UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND LG ELECTRONICS,
`INC.
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`
`Case IPR2016-017331
`Patent 9,189,437
`____________________
`
`PAPST LICENSING GMBH & CO. KG’S
`PATENT OWNER RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
` 1
`
` IPR2017-01038 has been joined with this proceeding.
`
`
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`TABLE OF CONTENTS
`
`Page
`
`B. 
`
`Introduction .......................................................................................... 1 
`I. 
`II.  Overview Of The ’437 Patent .............................................................. 8 
`III.  Overview Of The Applied Art ............................................................ 12 
`A.  Aytac’s CaTbox Requires User-Loaded Specialized
`Software To Function Properly ................................................ 12 
`The Petition Fails To Show That The TI Data Sheet
`Is A “Printed Publication” ........................................................ 17 
`C.  American National Standard For Information
`Systems – Small Computer System Interface-2
`(“SCSI Specification”) ............................................................. 19 
`D.  Admitted Prior Art ................................................................... 20 
`E. 
`U.S. Patent No. 5,659,690 To Stuber (“Adaptec”) .................. 21 
`IV.  Claim Construction ............................................................................. 21 
`A. 
`Level Of Ordinary Skill In The Art ......................................... 23 
`B. 
`Response To The Board’s Claim Construction ....................... 24 
`1. 
`“Multi-purpose Interface” .............................................. 24 
`2. 
`“Automatic Recognition Process” ................................. 25 
`3. 
`“Without Requiring Any End User To Load
`Software” ....................................................................... 25 
`“End User” ..................................................................... 26 
`4. 
`Petitioners Did Not Meet Their Burden To Show The
`Challenged Claims Are Unpatentable ................................................ 32 
`A. 
`Legal Standards ........................................................................ 32 
`B. 
`Petitioners Fail To Demonstrate The Challenged
`Claims Are Obvious Over Aytac In View Of The
`SCSI Specification And The Alleged Admitted
`Prior Art .................................................................................... 35 
`
`V. 
`
`i
`
`

`

`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`ii. 
`
`Petitioners Fail To Articulate A Proper
`Obviousness Ground ...................................................... 35 
`Aytac Cannot Support An Obviousness
`Conclusion For The ’437 Patent .................................... 36 
`Aytac Intended CaTbox To Be A
`i. 
`Multitasking Device To Solve The
`Problem Of Integrating Operation Of
`Multiple Devices With A PC ............................... 36 
`CaTbox Needs Specialized Software
`Installed On The PC To Be A
`Multitasking Device To Solve The
`Problem Of Integrating Operation Of
`Multiple Devices With A PC ............................... 37 
`The ’437 Patent Requires Transfer Of
`Digitized Analog Data From The ADGPD To
`The Host Computer That Occurs Without
`Requiring A User To Install Or Load Specific
`Drivers Or Software On The Host Computer ................ 42 
`Aytac Must Be Modified To Not Use Its
`Specialized Host Computer Software To
`Meet The Digitized Analog Data Transfer
`Claim Limitations .......................................................... 45 
`Even If Considered With Respect To The
`Automatic File Transfer Limitation, Dr.
`Reynolds’s
`Conclusory
`Testimony
`Regarding The CATSYNC.VXD Driver
`Fails To Show The Digitized Analog Data
`Transfer Using Customary
`Software
`Limitations Are Rendered Obvious By Aytac
`In View Of The SCSI Specification .............................. 47 
`Not Using The CATSYNC.VXD Driver
`Renders CaTbox Incapable Of Reliably
`Transferring Data To The PC While Also
`Managing Its Intended Multitasking Purpose;
`
`ii
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`7. 
`
`8. 
`
`Therefore This Modification Cannot Support
`An Obviousness Conclusion .......................................... 48 
`Aytac In View Of The SCSI Specification
`Fails To Render Claim 43 Obvious ............................... 55 
`Aytac In View Of The SCSI Specification
`Fails To Render Obvious Claim 41 ............................... 56 
`9.   Aytac In View Of The SCSI Specification,
`The Alleged Admitted Prior Art, And
`Adaptec Fails To Render Obvious Claim 39 ................. 61 
`Petitioners Fail To Demonstrate That The
`Challenged Dependent Claims Are Obvious Over
`Aytac In View Of The SCSI Specification .............................. 63 
`VI.  Conclusion .......................................................................................... 64 
`
`
`C. 
`
`
`
`
`
`iii
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`LIST OF EXHIBITS
`
`1004
`
`1005
`
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`1013
`
`EXHIBIT NO. TITLE
`1001
`Declaration of Dr. Paul F. Reynolds, Ph.D.
`1002
`Curriculum Vitae of Dr. Paul F. Reynolds, Ph.D.
`U.S. Patent No. 9,189,437 to Michael Tasler (“the ’437
`1003
`Patent”)
`U.S. Patent No. 5,758,081 to Haluk M. Aytac (“Aytac” or
`“the ’081 Patent”)
`American National Standard for Information Systems,
`Small Computer System Interface-2, ANSI X3.131-1994
`(1994) (“SCSI Specification”)
`Prosecution History of the ’081 Patent
`Texas Instruments data sheet SLA006B (1996) (“TI data
`sheet”)
`U.S. Patent No. 5,592,256 to Muramatsu (“Muramatsu”)
`U.S. Patent No. 5,659,690 to Stuber (“Adaptec”)
`Ray Duncan, ed., “The MS-DOS Encyclopedia,”
`Microsoft Press (1988)
`Federal Circuit decision, In re Papst Licensing Digital
`Camera Patent Litigation, No. 2014-1110 (Fed. Cir. Feb.
`2, 2015)
`Excerpts from the Microsoft Computer Dictionary (2nd
`ed. 1994)
`U.S. Patent No. 5,325,071 to Westmoreland (“TI Patent”)
`Papst’s Opening Claim Construction Brief and
`Declaration of Robert Zeidman, filed in related litigation
`in the District of Columbia, In re Papst Licensing Digital
`Camera Patent Litigation, MDL No. 1880, Case No.
`1:07-mc-00493, Dkt. Nos. 630, 630-12 (June 3, 2016)
`Excerpt from Prosecution History of the ’437 Patent:
`Appellant’s Brief on Appeal dated May 7, 2012
`Excerpt from Prosecution History of the ’437 Patent:
`Amendment dated August 31, 2009
`Excerpt from MPEP § 608 (1995)
`Wikipedia Entry
`for “Dual-tone multi-frequency
`signaling”
`“HowStuffWorks” Article: “How Fax Machines Work”
`
`1014
`
`2001
`
`2002
`2003
`2004
`2005
`
`iv
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`Declaration of Thomas Gafford And Appendices A-C
`Thereto
`Deposition Transcript of Paul F. Reynolds in IPR2016-
`01199, -01200, -01211, -01212, -01213, -01214, -01216,
`and -01225 taken March 9, 2017
`Deposition Transcript of Paul F. Reynolds in IPR2016-
`01733 taken May 3, 2017
`Order Regarding Claim Construction in Papst Licensing
`GmbH & Co., KG v. Apple, Inc., 6:15-cv-01095, D.E. 275
`(E.D. Tex. March 7, 2017)
`End user, Microsoft Press Computer Dictionary (2nd ed.
`1994)
`End user, The IEEE Standard Dictionary of Electrical and
`Electronics Terms (6th ed. 1997)
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`
`v
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`Introduction
`This proceeding commenced when Petitioners filed a Petition for Inter
`
`I.
`
`Partes review of claims of U.S. Patent No. 9,189,437 (“the ’437 patent”) (Ex.
`
`1003.) Patent Owner Papst Licensing GmbH & Co. KG (“Papst”) timely filed
`
`a Preliminary Response. (Paper 6.) The Patent Trial and Appeal Board
`
`(“Board”) entered its Decision on Institution on February 8, 2017
`
`(“Decision”), ordering the institution of trial on claims 1–45 of the ’437 patent
`
`pursuant to 35 U.S.C. § 314(a) on the following grounds of obviousness, each
`
`based at least in part on the combination of U.S. Patent No. 5,758,081 to Aytac
`
`(Ex. 1004), the SCSI Specification (Ex. 1005), and alleged Admitted Prior
`
`Art2:
`
`
`
`
`
` 2
`
` Petitioners only identified Admitted Prior Art as part of their second ground
`
`of unpatentability against claim 41. (Pet. at 8.) The Decision supplemented
`
`each of the remaining six grounds to include the alleged Admitted Prior Art.
`
`Papst respectfully submits that Petitioners’ failure to properly identify its
`
`unpatentability grounds rises above a “harmless error.” 37 C.F.R.
`
`§42.104(b)(2).
`
`1
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1, 4-16, 18-31, 33-37,
`41, 43, and 45
`
`§103(a) Aytac, the SCSI Specification, and
`Admitted Prior Art
`
`2, 3, 17, 39, 40, 42, and
`44
`
`§103(a) Aytac, the SCSI Specification,
`Admitted Prior Art, and Adaptec
`
`13 and 45
`
`§103(a) Aytac, the SCSI Specification,
`Admitted Prior Art, and TI Data Sheet
`
`32
`
`38
`
`40
`
`§103(a) Aytac, the SCSI Specification,
`Admitted Prior Art, and Muramatsu
`
`§103(a)
`
`Aytac, the SCSI Specification,
`Admitted Prior Art, TI Data Sheet,
`and TI Patent
`
`§103(a)
`
`Aytac, the SCSI Specification,
`Admitted Prior Art, Adaptec, and TI
`Data Sheet
`
`(Decision, Paper 7 at 39.)
`
`Papst respectfully submits this Response in accordance with 37 C.F.R.
`
`§ 42.120, opposing the Petition and responding to the Decision as to the
`
`instituted grounds. This Response is supported by the declaration of Papst’s
`
`retained qualified technical expert, Thomas A. Gafford (Ex. 2006), as well as
`
`other accompanying exhibits.
`
`2
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`The ’437 patent claims an analog data generating and processing device
`
`(“ADGPD”) and corresponding method that implements an automatic file
`
`transfer process to cause digitized analog data to be transferred from the
`
`ADGPD to the computer using a “customary device driver for 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.” (Claim 1)
`
`(emphasis added.) The other independent claims have corresponding
`
`limitations that require the use of a preinstalled, customary driver and prohibit
`
`the use of specialized, user-loaded software in connection with the transfer of
`
`digitized analog data. (See claim 39: “using the customary device driver
`
`present for a digital storage device in the host computer without requiring the
`
`user to load the customary device driver”; claim 41: “using the customary
`
`device driver present in the BIOS of the host computer for the digital mass
`
`storage device in the host computer without requiring the user to load the
`
`customary device driver”; and claim 43: “using the customary device driver
`
`present for the customary digital storage device in the host computer without
`
`requiring the user to load the device driver.”) Contrary to the requirements of
`
`the claims, Aytac teaches that specialized software is indeed required to be
`
`installed on the host computer to enable communication with the ADGPD,
`
`including to synchronize the operating systems of the host computer and
`
`3
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`Aytac’s disclosed computing and telecommunications device, “CaTbox,”
`
`which enables reliable transfer of data from the CaTbox to the host computer.
`
`The Petition ignores the existence of this specialized software and therefore
`
`fails to address why this software would not be required for the CaTbox to
`
`operate and accomplish the claimed functions. Accordingly, the Petition fails
`
`to show that Aytac in view of the other asserted art teaches the transfer of
`
`digital data using only customary software on the host computer.
`
`Only Petitioners’ expert Dr. Reynolds discusses one of Aytac’s three
`
`specialized host computer programs, but this testimony is completely
`
`unmentioned in the Petition. (Pet. at 38.) Accordingly, this testimony is not
`
`properly presented and should not be considered. 37 C.F.R. § 42.6(a)(3);
`
`Symantec Corp. v. RPost Comms. Ltd., IPR2014-00353, Paper 15 at 16,
`
`(PTAB July 15, 2014) (Petition that failed to cite to prior art in support of
`
`obviousness argument and instead cited only to expert declaration was
`
`insufficient under 37 C.F.R. § 42.22(a)(2) and contrary to 37 C.F.R.
`
`§ 42.6(a)(3), even though cited portion of declaration cited to prior art). The
`
`Board has cautioned against the practice of burying arguments in an expert
`
`declaration. See, e.g., Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-
`
`00454, Paper 12 at 7–10 (PTAB Aug. 29, 2014) (250-page expert declaration
`
`incorporated by reference circumvents the page limits imposed on petitions
`
`4
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`while imposing on the Board’s time); Conopco, Inc. v. Procter & Gamble Co.,
`
`IPR2013-00510, Paper 9 at 8 (PTAB Feb. 12, 2014) (“We decline to consider
`
`information presented in a supporting declaration, but not discussed in a
`
`petition, because, among other reasons, doing so would encourage the use of
`
`declarations to circumvent the page limits that apply to petitions.”)
`
`Further, instead of arguing that such software is not required (as he has
`
`in related proceedings (see Ex. 1001 from IPR2016-01199 at ¶ 100)), Dr.
`
`Reynolds instead argues, without providing any reasoning or evidence, that
`
`the synchronization functionality of the CATSYNC.VXD software could
`
`“just as easily” have been implemented on the CaTbox instead of the host PC.
`
`(Ex. 1001 at ¶ 101.) This is both factually incorrect and legally insufficient to
`
`show obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (noting
`
`that rejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness);
`
`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365–1367 (Fed. Cir.
`
`2014) (holding “the Board cannot accept general conclusions about what is
`
`‘basic knowledge’ or ‘common sense’ as a replacement for documentary
`
`evidence for core factual findings in a determination of patentability”); Ex.
`
`2006 at ¶¶ 58-70. Indeed, as explained by Mr. Gafford, it would not be
`
`5
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`possible to transfer the full functionality of the CATSYNC driver to the
`
`CaTbox, and attempting to do so would raise additional technical problems
`
`that would dissuade a person of ordinary skill from making such a
`
`modification.
`
`Further, Dr. Reynolds fails to address the other specialized software
`
`taught by Aytac that must be installed on the host PC. Thus, even if it were
`
`possible to implement the functionality of the CATSYNC driver on the
`
`CaTbox, Aytac still teaches the requirement of other specialized software to
`
`be loaded on the host computer to enable core functionality of the CaTbox.
`
`As explained by Mr. Gafford, without the specialized software, the CaTbox
`
`would be unable to reliably transfer data when performing the multiple
`
`functions Aytac intended it to perform. Such modifications cannot be used to
`
`support an obviousness analysis. Second, to the extent the Petition might be
`
`interpreted to suggest avoiding this problem by implicitly construing “end
`
`user” in a way that is inconsistent with the specification and prosecution
`
`history, this construction is incorrect and does not comport with either the
`
`Broadest Reasonable Interpretation (BRI) or the Phillips standard.
`
`Petitioners bear the burden of proving that the instituted claims are
`
`unpatentable by a preponderance of the evidence. 35 U.S.C. § 316(e). In view
`
`6
`
`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`of the modification to Aytac’s system suggested by Dr. Reynolds that render
`
`it inoperable for its intended purpose, Petitioners failed to carry their burden.
`
`The Board should also reject the Petition because Petitioners fail to
`
`sufficiently identify and explain their precise invalidity legal theories and
`
`supporting evidence, in violation of the particularity required by the Board.
`
`Petitioners obscure the source of the alleged teachings of the prior art and even
`
`rely on non-prior art teachings of the challenged ’437 patent in support of its
`
`ground of invalidity. (See, e.g., Pet. at 26, 30, 34, 35, 40, 42, 57 (relying on
`
`non-prior art source code Ex. 1006).) The grounds of invalidity are alleged to
`
`be based on at least Aytac (Ex. 1004) in view of the SCSI Specification (Ex.
`
`1005). Petitioners fail to provide a proper obviousness analysis, including
`
`considering each claimed invention as a whole, identification of the
`
`limitations not disclosed by Aytac, identification of where those limitations
`
`are taught by the SCSI Specification or other asserted art, and why and how
`
`the particular combination would have been made, i.e., an articulated
`
`reasoning with some rational underpinning to support the conclusion of
`
`obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`For example, Petitioners never once concede which claim limitations
`
`are missing from Aytac and fail to clearly articulate any theory of obviousness
`
`premised on combining the teachings of Aytac and the SCSI Specification.
`
`7
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`This is particularly apparent in the way Petitioners disregard Aytac’s intended
`
`purpose and its required specialized software. The Board should therefore
`
`issue a final written decision affirming the validity of the challenged claims.
`
`II. Overview Of The ’437 Patent
`The ’437 patent is the result of breakthrough work by inventor Michael
`
`Tasler. Mr. Tasler created a unique system and method for achieving high data
`
`transfer rates for data acquisition systems (e.g., still pictures, videos, voice
`
`recordings) to a general-purpose computer, without requiring a user to
`
`purchase, install, and/or run specialized software for each system. (Ex. 1003
`
`at 3:33–37.) At the time of the invention, there were an increasing number and
`
`variety of data acquisition systems with the ability to capture high volumes of
`
`information. (Id. at 1:42–60.) As such, there was an increasing demand to
`
`transfer
`
`that
`
`information
`
`to commercially-available, general purpose
`
`computers. (Id. at 1:29–41.) But at that time—and today—performing that
`
`data transfer operation required either loading specialized, sophisticated
`
`software onto a general-purpose computer, which increases the risk of error
`
`and the level of complexity for the operator, or specifically matching interface
`
`devices for a data acquisition system to a host system that may maximize data
`
`transfer rates but lacks the flexibility to operate with different devices. (Id. at
`
`1:24–3:25.)
`
`8
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
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`Mr. Tasler recognized that the existing options were wasteful and
`
`inefficient and sought a solution that would achieve high data transfer rates,
`
`without requiring specialized software to be installed on the host computer,
`
`while being sufficiently flexible to operate independent of device or host
`
`manufacturers. (Id. at 2:20–41, 3:29–32.) The resulting invention would allow
`
`a data acquisition system to identify itself as a type of common device so as
`
`to leverage the inherent capabilities of general–purpose, commercially-
`
`available computers. (Id. at 4:16–30.) Accordingly, by using Mr. Tasler’s
`
`invention, users could avoid loading specific software; improve data transfer
`
`efficiency; save time, processing power, and memory space; and avoid the
`
`waste associated with purchasing specialized computers or loading specific
`
`software for each device. (Id. at 3:29–32, 3:33–46, 7:38–8:4, 8:34–41, 9:23–
`
`27, 11:38–55.) The ’437 patent claims variations of this concept and provides
`
`a crucial, yet seemingly simple, method and apparatus for a high data rate,
`
`device-independent information transfer. (Id. at 3:29–32.)
`
`Mr. Tasler discloses that his interface device could leverage “drivers
`
`for input/output device[s] customary in a host device which reside in the BIOS
`
`system of the host device . . . . ” (Id. at 10:25–26; see also id. at 4:23–27
`
`(“[t]he interface device according to the present invention therefore no longer
`
`communicates with the host device or computer by means of a specially
`
`9
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`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
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`designed driver but the means of a program which is present in the BIOS
`
`system . . . ”), 5:17–23 (describing the use of “usual BIOS routines” to issue
`
`INQUIRY instructions to the interface), 7:57–64 (describing use of BIOS
`
`routines).) Similarly, the written description describes also using drivers
`
`included in the operating system. (See, e.g., id. at 5:11–14: “Communication
`
`between the host system or host device and the interface device is based on
`
`known standard access commands as supported by all known operating
`
`systems (e.g., DOS®, Windows®, Unix®).”) Alternatively, if the required
`
`specific driver or drivers for a multi-purpose interface (such as a SCSI
`
`interface) is already present in a host device, such drivers could be used with
`
`Mr. Tasler’s interface device instead of, or in addition to, customary drivers
`
`which reside in the BIOS. (Id. at 10:23–29.) Accordingly, Mr. Tasler
`
`contemplated a universal interface device that could operate independent of
`
`the manufacturer of the computer. (See id. at 11:38–55.) Indeed, the preferred
`
`embodiment discloses that the interface device includes three different
`
`connectors, a 50 pin SCSI connector 1240, a 25 pin D-shell connector 1280,
`
`and a 25 pin connector 1282, to allow Mr. Tasler’s interface device to connect
`
`to a variety of different standard interfaces that could be present in a host
`
`computer. (Id. at 8:42–59, FIG. 2.)
`
`10
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`

`

`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`As is apparent from the title of the ’437 patent, the interface device
`
`disclosed by Mr. Tasler is capable of acquiring and processing analog data.
`
`As shown in FIG. 2 reproduced below, Mr. Tasler discloses that the interface
`
`device 10 has an analog input at connection 16 for receiving analog data from
`
`a data transmit/receive device on a plurality of analog input channels 1505
`
`and simultaneously digitizing the received analog data using, inter alia, a
`
`sample and hold amplifier 1515 and an analog to digital converter 1530 that
`
`converts analog data received from the plurality of channels 1505 into digital
`
`data that may then be processed by the processor 1300. (See Ex. 1003 at 8:60–
`
`9:8; 9:41–56.)
`
`11
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`

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`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
`
`
`
`
`III. Overview Of The Applied Art
`A. Aytac’s CaTbox Requires User-Loaded Specialized Software
`To Function Properly
`
`Aytac discloses a specialized device to allow communication between
`
`a computer and multiple peripheral devices. Aytac’s title is “Computing and
`
`12
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`PATENT OWNER RESPONSE IN IPR2016-01733
`U.S. PATENT NO. 9,189,437
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`communications transmitting, receiving system, with a push button interface,
`
`that is continuously on, that pairs up with a personal computer and carries out
`
`mainly communications related routine tasks.” (Ex. 1004.) As the title
`
`suggests, Aytac generally relates to a telecommunications apparatus or
`
`“Personal Communicator” in the form of an embedded computer called
`
`“CaTbox” (so named because the device “sits between a Computing and a
`
`Telecommunications apparatus”). (Id. at 4:8–20.) Given the complexity of
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`managing connections to many devices, Aytac discloses specialized software
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`needed for the device to function properly.
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`Notably, Aytac includes Source Code that was not printed with or
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`referenced in the Aytac patent. The Board found that Aytac’s Source Code is
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`not prior art that may be relied upon in this IPR, except to show the level of
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`ordinary skill in the art at the time of the invention. (Decision at 17–20.) Even
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`when viewed from this limited perspective, the Source Code supports Papst’s
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`position that specialized code must be installed on the host computer for
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`Aytac’s CaTbox to work properly—why else would have one of ordinary skill
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`felt compelled to include such software with Aytac’s patent application?
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`Because Mr. Aytac felt it was needed for the CaTbox to work and to enable
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`one of ordinary skill to practice his invention. If only regularly-available
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`software were needed, none of this specialized software would have been
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`needed. Indeed, Petitioners’ expert, Dr. Reynolds, admitted at deposition that
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`such software would be needed to avoid data corruption and accomplish the
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`functionality disclosed in Aytac’s disclosure. (Ex. 2007 at 92:15–93:10, 95:2–
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`98:2; Ex. 2008 at 38:10-13, 38:21-39:2.)
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`With respect to the prior art status of the Source Code, Papst includes
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`its prior argument regarding the prior art status of the Source Code from its
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`preliminary response following for the Board’s reference.
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`Petitioners rely upon source code (Ex. 1006) filed with the Aytac patent
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`application as if it were part of the disclosure of the Aytac patent, even though
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`the source code is not found or even referenced in the patent document itself.
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`(See Pet. at 1, 26, 30–31, 34–35, 40, 42, 57.) Petitioners provide no
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`explanation why the source code should be considered as prior art. The rules
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`in effect at the time of the filing of the Aytac patent application show that the
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`source code is not part of the Aytac patent.
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`In particular, the rules require insertion of a reference to a code
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`appendix at the beginning of the application:
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`A statement must be included in the specification to the
`effect that a microfiche appendix is included in the application.
`The specification entry must appear at the beginning of the
`specification immediately following any cross-reference to
`related applications, 37 CFR 1. 77(c)(2). The patent front page
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`and the Official Gazette entry will both contain information as to
`the number of microfiche and frames of computer program
`listings appearing in the microfiche appendix.
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`(Ex. 2003 at 4 (emphasis added).)3
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`37 C.F.R. § 1.96, which is reproduced in MPEP § 608.05, provides that
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`computer program listings, if 10 printed pages or less, must be submitted as
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`part of the specification or drawings, but if 11 pages or more, should be
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`submitted “as an appendix which will not be printed.” (Ex. 2003 at 2–3,
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`quoting 37 C.F.R. § 1.96 (a), (b).) Although 37 C.F.R. § 1.96(b) concludes
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`with the sentence that “[a]ll computer program listings submitted on paper
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`will be printed as part of the patent” (Id. at 3), the 450-page source code
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`submitted was not in fact printed as part of the Aytac patent. Thus, because
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`the owner of the Aytac patent failed to have the patent corrected to include
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`
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` 3
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` See Petitioner’s Exhibit 1009 (“Adaptec”) at 1:5–27 which, unlike Aytac,
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`includes a reference to microfiche appendices A and B. Physical appendices
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`I-III are also included at the end of the Adaptec patent (see Ex. 1009 at
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`171:25–195:20.) Both the microfiche appendices and physical appendices are
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`referenced throughout the specification. (See e.g., id. at 10:10, 13:2, and
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`25:36.)
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`the source code, the source code is not a part of the Aytac written description.
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`This would be the case even if Aytac had included a reference to the source
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`code in the specification, which he failed to do. See Southwest Software, Inc.
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`v. Harlequin, Inc., 226 F.3d 1280, 1291 (Fed. Cir. 2000) (source code filed
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`with application not part of patent where patent stated source code was
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`incorporated in appendix, but appendix was not printed with patent); Solaia
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`Tech. LLC v. Arvinvmeritor Inc., 2003 U.S. Dist. LEXIS 16482, at *21–28
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`(N.D. Ill. Sept. 17, 2003) (source code was not considered part of the patent
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`document where source code was referenced in the patent, but was not
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`appended to certified copy or referenced at the required location after the title
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`of the invention and before the summary of the invention). Thus, the source
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`code submitted by Aytac does not form part of the Aytac written description
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`and therefore is not prior art under § 102(e).
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`The Aytac source code also does not separately qualify as a “printed
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`publication,” particularly in view of the fact that Aytac fails to reference the
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`existence of the source code in the specification, and there is no evidence that
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`the source code was otherwise searchable or available to a POSITA. See In re
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`Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (holding thesis not to be a
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`printed publication despite being available in a library and indexed by the
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`author’s name because index by name only did not make thesis reasonably
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`accessible to the public); Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350
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`(Fed. Cir. 2008) (“A reference is publicly accessible ‘upon a satisfactory
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`showing that such document has been disseminated or otherwise made
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`available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence, can locate it.’”) Because
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`the unpublished Aytac source code is not a printed publication, it is not prior
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`art for the purposes of an inter partes review. See 35 U.S.C. § 311(b).
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`Further, even if the source code were sufficiently publicly available to
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`be considered a printed publication as of May 26, 1998 when the Aytac patent
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`issued and was published (and when the file wrapper became publicly
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`available), it still would not be prior art under 35 U.S.C. §§ 102(a) or (b) to
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`the ’437 patent, which has a priority date of March 4, 1997 and an effective
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`filing date as of March 3, 1998. Thus, the unpublished Aytac source code is
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`not prior art for the purposes of this inter partes review. Accordingly, to the
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`extent Petitioners rely on the Aytac source code as prior art, the Board must
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`disregard this evidence.
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`B.
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`The Petition Fails To Show That The TI Data Sheet Is A
`“Printed Publication”
`
`
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`Petitioners assert that the TI data sheet (Ex. 1007) is prior art to the ’437
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`patent under 35 U.S.C. § 102(b) in connection with its grounds 5, 6, and 7.
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`(Pet. at 5–6, 8.) However, Petitioners have failed to show that the TI data sheet
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`is a “printed publication,” and therefore it may not be relied upon in this
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`proceeding. 35 U.S.C. § 311(b). Petitioners state that the data sheet was
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`published October 1996 apparently based on the stated revision date of
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`October 1996 on the first page of the document, and also point to a copyright
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`notice with a 1996 date. (Pet. at 8.) Such evidence is insufficient to show that
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`the TI data sheet was publicly accessible. See In re Lister, 583 F.3d 1307,
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`1311, 1316 (Fed. Cir. 2009) (holding that evidence of copyright registration
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`alone is insufficient to show the registered document was publicly accessible);
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`see also Servicenow, Inc. v. Hewlett-Packard Co., IPR2015-00707, Paper 12
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`at 17 (PTAB August 26, 2015) (finding that copyright notice, without more,
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`is insufficient evidence of public accessibility as of a particular date). Further,
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`the last page of the document also includes a copyright date of 2013, which
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`suggests that the particular data sheet proffered by Petitioners was not publicly
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`available as of the 1996 copyright date. (Ex. 1007 at 15.) Petitioners further