`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 IPR2016-01224
`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 IPR2016-01224
`Patent 8,504,746 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, listed above, filed a Petition requesting inter partes review
`
`of claims 1, 19–21, 24, and 26–28 (“the challenged claims”) of U.S. Patent
`
`No. 8,504,746 B2 (Ex. 1101, “the ’746 patent”). Paper 1 (“Pet.”). Patent
`
`Owner, Papst Licensing GmbH & Co., KG, 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. 9–12; Paper 5, 1–3. This patent has also been challenged
`
`in several other petitions for inter partes review. Pet. 12; Paper 5, 1.
`
`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. 1101, 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 IPR2016-01224
`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 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 ’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 3:33–37. 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 IPR2016-01224
`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. Prosecution History
`
`The ’746 patent issued from U.S. Application No. 12/891,443 (“the
`
`’443 Application”). Ex. 1101, [21]. The ’443 Application itself is a
`
`continuation of US. Application No. 11/928,283, which in turn is a
`
`continuation of U.S. Application No. 11/467, 073 (“the ’073 Application”),
`
`filed on August 24, 2006. The ’443 Application was filed September 27,
`
`2010, while the ’073 application was still being prosecuted. Ex. 1101, [22];
`
`Ex. 2006. Both applications were examined by the same Examiner. Ex.
`
`1101; Ex. 2006.
`
`On August 24, 2006, the same day the ’073 Application was filed and
`
`several years before the ’443 patent was filed, the applicant filed a
`
`preliminary amendment with remarks explicitly distinguishing the claims
`
`over Murata.1 Ex. 2008. Specifically, the applicant explained that “[a]ll of
`
`the claims presented in this preliminary amendment generally require that
`
`the ADGPD send a response signal that allows a PC to automatically and
`
`
`
`1 US 5,508,821 (Ex. 1102).
`
`4
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`without user intervention recognize that it can communicate with the
`
`ADGPD as if it were a commercially available mass storage device.” Id. at
`
`12. The applicant added:
`
`As one example [Murata] does not teach or suggest, for example,
`the above-noted “automatic recognition” feature because, for
`example, the system disclosed therein is UNIX based. As readily
`apparent to one of ordinary skill in the relevant art, such UNIX
`based systems affirmatively require user intervention in order to
`operate and use the scanner disclosed in [Murata].
`
`Id. at 13.
`
`Murata was discussed at least two subsequent times in supplemental
`
`preliminary amendments dated July 17, 2007, and December 18, 2007—
`
`both before the filing of the ’443 Application. Ex. 2009, 10 (“The scanner
`
`related references (e.g., [Murata]) also require user intervention of some sort
`
`to allow scanned images to be transferred over to a personal computer.”);
`
`Ex. 2010, 8–9 (“Murata does not, for example, teach or suggest structure
`
`that corresponds to the above-described claim feature. In direct contrast to
`
`the claimed subject matter, all devices disclosed in the ’821 patent
`
`affirmatively require user intervention in order to cause the PC to understand
`
`how to communicate with the scanner disclosed in the patent.”). The
`
`remarks accompanying the December 18, 2007, amendment detailed the
`
`differences between Murata and the presented claims as follows:
`
`Column 4, lines 20–35 of [Murata] state that an “mkfs” or
`“newfs” UNIX command must be executed before the scanner
`can be recognized. These commands are operating system
`commands, and have to be entered by the user or be embedded
`in an application program running on a workstation to which the
`[Murata] scanner is connected.
` The commands require
`
`5
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`
`parameters to be given, including at least mkfs i-node
`device_name. This means that, for example, the user has to enter
`the node at which the file system is to be made and the device
`name (associated with the device file and driver in the system).
`These parameter values are not standard and may differ
`according
`to
`the actual hardware configuration of
`the
`workstation. If these commands are embedded in an application
`program, the application program can only be successfully run
`on different workstations if there is an appropriate means for
`entering the parameters by the user.
`As readily apparent to one of ordinary skill in the relevant
`the UNIX operating system of [Murata] does not
`art,
`automatically recognize devices, nor does it perform data
`transmission with a device even though the device may emulate
`the UNIX file system. Detailed operator instructions or an
`application program containing the embedded instructions is
`required to administer and coordinate the data exchange
`described in [Murata]. For this reason alone, for example, the
`new claims should be found to be patentable over [Murata].
`
`Ex. 2010, 9.
`
`The ’073 Application issued as the ’144 patent on February 24, 2015.
`
`The ’443 Application issued as the ’746 patent on August 6, 2013.
`
`D. Illustrative Claim
`
`Of the challenged claims, claim 1 is independent. Claims 19–21, 24,
`
`and 26–28 depend directly or indirectly from claim 1. 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
`
`6
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`
`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;
`
`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 instruction 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 multi-purpose 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
`
`7
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`
`addition to the operating system.
`
`Ex. 1101, 11:48–12:26.
`
`E. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the prior art references listed below.
`
`Murata
`
`
`
`US 5,508,821
`
`Apr. 16, 1996
`
`(Ex. 1102)
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., AMERICAN
`NATIONAL STANDARD FOR INFORMATION SYSTEMS – SMALL COMPUTER
`SYSTEM INTERFACE-2, ANSI X3.131-1994 (1994) (Ex. 1105, “the SCSI
`Specification”).
`
`MS-DOS® ENCYCLOPEDIA (Ray Duncan ed., 1988) (Ex. 1108, “the
`DOS Reference”).
`
`FRANK G. FIAMINGO, UNIX® SYSTEM ADMINISTRATION (1996) (EX.
`1107, “the UNIX-A Reference).
`
`FRISCH, ESSENTIAL SYSTEM ADMINISTRATION (2d ed. 1995) (EX. 1110,
`“the UNIX-B Reference).
`
`MCKUSICK, ET. AL, THE DESIGN AND IMPLEMENTATION OF THE 4.4BSD
`OPERATING SYSTEM (1996) (EX. 1111, “the UNIX-C Reference).
`
`Admitted Prior Art (see, e.g., Ex. 1101, 5:8–58).
`
`8
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`
`F. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 6)2:
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1, 19, 21, 24, and 26–28
`
`§ 102(b) Murata
`
`1, 19–21, 24, and 26–28
`
`§ 103(a)
`
`Murata, the SCSI Specification,
`the DOS Reference, the UNIX-A
`Reference, the UNIX-B
`Reference, the UNIX-C
`Reference, and the Admitted
`Prior Art
`
`II. ANALYSIS
`
`Petitioner asserts that claims 1, 19, 21, 24, and 26–28 are unpatentable
`
`under 35 U.S.C. § 102(b) as anticipated by Murata. Pet. 6, 17–43. In
`
`addition, Petitioner addresses those same claims, along with claim 20 stating
`
`“to the extent one or more limitations of the claims are deemed not
`
`anticipated by Murata, the relevant disclosures—relating to basic
`
`fundamentals of a SCI interface and/or a UNIX or MS-DOS file system—
`
`would have been obvious to one of skill in the art.” Id. at 15.
`
`Patent Owner urges that we reject this Petition under 35 U.S.C.
`
`§ 325(d) because Murata was explicitly addressed during the prosecution
`
`
`
`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.
`
`9
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`history of the ’144 patent, an ancestor to the ’746 patent. Prelim. Resp. 18–
`
`22.
`
`For the reasons discussed below, we agree with Patent Owner and
`
`decline to institute inter partes review on any of the grounds raised in this
`
`Petition.
`
`A. Overview of Murata
`
`Murata discloses an image scanner used with an external host
`
`computer. Ex. 1102, Abs. According to Murata, the image scanner includes
`
`an optical system and CCD image sensor for reading an image of a
`
`document, a SCSI interface for connecting the image scanner to the external
`
`host, a CPU, a nonvolatile memory, and a “SCSI controller etc. for
`
`emulating a file system contained in the external host computer.” Id. An
`
`object of Murata is “to provide an improved image handling apparatus . . .
`
`which requires no preparation of any new device driver.” Id. at 1:58–61.
`
`Murata explains that “[b]ecause an operating system of a computer
`
`constructs a file system in a hard disc, there invariably exists a device driver
`
`for the hard disc.” Id. at 2:5–7. Moreover, because Murata’s image scanner
`
`includes a file system emulation means, control of the image scanner or
`
`transfer of image data “can be carried out using the device driver for existing
`
`hard discs” meaning “it is not necessary to prepare the device driver for each
`
`type of computer if the file system of the computer is the same.” Id. at 2:12–
`
`21. In short, the image scanner “can be connected to any one of various
`
`types of computers having the same file system, e.g. any one of all
`
`10
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`computers having software called the ‘UNIX’ as an operating system.” Id.
`
`at 18–26.
`
`B. Arguments
`
`Petitioner describes the prosecution history of the ’746 patent, but
`
`does not specifically address the discussion of Murata in the prosecution
`
`history of the ’144 patent in that section. Pet. 1–4.
`
`Patent Owner responds that “Petitioners fail to raise any new issue
`
`with Murata that was not previously considered, and discarded, by the
`
`USPTO [during examination of the ’073 application.]” Prelim. Resp. 22.
`
`C. 35 U.S.C. § 325(d)
`
`The Board may reject a Petition requesting institution of inter partes
`
`review because “the same or substantially the same prior art or arguments
`
`previously were presented to the Office.” 35 U.S.C. § 325(d); 37 C.F.R.
`
`§ 42.3(a). Under the facts and circumstances presented here, we decline to
`
`institute an inter partes review based on either ground asserted in the
`
`Petition, both of which rely primarily on Murata. We find that substantially
`
`the same argument regarding patentability of the claimed subject matter over
`
`Murata was previously presented to the Office. Specifically, Petitioner
`
`argues that Murata discloses the negative limitations of claim 1 (“whereby
`
`there is no requirement for any user-loaded file transfer . . .”). Pet. 31–34.
`
`This issue was explicitly addressed several times in responses to the
`
`Examiner during prosecution. See Ex. 2009, 10; Ex. 2010, 12. Nothing
`
`pointed to by Petitioner supports reconsidering these arguments, which were
`
`11
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`presented directly to the Examiner during prosecution.
`
`Further, Petitioner does not argue that the secondary references added
`
`in its alternative ground—the SCSI Specification, the DOS reference, the
`
`UNIX-A, B, and C references, and the Admitted Prior Art—add anything
`
`new to that which was before the Examiner. On this record, we are not
`
`persuaded that these references add to the information considered by the
`
`Examiner during prosecution.
`
`We decline to revisit an issue that has already been before the Office
`
`in prosecution history. Thus, we do not institute review based on
`
`Petitioner’s asserted grounds of anticipation by Murata or obviousness over
`
`Murata in combination with other cited references.
`
`It is ordered that the Petition is denied as to all challenged claims, and
`
`III. ORDER
`
`no trial is instituted.
`
`
`
`
`
`
`
`12
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`For PETITIONER:
`
`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
`PapstPTABPetitioners@Jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`
`Dion M. Bregman
`Ahren C. Hsu-Hoffman
`Chris Mizumoto
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`chris.mizumoto@morganlewis.com
`
`T. Vann Pearce, Jr.
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`
`Gregory S. Cordrey
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`gcordrey@jmbm.com
`
`Brian C. Rupp
`Carrie A. Beyer
`Nikola Colic
`DRINKER BIDDLE & REATH LLP
`
`13
`
`
`
`Case IPR2016-01224
`Patent 8,504,746 B2
`
`Brian.Rupp@dbr.com
`Carrie.Beyer@dbr.com
`Nick.Colic@dbr.com
`
`
`
`For PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`Anthony L. Meola, Jr.
`THE MEOLA FIRM, PLLC
`info@themeolafirm.com
`
`
`
`14