throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 10
`
`
`
` 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 IPR2016-01223
`Patent 8,504,746 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, listed above, filed a Petition requesting an inter partes
`
`review of claims 1–25, 27–30, 33, and 35 (“the challenged claims”) of
`
`U.S. Patent No. 8,504,746 B2 (Ex. 1301, “the ’746 patent”). Paper 1
`
`(“Pet.”). Patent Owner, Papst Licensing GmbH & Co., KG (“Patent
`
`Owner”), filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`
`For the reasons that follow, we do not institute an inter partes review
`
`as to any of 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. 6–8; Paper 5, 1–3. This patent has also been challenged in
`
`several other petitions for inter partes review. Pet. 8; Paper 5, 4–5.
`
`B. The ’746 Patent
`
`The ’746 patent describes an interface device for communication
`
`between a computer host device and a data transmit/receive device (e.g., a
`
`multi-meter, transmitting measured data to a computer). Ex. 1301, 1:20–22,
`
`1:56–59. According to the ’746 patent, using a specific driver to match very
`
`closely to an individual host system would achieve high data transfer rates
`
`across the interface, but the specific driver cannot be used with other host
`
`systems. Id. at 2:6–21. Several solutions to this problem were known in the
`
`art. Id. at 2:22–3:24. For example, IOtech introduced an interface device
`
`for laptops, using a plug-in card for converting the personal computer
`
`memory card association (PCMCIA) interface into a known standard
`2
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`interface (IEEE 1284). Id. at 2:25–30. The plug-in card provided a printer
`
`interface for enhancing data transfer rates. Id. at 2:30–34. In another
`
`example, a floppy disk drive interface was used for connecting a host device
`
`to a peripheral device. Id. at 3:10–14. The interface appeared as floppy disk
`
`drive to the host, allowing a floppy disk drive and another peripheral device
`
`to be connected to the host device. Id. at 3:17–19.
`
`The ’746 patent indicates that the “invention is based on the finding
`
`that both a high data transfer rate and host device-independent use can be
`
`achieved if a driver for an input/output device customary in a host device” is
`
`utilized. Id. at 3:32–37. Figure 1 of the ’746 patent, reproduced below,
`
`illustrates a block diagram of an interface device.
`
`
`
`As shown in Figure 1 above, interface device 10 connects to a host
`
`device via host line 11, and to a data transmit/receive device via output line
`
`16. Id. at 4:59–5:10. Interface device 10 includes first connecting device
`
`12, second connecting device 15, digital signal processor 13, and memory
`
`means 14. Id. In a preferred embodiment, the interface device is attached to
`
`a host device via a multi-purpose interface—e.g., a small computer systems
`
`3
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`interface (SCSI) interface—which includes both an interface card and
`
`specific driver software for the interface card. Id. at 3:49–55, 8:37–41.
`
`According to the ’746 patent, SCSI interfaces were known to be present on
`
`most host devices or laptops. Id. at 8:37–41. By using a standard interface
`
`of a host device and by simulating an input/output device to the host device,
`
`the interface device “is automatically supported by all known host systems
`
`without any additional sophisticated driver software.” Id. at 11:29–35.
`
`C. Illustrative Claim
`
`Of the challenged claims, claim 1 is independent. Claims 2–25 and
`
`27–30 depend directly or indirectly from claim 1; claim 33 depends directly
`
`from independent claim 32 (not challenged); and claim 35 depends directly
`
`from independent claim 34 (not challenged). 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:
`
`a) a program memory;
`
`b) an analog signal acquisition channel for receiving a signal
`from an analog source;
`
`c) a processor operatively interfaced with the multipurpose
`interface of the computer, the program memory, and a data
`storage memory when the analog data acquisition device is
`operational;
`
`4
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`
`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. 1301, 11:48–12:26.
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the prior art references listed below.
`
`McNeill
`
`
`
`US 5,499,378
`
`Mar. 12, 1996
`
`(Ex. 1303)
`
`Muramatsu
`
`US 5,592,256
`
`Jan. 7, 1997
`
`(Ex. 1312)
`
`5
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`
`Analogic, DASM-AD14, 14-Bits, 2 MHz A-to-D SCSI Substation for
`the Most Demanding Data Acquisition Applications (1992) (Ex. 1304,
`“DASM-AD14”).
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., AMERICAN
`NATIONAL STANDARD FOR INFORMATION SYSTEMS – SMALL COMPUTER
`SYSTEM INTERFACE-2, ANSI X3.131-1994 (1994) (Ex. 1305, “the SCSI
`Specification”).
`
`Admitted Prior Art (see, e.g., 1:28–59).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 16)1:
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1–12, 14, 15, 17–21, 24,
`25, 27–30, 33, and 35
`
`§ 102(b) McNeill
`
`1–22, 24, 25, 27–30, 33,
`and 35
`
`§ 103(a) McNeill
`
`23
`
`§ 103(a) McNeill and Muramatsu
`
`13, 16, and 22
`
`§ 103(a) McNeill and the Admitted Prior Art
`
`
`
`1 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.
`
`6
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`
`II. ANALYSIS
`
`A. 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 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. 1306 ¶ 40. Dr. Reynolds further testifies that such an artisan also would
`
`have been “familiar with operating systems (e.g., MS-DOS, Windows, Unix)
`
`and their associated file systems (e.g., a [file allocation table (“FAT”)] file
`
`system), device drivers for computer components and peripherals (e.g., mass
`
`storage device drivers), and communication interfaces (e.g., SCSI and
`
`PCMCIA interfaces).” Id.
`
`Patent Owner confirms that Petitioner’s statements regarding the level
`
`of ordinary skill in the art are mostly consistent with Patent Owner’s view,
`
`but nonetheless contends that an ordinarily skilled artisan would have at
`
`least three years of experience, or, alternatively, five or more years of
`
`experience without a bachelor’s degree. Prelim. Resp. 19. We do not
`
`observe any meaningful differences between the parties’ definition of a
`
`7
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`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 (e.g., Ex. 1305) 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).
`
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable interpretation standard, claim terms generally are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. See In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`We note that only those claim terms and elements which are in
`
`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999). The parties propose constructions for several claim
`
`terms. Pet. 17–19; Prelim. Resp. 16–17, 20–28. For purposes of this
`
`Decision, however, we do not find it necessary to address explicitly any
`
`claim term.
`
`C. Obviousness over McNeill
`
`Petitioner asserts that claims 1–22, 24, 25, 27–30, 33, and 35 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over McNeill and claims
`
`8
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`13, 16, and 22 are obvious over McNeill combined with the Admitted Prior
`
`Art. Pet. 22–68.
`
`Overview of McNeill
`
`McNeill discloses a target computer for providing an initiator
`
`computer access to multiple peripheral devices—e.g., memory disks,
`
`printers, scanners, and communication devices. Ex. 1303, Abs. 1:9–2:51,
`
`3:17–46. According to McNeill, the purported invention is to provide “a
`
`practical and economic system for achieving access to a multiplicity of
`
`peripherals in a SCSI environment.” Id. at 3:17–22.
`
`Figure 2 of McNeill is reproduced below.
`
`
`
`As shown in Figure 2 of McNeill, initiator computer 10 is connected
`
`by SCSI I/O bus 12 to target computer 14. Id. at 4:44–53. Each computer
`
`includes SCSI subsystems 18, 20, which are SCSI adapter cards connected
`
`to SCSI I/O bus 12. Id. Initiator computer 10 can access and read the files
`
`on magnetic hard disk 16 of target computer 14. Id. at 4:44–53, 5:32–58.
`
`9
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`
`The initiator computer sends standard SCSI I/O device driver
`
`commands, and the target computer responds to standard SCSI commands.
`
`Id. at 3:22–24, Figs 3–4. “The user has the benefit of not needing to learn
`
`and remember additional commands to access devices on the other
`
`computers”, in that “standard device drivers are used as if the peripheral
`
`devices were integral with the basic system.” Id. at 3:35–38.
`
`Claim 1
`
`Patent Owner argues that “Petitioners fail to identify where McNeill
`
`discloses an analog signal acquisition channel” (Prelim. Resp. 36) and does
`
`not show that “this missing element must inherently, i.e., necessarily, be
`
`present based on McNeill’s disclosure” (id. at 39). We agree with Patent
`
`Owner and determine that Petitioner has not shown sufficiently that McNeill
`
`discloses or would have made obvious an “analog signal acquisition
`
`channel” as required by claim 1. Id. at 40.
`
`In its analysis of the data acquisition channels, Petitioner states only
`
`that “McNeill discloses that the target system can emulate any type of
`
`peripheral” one type of which is a scanner. Pet. 35. According to Petitioner
`
`“[i]t is implicit and inherent for a scanner to have an analog signal
`
`acquisition channel for receiving a signal from analog source.” Id.
`
`Petitioner goes on to assert that a typical scanner, as of the priority date,
`
`would produce a digital representation of an image and transmit that image
`
`“to an interface device (e.g. McNeill’s target computer) across a peripheral
`
`device communications channel, such as a SCSI bus or a parallel bus
`
`conforming to the IEEE 1284 standard.” Id. (citing Ex. 1306 ¶ 98). Nothing
`
`10
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`in this analysis, however, explains how the communications channel is an
`
`analog data acquisition channel. Nor does Petitioner point to anything else
`
`in McNeill that it is relying on for disclosure of such an analog data
`
`acquisition channel. Id.
`
` Finally, Petitioner does not sufficiently explain why a person of
`
`ordinary skill would find the addition of an analog data acquisition channel
`
`obvious in light of the teachings of McNeill. See Pet. 35. Petitioner’s only
`
`discussion of this issue confusingly states that “[a]dding an analog sensor to
`
`the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA
`
`would find it obvious to do so.” Id. The ’746 patent, however, does not use
`
`the term “sensor” in the claims. Ex. 1301. And Petitioner does not explain
`
`how an “analog sensor” relates to an “analog signal acquisition channel.”
`
`Id. Even assuming that a person of ordinary skill would find obvious adding
`
`an “analog sensor” based on McNeill’s disclosure, it is unclear why or how
`
`that would result in “an analog signal acquisition channel,” and it is
`
`Petitioner’s burden to provide sufficiently articulated reasoning for the
`
`alleged modification of McNeill resulting in an “analog signal acquisition
`
`channel.”
`
`For these reasons, we determine that Petitioner has not established
`
`sufficiently, for purposes of this Decision, that claim 1 would have been
`
`unpatentable as obvious over McNeill.
`
`Claims 2–25 and 27–30
`
`Petitioner challenges claims 2–25 and 27–30 as obvious over McNeill,
`
`claim 23 is obvious over McNeill and Muramatsu, and claims 13, 16, and 22
`
`11
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`as obvious over McNeill combined with the Admitted Prior Art. All these
`
`claims depend either directly or indirectly from claim 1. Petitioner relies on
`
`its analysis of claim 1 for the analog signal acquisition channel limitation of
`
`these dependent claims. Pet. 48–64. For example, for claim 23, Petitioner
`
`relies on Muramatsu solely for the disclosure of a fast Fourier transform.
`
`Id.at 59–61. When discussing claims 13, 16, and 22, Petitioner relies on the
`
`sections of the ’746 patent that discuss the example of a multimeter and
`
`medical device for the limitations recited in these claims. Id. at 66–68
`
`(citing Ex. 1301, 1:28–30, 56–59). For the same reasons discussed above
`
`for claim 1, we determine that Petitioner has not established sufficiently, for
`
`purposes of this Decision, that claims 2–25 and 27–30 would have been
`
`unpatentable as obvious over McNeill.
`
`Claims 33 and 35
`
`Petitioner challenges claims 33 and 35 as obvious over McNeill.
`
`Claim 33 depends from claim 32 and recites “wherein the processor further
`
`comprises a plurality of independent analog data acquisition channels for
`
`simultaneously acquiring analog data in parallel from a plurality of analog
`
`sources.” Ex. 1301, 15:10–14. Claim 35 depends from claim 34 and recites
`
`“further comprising simultaneously acquiring the analog data from each
`
`respective analog channel of a plurality of respective independent
`
`acquisition channels under control of the processor and acquiring analog
`
`data from the analog source time independent of transferring the acquired
`
`analog data to the host device.” Ex. 1301, 16:18–23.
`
`12
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`
`As discussed above, we determine that Petitioner has not established
`
`sufficiently, for purposes of this Decision, that McNeill renders obvious the
`
`“analog signal acquisition channel” limitation, as required by claim 1.
`
`Although claims 33 and 35 depend from independent claims (32 and 34) that
`
`do not include this limitation, both claims 33 and 35 require a “plurality of
`
`independent analog data acquisition channels.”2 Petitioner’s discussion of
`
`claims 33 and 35 focuses on the “plurality” portion of the limitation, but
`
`relies on its insufficient analysis of claim 1’s “analog data acquisition
`
`channel” for the remainder of the limitation. See Pet. 64–66 (explaining that
`
`“McNeill’s target computer could have multiple peripheral devices attached
`
`to it currently,” thus “the initiator is receiving digitized analog data from two
`
`sources at the same time.”). Nowhere does Petitioner identify what, exactly,
`
`in McNeill it is relying on to show the “analog data acquisition channel.” Id.
`
`We, therefore, determine, for the same reasons discussed in relation to
`
`“analog signal acquisition channel” limitation of claim 1, that Petitioner has
`
`not shown sufficiently that McNeill discloses, or would have made obvious
`
`to a person of ordinary skill, a “plurality of independent analog data
`
`acquisition channels.”
`
`For these reasons, we determine that Petitioner has not established
`
`sufficiently for purposes of this Decision that claims 33 and 35 would have
`
`been unpatentable as obvious over McNeill.
`
`
`
`2 Claim 35 recites acquiring analog data from “each respective analog
`channel of a plurality of respective independent acquisition channels.” Ex.
`1301, 16:18–23.
`
`13
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`
`D. Other Asserted Ground of Unpatentability
`
`Petitioner additionally asserts that the challenged claims are
`
`unpatentable under § 102(b) as anticipated by McNeill. For the same
`
`reasons discussed above in relation to the obviousness challenges to claims
`
`1–25, 27–30, and 33, we are not persuaded that Petitioner has shown a
`
`reasonable likelihood of prevailing on anticipation for any of the challenged
`
`claims.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition does not establish a reasonable likelihood that
`
`Petitioner would prevail in challenging claims 1–25, 27–30, 33, and 35 of
`
`the ’746 patent. We, therefore, decline to institute inter partes review on
`
`any of the asserted grounds as to any of the challenged claims. 37 C.F.R.
`
`§ 42.108.
`
`It is ordered that the Petition is denied as to all challenged claims, and
`
`IV. ORDER
`
`no trial is instituted.
`
`
`
`
`
`14
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`For PETITIONER:
`
`Gregory Cordrey
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`gcordrey@jmbm.com
`
`T. Vann Pearce, Jr.
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`
`David M. Maiorana
`F. Drexel Feeling
`Matthew W. Johnson
`David L. Witcoff
`Marc S. Blackman
`JONES DAY
`dmaiorana@jonesday.com
`f.dfeeling@jonesday.com
`mwjohnson@jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`
`Dion Bregman
`MORGAN, LEWIS & BOCKIUS LLP
`Dion.bregman@morganlewis.com
`
`
`
`For PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`
`15
`
`

`

`Case IPR2016-01223
`Patent 8,504,746 B2
`
`phenkelmann@fitcheven.com
`
`Anthony Meola, Jr.
`The Meola Firm, PLLC
`info@themeolafirm.com
`
`
`16
`
`

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