bus conforming to the IEEE 1284 standard (Ex. 1308).
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`Accordingly, McNeill discloses an Analog Signal Acquisition Channel.
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`Ex. 1306, ¶ 98.
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`Petition at 34-35 (emphasis added); Ex. 1306, ¶ 98. In other words, McNeill’s
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`disclosure of a scanner that produces analog signals (via its CCD sensor), and
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`transmits the analog signals to the analog-to-digital converter in the scanner,
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`necessarily also discloses an analog signal acquisition channel. See also Petition at
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`40 (“[u]pon the request to perform a scan the scanner’s analog image sensing
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`mechanism will produce analog output (voltages output by the scanner’s sensing
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`device). These voltages are processed and digitized, and transmitted as an image
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`file to the target on the i/o to which the scanner is attached.”); Ex. 1306, ¶ 109.
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`This disclosure of McNeill is confirmed by the Board granting institution of
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`inter partes review of U.S. Patent No. 8,966,144 (the “144 Patent”), a patent
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`related to the ’746 Patent. IPR2016-01225, Paper 10. In that Decision, the Board
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`found that McNeill discloses a scanner that one of ordinary skill in the art would
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`recognize generates analog data. Id. at 25. The Board further recognized that this
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`analog data is stored in the scanner’s image buffer as digital data. Id. at 25-26.
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`Accordingly, the analog data generated by the scanner of McNeill necessarily must
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`be transmitted along an “analog signal acquisition channel” to an analog-to-digital
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`LA 13967073v9
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`5
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`Petitioners’ Request for Rehearing
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`converter in the scanner before it is stored in the scanner’s image buffer. The
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`Board, thus, should institute inter partes review of the ’746 Patent for reasons
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`similar to those presented for the ’144 Patent.
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`B.
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`The Board’s Misapprehension Warrants a Rehearing.
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`
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`The Board’s misapprehension regarding McNeill’s disclosure of an analog
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`signal acquisition channel constitutes an abuse of discretion warranting a
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`rehearing. 37 C.F.R. §42.71(c); see also Genband US LLC v. Metaswitch
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`Networks LTD, IPR2015-01457, Decision on Request for Rehearing (PTAB, Feb.
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`22, 2016); and Boston Scientific Corp. v. UAB Research Found., IPR2015-00918,
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`Decision on Petitioner’s Request for Rehearing (PTAB, Mar. 7, 2016) (both
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`instituting trial upon realization that the Board misapprehended Petitioner’s
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`arguments in the petition). The Board’s sole basis for denying institution of the
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`challenged claims under all of the identified grounds (see Decision at 11-14) was
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`based on an erroneous conclusion of law and clearly erroneous fact findings that
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`McNeill does not disclose an “analog signal acquisition channel.” Petitioners have
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`shown that the Board misapprehended McNeill’s disclosure regarding that term.
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`In light of the foregoing explanation and clarification, Petitioners submit that there
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`is a reasonable likelihood that Petitioners would prevail in showing that claims 1-
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`25, 27-30, 33 and 35 of U.S. Patent No. 8,504,746 are unpatentable for the reasons
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`set forth in Grounds 1-4 of the Petition.
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`LA 13967073v9
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`Petitioners’ Request for Rehearing
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`III. CONCLUSION
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`Petitioners respectfully request that the Board grant this request for a
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`rehearing and institute inter partes review of claims 1-25, 27-30, 33 and 35 of U.S.
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`Patent No. 8,504,746.
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`Dated: January 13, 2017
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` Respectfully Submitted,
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`
` /Gregory S. Cordrey/
`Gregory S. Cordrey, Esq. (Reg. No. 44,089)
`Attorney for Petitioners
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`LA 13967073v9
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`7
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`Petitioners’ Request for Rehearing
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Request for
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`Rehearing was served on January 13, 2017 via Courier and Express Mail delivery
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`directed to the attorney of record for the patent at the following address:
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`Anthony Meola, Jr.
`The Meola Firm, PLLC
`2500 Westchester Avenue, Suite 210
`Purchase, New York 10577
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`A courtesy copy is also being served to Papst’s litigation counsel at:
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`John M. Desmarais
`Jonas R. McDavit
`Richard M. Cowell
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
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`Christopher V. Goodpastor
`Andrew G. DiNovo
`Adam G. Price
`Jay D. Ellwanger
`DINOVO PRICE ELLWANGER & HARDY, LLP
`7000 N. MoPac Expressway, Suite 350
`Austin, Texas 78731
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`Date: January 13, 2017
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`By: /s/ Gregory S. Cordrey
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`LA 13967073v9
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