Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Entered: February 8, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd., and Samsung Electronics America,
`Inc. (collectively “Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–45 (“the challenged claims”) of U.S. Patent No.
`9,189,437 B2 (Ex. 1003, “the ’437 patent”). Paper 1 (“Pet.”). Patent
`Owner, Papst Licensing GmbH & Co., KG (“Patent Owner”), filed a
`Preliminary Response. Paper 6 (“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.” Upon consideration of the
`Petition and Preliminary Response, we conclude that there is a reasonable
`likelihood that Petitioner would prevail with respect to claims 1–45.
`Accordingly, we hereby institute an inter partes review as to all the
`challenged claims.
`
`A. Related Matters
`Patent Owner indicates that the ’437 patent is involved in Papst
`Licensing GmbH & Co. KG v. Canon Inc., Case No. 1:15-cv-01692
`(D.D.C.) and other proceedings. Paper 5, 2–3.
`
`B. The ’437 Patent
`The ’437 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. 1003, 1:18–22,
`1:54–57. According to the ’437 patent, using a specific driver to match very
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`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 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 ’437 patent indicates that the purported “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 ’437 patent, reproduced
`below, illustrates a block diagram of an interface device.
`
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`Patent 9,189,437 B2
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`
`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 ’437
`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.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 39, 41, and 43 are independent.
`Claims 2–38 depend ultimately from claim 1; claim 40 depends from claim
`39; claim 42 depends from claim 41; and claims 44 and 45 depend from
`claim 43. Claim 1 is 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 processor operatively interfaced with the i/o port, the program
`memory and the data storage memory;
`
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`wherein the processor is adapted to be involved in a data
`generation process by which analog data is acquired from
`each respective analog acquisition channel of a plurality of
`independent analog acquisition channels, the analog data
`from each respective channel is digitized, coupled into the
`processor, and is processed by the processor, and the
`processed and digitized 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 the
`host computer, the processor executes at least one instruction
`set stored in the program memory and thereby causes at least
`one parameter identifying the analog data generating and
`processing device, independent of analog data source, as a
`digital storage device instead of an analog data generating and
`processing device 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 and (b) without requiring any end user to interact
`with the computer to set up a file system in the ADGPD at
`any time, wherein the at least one parameter is consistent with
`the ADGPD being responsive to commands issued from a
`customary device driver;
`wherein the at least on parameter provides information to the
`computer about file transfer characteristics of the ADGPD;
`and
`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 sent
`from the i/o port to the multi-purpose interface of the
`computer, the processor executes at least one other instruction
`set stored in the program memory to thereby cause the at least
`one file of digitized analog data acquired from at least one of
`the plurality of analog acquisition channels to be transferred
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`to the computer using the customary device driver for the
`digital storage device while causing the analog data
`generating and processing device to appear to the computer
`as if it were the digital storage device without requiring any
`user-loaded file transfer enabling software to be loaded on or
`installed in the computer at any time.
`Ex. 1003, 11:57–12:42.
`
`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 4–7).
`
`
`
`
`
`Reference
`
`Aytac
`
`US 5,758,081, issued May 26, 1998
`
`Exhibit
`
`1004
`
`Aytac’s
`source code
`
`Aytac’s source code in U.S. Patent Application No.
`08/569,846
`
`Ex. 1006,
`77–527
`
`SCSI
`Specification
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC.,
`AMERICAN NATIONAL STANDARD FOR INFORMATION
`SYSTEMS – SMALL COMPUTER SYSTEM INTERFACE-2,
`ANSI X3.131-1994 (1994)
`
`Adaptec
`
`US 5,659,690, issued Aug. 19, 1997
`
`Muramatsu US 5,592,256, issued Jan. 7, 1997
`
`TI Data
`Sheet
`
`“8-Bit Analog-to-Digital Converters With Serial
`Control and 19 Inputs (Rev. B),” SLAs066B, revised
`Oct. 1996 by Texas Instruments Inc., (available at
`http://www.ti.com/lit/ds/slas066b/slas066b.pdf)
`
`TI Patent
`
`US 5,325,071, issued June 28, 1994
`
`Admitted
`Prior Art
`
`See, e.g., 1:25–3:25, 8:45–50, 10:26–33
`
`1005
`
`1009
`
`1008
`
`1007
`
`1013
`
`1003
`
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`Patent 9,189,437 B2
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`
`E. Asserted Ground of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 8):1
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1, 4–16, 18–31, 33–
`37, 41, 43, and 45
`
`2, 3, 17, 39, 40, 42,
`and 44
`
`32
`
`13 and 45
`
`40
`
`38
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Aytac, the SCSI Specification and
`Admitted Prior Art2
`
`Aytac, the SCSI Specification, and
`Adaptec
`
`Aytac, the SCSI Specification, and
`Muramatsu
`
`Aytac, the SCSI Specification, and TI
`Data Sheet
`
`Aytac, the SCSI Specification, Adaptec,
`and TI Data Sheet
`
`Aytac, the SCSI Specification, TI Data
`Sheet, and TI Patent
`
`
`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.
`2 Although the Admitted Prior Art is relied upon in the Petitioner’s analysis,
`of all challenged claims (1–45), the Admitted Prior Art is only mentioned in
`the ground relating to claim 41. Pet. 8. We treat this statement of the
`asserted grounds as harmless error and presume that Petitioner intended to
`assert that all the challenged claims are unpatentable based, in part, on the
`Admitted Prior Art.
`
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`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. 9–11; Prelim. Resp. 16–
`23. For purposes of this Decision, we find it necessary to address only the
`claim terms identified below.
`
`1. “multi-purpose interface”
`Each independent claim recites “a multi-purpose interface of the
`
`computer.” Ex. 1003, 12:9, 15:28–29, 16:10–11, 16:52–53. At this
`juncture, the parties did not proffer a construction for the term “multi-
`purpose interface.” The Specification of the ’437 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
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`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
`multi-purpose: to both support a variety of devices and to operate with a
`variety of operating system.” Ex. 1001 ¶ 50.
`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.”
`
`2. “automatic recognition process”
`Independent claim 1 requires the processor to be adapted to be
`involved in an “automatic recognition process,” sending “at least one
`parameter identifying the [ADGPD], independent of analog data source, as a
`digital storage device instead of as an [ADGPD]” to the multi-purpose
`interface of the computer. See, e.g., Ex. 1003, 12:6–23. As an initial matter,
`we note that the word “automatic” normally does not exclude all possible
`human intervention. See WhitServe, 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. 9 (citing Ex. 1014); Prelim.
`
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`Resp. 16. According to the Specification of the ’437 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. 1003, 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.”
`
`3. “without requiring any end user to load software”
`Each independent claim recites at least one negative limitation. For
`instance, claim 1 requires the automatic recognition process to 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. 1003, 12:27–42.
`For these claim limitations, the parties agree to adopt the 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.”
`Prelim. Resp. 16; Pet. 9 (citing Ex. 1014) (emphasis added). However, the
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`parties’ proposed claim construction may improperly exclude SCSI drivers
`and drivers for multi-purpose interfaces that do not necessarily reside 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. 1003, 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).
`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 21, which depends from claim 1, also requires the ADGPD to
`be responsive to a SCSI INQUIRY command. Id. at 13:64–67. Moreover,
`independent claim 41 specifically recites “the customary device driver
`present in the BIOS of the host computer” and “without requiring the user to
`load the customary device driver.” This claim explicitly states that the
`software subject to the negative limitation is, in fact, located in the BIOS.
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`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.
`
`4. “end user”
`Independent claim 1 recites “without requiring any end user to load
`any software onto the computer at any time,” and “without requiring any end
`user to interact with the computer to set up a file system in the ADGPD at
`any time.” Ex. 1003, 12:17–20 (emphasis added). Patent owner alleges that
`the claim term “end user” should not be limited to “actual end user,” but
`instead should include a “system administrator” who sets up a computer for
`another or “a technically competent individual who understood how to
`install device drivers.” Prelim. Resp. 21–23.
`As Patent Owner implies, one of ordinary skill in the art would have
`recognized that the claim term “end user” has a different meaning than the
`term “system administrator.” Id.; see also MICROSOFT COMPUTER
`DICTIONARY at 176 (3rd ed. 1997) (Ex. 3001) (defining “end user” as “[t]he
`ultimate user of a computer or computer application in its finished,
`marketable form”). Patent Owner does not identify where the Specification
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`redefines the claim term “end user” to include system administrators.
`Rather, Patent Owner alleges that the prosecution history supports its
`proposed claim construction, citing to the August 13, 2009 Amendment
`(Ex. 2002, 29, 30, 32–45). Prelim. Resp. 22–23.
`There is a “heavy presumption” that a claim term carries its ordinary
`and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002) (citation omitted). To overcome this
`presumption, the patentee must “clearly set forth” and “clearly redefine” a
`claim term away from its ordinary meaning. Bell Atlantic Network Servs.,
`Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001).
`The disavowal must be “unmistakable” and “unambiguous.” Dealertrack,
`Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012). Here, the portion of
`the prosecution history cited by Patent Owner does not even mention the
`term “system administrator,” much less an unmistakable and unambiguous
`redefining the claim term “end user” to include a “system administrator.”
`Ex. 2002, 29, 30, 32–45; Prelim. Resp. 22–23.
`Moreover, Patent Owner’s proposed construction would essentially
`redefine the claim term “end user” as “user,” rendering the word “end”
`insignificant, if not wholly superfluous. We are mindful that “claims are
`interpreted with an eye toward giving effect to all terms in the claim.”
`Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
`(denouncing claim constructions which render terms or phrases in claims
`superfluous). And independent claims 39, 41, and 43 all use the term “the
`user” instead of “end user.” This is more evidence that “end user” must
`have a different meaning than “user.” Comark Comm’ns, Inc. v. Harris
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`Corp., 156 F.3d 1182, 1187 (Fed.Cir.1998) (“There is presumed to be a
`difference in meaning and scope when different words or phrases are used in
`separate claims.”).
`For the reasons noted above, we decline to adopt Patent Owner’s
`proposed claim construction, but rather giving the claim term “end user” its
`ordinary and customary meaning—“[t]he ultimate user of a computer or
`computer application in its finished, marketable form.” Ex. 3001.
`
`B. 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. 1001 ¶ 40. 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 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
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`consistent with Patent Owner’s view, but nonetheless contends that an
`ordinarily skilled artisan would have one more year of experience, or,
`alternative, five or more years of experience without a bachelor’s degree.
`Prelim. Resp. 15–16. 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 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).
`
`C. Obviousness over Aytac, the SCSI Specification, and Admitted Prior Art
`Petitioner asserts that claims 1, 4–16, 18–31, 33–37, 41, 43, and 45
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Aytac in
`combination with the SCSI Specification and Admitted Prior Art. Pet. 21–
`69.
`
`1. Overview of Aytac
`Aytac discloses an interface device (CaTbox) that is connected to a
`host PC and a plurality of peripheral devices. Ex. 1004, Abs. Figure 1 of
`Aytac is reproduced below.
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`As illustrated in Figure 1 of Aytac, CaTbox 102 connects to host PC
`101 via SCSI bus 113 and telephone network 123 via phone lines 116, 118,
`120, 122. Id. at 8:63–9:4. CalTBox 102 is an interface device between host
`PC 101 and peripheral devices, including printer 103, scanner 104, telephone
`handset 105, receiver 107, speaker 124, and microphone 125. Id. According
`to Aytac, CalTbox runs an operating system, CaTOS, and contains a hard
`disk accessible to the PC, as a SCSI disk called CaTdisc. Id. at Abs.
`CaTbox receives faxes, voice mails, emails, and stored them on CaTdisc. Id.
`
`2. Overview of the SCSI Specification
`The SCSI Specification is a technical specification published by the
`
`American National Standard for Information Systems to set forth the SCSI
`standards. According to the SCSI Specification, the SCSI protocol “is
`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
`including one or more hosts.” Ex. 1005, Abs. The primary objective of the
`SCSI interface is “to provide host computers with device independence
`within a class of devices.” Id. at 6. The SCSI-2 “standard defines an
`input/output bus for interconnecting computers and peripheral devices.” Id.
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`at 1. “It includes the necessary specification of the mechanical, electrical,
`and functional characteristics of the interface to allow interoperability of
`conforming devices.” Id. “SCSI-2 includes command sets for magnetic and
`optical disks, tapes, printers, processors, CD-ROMs, scanners, medium
`changers, and communications devices.” Id. at Abs. “The command set
`definitions allow a sophisticated operating system to obtain all required
`initialization information from the attached SCSI-2 devices.” Id. at 6.
`
`3. Overview of the Admitted Prior Art
`According to the ’437 patent, drivers for hard disks were known to be
`
`customary drivers “in practically all host devices.” Ex. 1003, 3:37–46,
`4:20–22. The ’437 patent indicates that SCSI interfaces and SCSI drivers
`were known in the art at the time of the invention. Id. at 8:45–50, 10:26–29.
`SCSI interfaces were present on most host devices or laptops, and SCSI
`drivers were “normally included by the manufacturer of the multi-purpose
`interface.” Id. at 8:45–46, 10:27–33. Moreover, certain standard access
`commands, including the SCSI INQUIRY command, were “supported by all
`known operating systems (e.g., DOS®, Windows®, Unix®).” Id. at 5:11–
`14, 5:21–23, 5:37–47. The ’437 patent further discloses that it was known to
`those skilled in the art that a virtual boot sequence includes “the drive type,
`the starting position and the length of the file allocation table (FAT), the
`number of sectors.” Id. at 5:43–47.
`
`4. Aytac’s Source Code
`Petitioner asserts that Aytac’s source code (Ex. 1006, 77–527) was
`filed on paper, as part of the original disclosure of the application that issued
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`as Aytac’s patent. Pet. 1. Petitioner alleges that Aytac’s source code
`qualifies as prior art. Id.
`In response, Patent Owner contends that Aytac’s source code is not
`prior art under § 102(e) as to the challenged claims because it was not
`published with Aytac’s patent and Aytac’s patent does not contain a
`reference to the source code. Prelim. Resp. 36–41.
`Upon review of the evidence before us, we agree with Patent Owner’s
`contention. Petitioner proffers no evidence to indicate that Aytac’s patent
`was printed with the source code. See Pet. 1. Petitioner does not identify
`any reference in Aytac’s patent itself to the source. Id. Nor does Petitioner
`proffer any evidence to show that a certificate of correction has ever been
`issued to have the source code properly added to Aytac’s patent. Id.
`Based on this record, we are persuaded that Aytac’s source code is not
`considered part of the patent disclosure. See Southwest Software, Inc. v.
`Harlequin, Inc., 226 F.3d 1280, 1291 (Fed. Cir. 2000) (the source code that
`was filed with the application could not be considered as part of the patent
`disclosure because the patent was not printed with the source code and the
`certificate of correction adding the source code to the patent did not issue
`prior to the filing of the of the lawsuit). Therefore, we determine that
`Petitioner has not established sufficiently that Aytac’s source code is prior
`art under § 102(e) as to the challenged claims.
`We also agree with Patent Owner that Aytac’s source code is not prior
`art under § 102(a) or (b) as to the claims at issue. As Patent Owner explains
`(Prelim. Resp. 39), even if the source code were a printed publication as of
`May 26, 1998, the issued date of Aytac’s patent, when the file record of
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`Aytac’s patent became publicly available, Aytac’s source code still would
`not be prior art under § 102(a) or (b) as to the ’437 patent, which appears to
`have an effective filing date of March 3, 1998. Id. On its face, the ’437
`patent claims under 35 U.S.C. §§ 120 and 365(c), through a series of
`continuation and division applications, the benefit of the filing date (March
`3, 1998) of International Application No. PCT/EP98/01187 that entered the
`national stage (U.S. Patent Application No. 09/331, 002) after compliance
`with 35 U.S.C. 371. Ex. 1003, at [60], [30]; Ex. 3002, at [21], [22], [86].
`On this record, we determine that Petitioner has not established sufficiently
`that Aytac’s source code is available as prior art under § 102(a) or (b) as to
`the challenged claims.
`We further observe that, although Aytac’s source code does not
`qualify as prior art, Aytac’s source code may be relied upon to show the
`level of ordinary skill in the art at or around the time the invention was
`made. Thomas and Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1581
`(Fed. Cir. 1983) (“[references] though not technically prior art, were, in
`effect, properly used as indicators of the level of the ordinary skill in the art
`to which the invention pertained”). As discussed above, Aytac’s source
`code was publicly available as of May 26, 1998 (less than three months after
`the effective filing date of the challenged claims), when Aytac’s patent was
`issued and the file record of Aytac’s patent that included the source code
`was available to the public. See In re Wyer, 655 F.2d 211 (CCPA 1981)
`(When the specification is not issued in printed form but is announced in an
`official journal and anyone can inspect or obtain copies, it is sufficiently
`accessible to the public to constitute a “printed publication”). Moreover,
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`Aytac’s source code is an implementation of the invention that is described
`in the specification of Aytac’s patent. See generally Ex. 1004. Therefore,
`Aytac’s source code may be relied upon to show the level of ordinary skill in
`the art at or around the time the invention was made.
`
`5. Obviousness Analysis
`According to Petitioner, Aytac discloses the recited limitations of 1,
`
`4–16, 18–31, 33–37, 41, 43, and 45, but relies on the SCSI Specification and
`the Admitted Prior Art for the automatic recognition process of claim 1 (Pet.
`22), the “wherein the at least one parameter identifies the [ADGPD] as a
`hard disk” limitation (Pet. 48), and several other limitations included in the
`dependent claims challenged under this combination of prior art (see,
`e.g.,Pet. 49, 51, 57, 67). Petitioner proffers at least one reasonable
`motivation to combine the teachings as asserted. Pet. 21–22. In particular,
`Petitioner asserts that Aytac “specifically directs those skilled in the art to
`the SCSI Specification.” Id.
`
`a. An analog data generating and processing device
`Claim 1 requires an “analog data generating and processing device,”
`which includes a processor, an input/output port, a program memory, and a
`data storage memory. Ex. 1003, 11:57–63. Claim 41 similarly requires an
`“analog data generating and processing device,” which includes a digital
`processor, a program memory, a data storage memory, and an analog to
`digital converter. Id. at 16:4–21. Claim 43 is a method claim that recites
`“an analog data device including a digital processor, a program memory and
`a data storage memory.” Id. at 16:50–53.
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`Petitioner asserts that Aytac, in combination with the SCSI
`Specification and the Admitted Prior Art, renders obvious this claim
`limitation in claims 1, 41, and 43. Pet. 23–24, 32–35, 40, 41, 44, 68–69. In
`particular, Petitioner takes the position that Aytac’s CaTbox and its
`peripheral devices jointly form an “analog data generating and processing
`device.” Id. at 11–15. Petitioner explains that the CaTbox receives inputs
`transmitted from various analog peripheral devices, including microphone,
`telephone receiver, telephone handset, scanner, and telephone network
`connect