Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: April 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01840
`Patent 9,189,437 B2
`____________
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`Case IPR2016-01840
`Patent 9,189,437 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes review
`of claims 1, 4–6, 9–16, 18, 30, 34, 43, and 45 (“the challenged claims”) of
`U.S. Patent No. 9,189,437 B2 (Ex. 1001, “the ’437 patent”). Paper 2
`(“Pet.”), 1. Papst Licensing GmbH & Co., KG (“Patent Owner”), filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”). Under 35 U.S.C. § 314,
`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.”
`For the reasons that follow, we do not institute an inter partes review
`as to any of the challenged claims.
`
`A. Related Matters
`Petitioner indicates that the ’437 patent is involved in Papst Licensing
`GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-01095 (E.D. Tex.); Papst
`Licensing GmbH & Co., KG v. LG Electronics, Inc., Case No. 6-15-cv-
`01099 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. ZTE Corp., Case
`No. 6-15-cv-01100 (E.D. Tex.); Papst Licensing GmbH & Co., KG v.
`Samsung Electronics Co. Ltd., Case No. 6:15-cv-01102 (E.D. Tex.); and
`Papst Licensing GmbH & Co., KG v. Lenovo (United States) Inc., Case No.
`6-15-cv-01111 (E.D. Tex.). Pet. 2; see Paper 8, 4–5. In addition to the
`instant Petition, various petitioners have filed at least seven other petitions
`seeking inter partes review of claims of the ’437 patent:
`
`
`2
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`

`

`Case IPR2016-01840
`Patent 9,189,437 B2
`
`
`Proceeding
`IPR2016-01733
`
`Status
`Review Instituted
`
`Petitioner
`Samsung Electronics
`Co. Ltd.
`Apple Inc.
`Apple Inc.
`Apple Inc.
`Apple Inc.
`ZTE Corp.
`LG Electronics, Inc.
`
`IPR2016-01841
`IPR2016-01842
`IPR2016-01844
`IPR2017-00156
`IPR2017-00712
`IPR2017-01038
`
`Review Denied
`Pending
`Review Denied
`Review Denied
`Pending
`Review Instituted;
`Joined with IPR2016-
`01733
`See Pet. 2; Paper 8, 2–4. More than forty petitions have been filed by
`various petitioners challenging claims of five related patents: U.S. Patent
`Nos. 6,470,399 B1; 6,895,449 B2; 8,504,746 B2; 8,966,144 B2; and
`9,189,437 B2, owned by Patent Owner. See LG Electronics, Inc. v. Papst
`Licensing GmbH & Co., Case IPR2017-01038, Paper 5, 1–2.
`
`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. 1001, 1:18–22,
`1:54–57. According to the ’437 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 2:4–19. Several solutions to this problem were known in the
`art. Id. at 2:20–3:25. For example, IOtech offered 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 (i.e.,
`IEEE 1284). Id. at 2:20–29. The plug-in card provided a printer interface
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`Case IPR2016-01840
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`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.
`
`
`As shown in Figure 1, 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. Output line 16 connects interface 10 to a data
`transmit/receive device and implements an analog input, for example, with a
`sampling rate of 1.25 MHz and quantization of 12 bits, such as by means of
`the blocks 1505-1535, as depicted in Figure 2. Id. at 9:41–44. By means of
`
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`programmable amplifier 1525, depicted in Figure 2 of the ’437 patent,
`multiple channels can be programmed independently of each other, for
`example, in voltage ranges up to a maximum of ±10 V. Id. at 9:45–48. 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 the 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 and 43 are independent. Claims 4–
`6, 9–16, 18, 30, and 34 depend directly from claim 1; and claim 45 depends
`directly from claim 43. Claims 1 and 43 are 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;
`wherein the processor is adapted to implement 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
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`
`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 of a host computer 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 as 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 one 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
`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
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`
`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.
`43. An analog data generating and processing method for
`acquiring analog data and for communicating with a host
`computer comprising:
`operatively interfacing an analog data device including a
`digital processor, a program memory and a data storage memory,
`to a multi-purpose interface of the host computer;
`acquiring analog data on each respective analog
`acquisition channel of a plurality of independent analog
`acquisition channels, converting the acquired analog data to
`digitized acquired analog data, and coupling the digitized
`acquired analog data into the digital processor for processing by
`the digital processor;
`automatically generating and transmitting to the host
`computer via the multipurpose interface an identification
`parameter which identifies the analog data generating and
`processing device to the host computer as a digital storage device
`but which is different than an analog data device, and
`independent of analog data source, and the analog data
`generating and processing device communicating with the host
`computer through the multi-purpose interface as if the analog
`data generating and processing device were the digital storage
`device including transferring the digitized acquired analog data
`acquired from at least one of the analog acquisition channels,
`wherein the identification parameter is consistent with the
`ADGPD being responsive to commands issued from a customary
`device driver, 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.
`Ex. 1001, 11:57–12:42 (claim 1 with disputed limitations emphasized),
`16:47–17:10 (claim 43 with disputed limitations emphasized).
`
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`
`
`
`1024
`1030
`
`1036
`
`D. Applied References
`Petitioner relies upon the references and declarations listed below.
`Exhibit
`References and Declarations
`1003
`Declaration of Erez Zadok, Ph.D.
`1007
`FRIEDHELM SCHMIDT, THE SCSI BUS AND IDE INTERFACE
`PROTOCOLS, APPLICATIONS AND PROGRAMMING (J. Michael
`Schultz trans., Addison-Wesley Publishing Co. 1995)
`(“Schmidt”)1
`Declaration of Mr. Scott Bennett
`Misc. Action No. 07-493 (RMC), MDL No. 1880, Order
`Regarding Claims Construction
`European Patent Application No. 0 475 639 A2 to Applicant:
`Kawasaki Steel Corporation, published March 18, 1992
`(“Kawasaki”)
`U.S. Patent No. 6,111,831 to Alon et al., filed on February 20,
`1997 (“Alon”)
`U.S. Patent No. 4,856,871 to Van Sant, issued on August 15,
`1989 (“Van Sant”)
`U.S. Patent No. 5,515,237 to Ogami et al., filed on October
`13, 1992, issued on May 7, 1996 (“Ogami”)
`U.S. Patent No. 5,590,375 to Sangveraphunsiri et al., filed on
`August 27, 1992, issued on December 31, 1996
`(“Sangveraphunsiri”)
`Pet. v–vi, 4–5.
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`1 See Ex. 1024 ¶¶ 23–28.
`
`8
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`Case IPR2016-01840
`Patent 9,189,437 B2
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`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5):2
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1, 5, 11–16, 18, 30, 34,
`43, and 45
`
`35 U.S.C. § 103(a) Kawasaki, Alon, and
`Schmidt
`
`4
`
`6
`
`9 and 10
`
`35 U.S.C. § 103(a) Kawasaki, Alon,
`Schmidt, and Van Sant
`35 U.S.C. § 103(a) Kawasaki, Alon,
`Schmidt, and Ogami
`Kawasaki, Alon,
`Schmidt, and
`Sangveraphunsiri
`
`35 U.S.C. § 103(a)
`
`II. ANALYSIS
`A. Overview
`Petitioner argues that claims 1, 4–6, 9–16, 18, 30, 34, 43, and 45 of
`the ’437 patent are unpatentable under 35 U.S.C. § 103(a) as rendered
`obvious over Kawasaki, Alon, and Schmidt, alone or in combination with
`another reference. Pet. 11–67. Petitioner argues, however, that the
`challenged independent claims, claims 1 and 43, are unpatentable based
`solely on the combined teachings of Kawasaki, Alon, and Schmidt. Id. at
`12–42 (claim 1), 51–61 (claim 43). Petitioner does not rely on the other
`
`
`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.
`§ 103 in this Decision.
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`applied references to teach any of the limitations of these independent
`claims. Id. at 11–12, 42–51, 61–67.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.3 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). Nevertheless, the Court cautions us against “the temptation to
`read into the prior art the teachings of the invention in issue.” Graham, 383
`U.S. at 36. On this record and for the reasons set forth below, we are not
`persuaded that Petitioner demonstrates a reasonable likelihood of prevailing
`in any of its challenges to the claims of the ’437 patent.
`
`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
`
`
`3 Patent Owner does not present arguments regarding objective evidence of
`nonobviousness in the Preliminary Response.
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`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner’s
`declarant, Erez Zadok, Ph.D., testifies that a person of 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, computer engineering, or related
`field of study, or equivalent experience, and at least two years’ experience in
`studying or developing computer interfaces or peripherals and storage
`related software.” Ex. 1003 ¶ 30 (emphasis added). Dr. Zadok further
`testifies that such a person also would have been “familiar with operating
`systems (e.g., MS-DOS, Windows, Unix), their associated file systems (e.g.,
`a FAT, UFS, FFS), device drivers for computer components and peripherals
`(e.g., mass storage device drivers), and communication interfaces (e.g.,
`SCSI, USB, PCMCIA).” Id. Patent Owner confirms that Petitioner’s
`statements regarding the level of ordinary skill in the art are partially
`consistent with Patent Owner’s view, but, nonetheless, Patent Owner
`contends that a person of ordinarily skilled in the art would have at least
`three years of experience, or, alternatively, five or more years of experience
`without a bachelor’s degree. Prelim. Resp. 6–7.
`We do not discern a meaningful difference between the parties’
`assessments of a person of ordinary skill in the art. We further note that
`either assessment appears consistent with the level of ordinary skill in the art
`at the time of the invention as reflected in the prior art in the instant
`proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
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`2001).4 Moreover, Dr. Zadok appears to satisfy either assessment. See
`Ex. 1004. Our analysis in this Decision is supported by either assessment,
`but, for purposes of this Decision and to the extent necessary, we adopt
`Petitioner’s assessment.
`
`C. 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. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest
`reasonable interpretation standard, claim terms 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). Any special definition for a claim
`term must be set forth with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes the construction of two claim terms:
`“multi-purpose interface of the host computer” and “customary device
`
`
`4 See, e.g., Ex. 1036, 15:56–16:13 (“A host computer 1 records data in a
`hard disk emulator 2 through an interface bus 6 and regenerates the data
`from the hard disk emulator 2.”); Ex. 1037, 6:35–38 (“Memory 33 is
`provided to buffer the data read from the multiple data tracks, and to
`decouple the process of reading data from optical disk 100 from the process
`of transferring the data to host processor 37.”); Ex. 1007, v (“The SCSI bus,
`on the other hand, is designed not only for hard drives but also for tape
`drives, CDROM, scanners, and printers. Almost all modern computers,
`from PCs to workstations to mainframes, are equipped with a SCSI
`interface.”).
`
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`driver.” Pet. 8–11. In particular, Petitioner argues that “the broadest
`reasonable interpretation and Philips constructions are the same” (id. at 9)
`and that we should adopt the constructions of these terms approved by the
`U.S. Court of Appeals for the Federal Circuit (see, e.g., In re Papst
`Licensing Digital Camera Patent Litigation, 778 F.3d 1255, 1270 (Fed. Cir.
`2015)). See Ex. 1030. Consequently, Petitioner argues that:
`a. “multi-purpose interface of the host computer” means “a
`communication interface designed for use with multiple devices that can
`have different functions from each other,” (Pet. 9) and
`b. “customary device driver” means “driver for a device normally
`present in most commercially available host devices at the time of the
`invention” (id. at 10).
`Patent Owner does not oppose Petitioner’s construction of “multi-
`purpose interface of the host computer.” Prelim. Resp. 8. Nevertheless,
`although both Petitioner and Patent Owner agree that the term “customary
`device driver” describes drivers normally present in or part of “most
`commercially available” computer systems, Patent Owner contends that the
`term “customary device driver” means “the driver for the data device
`normally part of commercially available computer systems.” Id.
`Specifically, Patent Owner contends (1) that the driver is for a “data device,”
`rather than a “host device,” and (2) that the addition of the phrase “at the
`time of the invention” in Petitioner’s proposed construction of the term
`“customary device driver” is inappropriate. Id.
`Only terms which are in controversy in this proceeding need to be
`construed, and then only to the extent necessary to resolve the controversy.
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`See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`2011) (explaining that “claim terms need only be construed ‘to the extent
`necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this
`Decision, no claim terms require express construction.
`D. Obviousness of Claims 1 and 43 Over Kawasaki, Alon, and Schmidt
`We begin our analysis of Petitioner’s asserted ground for
`unpatentability with an overview of the references applied against claims 1
`and 43.
`1. Kawasaki (Ex. 1036)
`Kawasaki describes a hard disk emulator including an optical disk
`drive that connects via a bus to a host computer. Ex. 1036, Fig. 1.
`Kawasaki’s Figure 1 is reproduced below:
`
`
`Figure 1 depicts hard disk emulator 2 that is connected to host computer 1.
`Id. at 15:56–16:3. Hard disk emulator 2 includes emulation unit 3, hard disk
`drive 4, and optical disk drive 5. Id. Data recorded on optical disk drive 5 is
`read by host computer 1 via emulation unit 3. Id. at 16:33–52.
`
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`
`The hard disk emulator “is operable conformably to interface
`specifications in conformity with the specifications of an arbitrary hard disk
`drive.” Id. at 4:49–52. During operation, the host computer may read data
`from the optical disk drive of the hard disk emulator. Id. at 16:33–52. In
`particular,
`
`In the case where data to be written sent from the host
`computer is recorded in said hard disk drive or non-volatile
`memory while said host computer reads data already recorded,
`read data is read out from said hard disk drive or non-volatile
`memory and said optical disk drive. If there is no access from
`said host computer, said recorded data is transferred from said
`hard disk drive or non-volatile memory to said optical disk drive
`or a predetermined amount of data adjoining a read data area is
`transferred from the optical disk drive to the hard disk drive or
`non-volatile memory.
`Id. at 2:15–25. The emulation function of the hard disk drive eliminates the
`need for dedicated hardware and software upon incorporation of the optical
`disk drive. Id. at 2:26–29.
`
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`
`Kawasaki’s Figure 4 also is reproduced below:
`
`
`
`Figure 4 depicts a block diagram illustrating a circuit configuration
`embodying the emulation unit depicted in the embodiment of Figure 1. Id.
`at 15:7–9. Emulation unit 3 includes interface bus 14 between first interface
`controller 6 and host computer 1 and interface bus 15 between second
`interface controller 7 and hard drive 4 and optical disk drive 5. Id. at 17:53–
`57. Interface controllers 6 and 7 are linked via data bus 16 and address bus
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`17. Id. at 17:57–18:1. Data transfer controller 8 controls data transfer
`between host computer 1 and the memory device (i.e., Read Only Memory
`(“ROM”) 11, Work Random Access Memory (“RAM”) 12, and memory
`back-up 13) and data transfer between optical disk drive 5 and hard disk
`drive 4. Id. at 17:22–25. Data buffer 9 is operable as a buffer memory for
`such data transfers. Id. at 17:25–26. Central processing unit (“CPU”) 10
`controls emulator unit 3. Id. at 17:27–33.
`2. Alon (Ex. 1037)
`Alon describes an optical disk reader that reads “multiple tracks of
`data from an optical disk simultaneously” to provide a high data transfer
`rate. Ex. 1037, 5:63–66. Alon’s optical disk reader includes a “multi-beam,
`multi-detector pickup assembly for illuminating and reading multiple
`adjacent data tracks.” Id. at 6:6–8.
`
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`
`Alon’s Figure 3 is reproduced below:
`
`
`Figure 3 depicts a block diagram of an illustrative embodiment of a multi-
`beam, multi-detector pickup assembly suitable for use in Alon’s apparatus.
`Id. at 3:34–36. Referring to Figure 3,
`Pickup assembly 40 includes source of laser illumination 41, i.e.,
`a laser diode, diffraction grating 42, beam splitter 43, objective
`lens 44, and photodetector array 46. Diffraction grating 42 splits
`the laser light emitted by laser diode 41 into three (or more)
`illumination beams, which are bent by beam splitter 43 and
`focused by objective lens 44 onto three (or more) adjacent tracks
`of information-bearing pits on optical disk 100.
`Id. at 6:48–56. In particular, Alon describes that the pickup assembly
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`includes “a source of laser illumination, a diffraction grating for splitting the
`laser illumination into [multiple] illumination beams and a corresponding
`number of photodetectors onto which multiple illumination beams, reflected
`from the optical disk, are focused by an optical system.” Id. at 6:16–21.
`Moreover, “[e]ach of the multiple photodetectors . . . generates an electrical
`signal representing data read from a corresponding data track on [the] optical
`disk . . . and provides [the] electrical signal to front end circuitry.” Id. at
`16:23–26. Specifically, each electrical signal is provided to a respective
`track processing circuitry of a multi-track front end circuitry for concurrent
`processing. Id. at 6:27–29; see id., Fig. 5 (a block diagram of front end
`circuitry for extracting data from signals output by the pickup assembly of
`Figure 3).
`3. Schmidt (Ex. 1007)
` Schmidt describes the SCSI bus and IDE Integrated Drive Electronics
`(“IDE”) interface, which both are American Nation Standards Institute
`(“ANSI”) standards. Ex. 1007, Preface. According to Schmidt, these
`interfaces are two of the most important interfaces for computer peripherals
`in use at that time of Schmidt’s publication, and almost all computers at that
`time, from personal computers to workstations to mainframes, were
`equipped with a SCSI interface. Id. The SCSI bus is designed for hard
`drives, as well as tape drives, CD-ROM, scanners, and printers. Id.
`
`4. Discussion
`Petitioner argues that:
`limitation of
`Kawasaki discloses each and every
`independent claims 1 and 43 except Kawasaki does not explicitly
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`disclose, for example, that the hard disk drive interface of the
`host computer is a “multi-purpose interface of the host
`computer” or that its analog data is acquired from “each
`respective analog acquisition channel of a plurality of
`independent acquisition channels.”
`Pet. 11. Petitioner argues, however, that these missing limitations are taught
`by Schmidt and Alon, respectively. Id. at 11–12; see Prelim. Resp. 30. In
`particular, Petitioner argues that Schmidt’s teaching of a SCSI interface
`teaches the recited “multipurpose interface of the host computer.” Pet. 27–
`28 (quoting Ex. 1007, Preface). Moreover, Petitioner argues that, because
`Alon teaches that, referring to Alon’s Figure 2, “apparatus 25 includes a
`multi-beam, multidetector pickup assembly for illuminating and reading
`multiple adjacent data tracks,” Alon teaches that analog data is acquired
`from “each respective analog acquisition channel of a plurality of
`independent analog acquisition channels.” Id. at 22 (quoting Ex. 1037, 6:6–
`8 and Ex. 1001, 11:66–67 (claim 1), 16:54–56 (claim 43)).
`Petitioner argues that a person of ordinary skill in the art would have
`had reason to combine the teachings of Kawasaki and Alon and Kawasaki
`and Schmidt. With respect to the combined teachings of Kawasaki and
`Alon, Petitioner argues that a person of ordinary skill in the art would have
`had reason to modify Kawasaki in view of Alon’s multi-detector system
`“because the modification would have involved the mere use of a known
`technique (use of multiple detectors) to improve a similar device (an optical
`disk drive) in the same way (enable multi-track reading).” Pet. 22 (citing
`Ex. 1003 ¶ 79); see KSR, 550 U.S. at 417. Further, Petitioner argues that
`Kawasaki and Alon are directed to the same field of endeavor, namely,
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`optical disk drives, and that the use of Alon’s multiple detectors in Kawasaki
`would have improved Kawasaki’s optical drive in the same way achieved in
`Alon’s apparatus, namely, by enabling multi-track reading. Pet. 22 (citing
`Ex. 1037, 6:6–8). Thus, the combined teachings of Kawasaki and Alon
`would have resulted in an apparatus having an improved data transfer rate
`and the combined teachings also would have furthered Kawasaki’s objective
`of compensating the “low throughput” of optical disk drives. Id. (citing Ex.
`1036, 1:22–23, 1:42–46; Ex. 1003 ¶ 79).
`With respect to the combined teachings of Kawasaki and Schmidt,
`Petitioner argues that a person of ordinary skill in the art would have had
`reason to use a multi-purpose interface, such as the SCSI interface taught by
`Schmidt, to connect hard disk emulator 2 to host computer 1. Id. at 28
`(citing Ex. 1003 ¶¶ 88–89). A person of ordinary skill in the art also would
`have understood a SCSI interface to be a multi-purpose interface “because it
`is designed for use with multiple devices that can have different functions
`from each other. For example, Schmidt further discloses that ‘[t]he SCSI
`interface is a device independent I/O bus, allowing a variety of devices to be
`linked to a computer system using a single bus.’” Id. (quoting Ex. 1007, 79).
`Patent Owner disagrees with Petitioner’s mapping of limitations of
`claims 1 and 43 onto Kawasaki. See Prelim. Resp. 29. In particular, Patent
`Owner contends that Petitioner confuses “analog signals” taught by
`Kawasaki (Ex. 1036, 16:33–52) with “analog data” recited in claims 1 and
`43 (see supra Section I.C). Patent Owner asserts that “the fact that an
`analog signal is used in a device does not mean it generates or processes
`analog data within the meaning of the ‘437 Patent.” Prelim. Resp. 29
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`(emphases added). Consequently, Patent Owner contends that Petitioner
`fails to demonstrate that Kawasaki teaches all of the limitations of claims 1
`and 43, other than those allegedly taught by Alon or Schmidt. See Pet. 11
`(Kawasaki allegedly teaches all of the limitations of independent claims 1
`and 43, except for a “multi-purpose interface of the host computer” and that
`analog data is acquired from “each respective analog acquisition channel of
`a plurality of independent acquisition channels.”); Prelim. Resp. 30
`(“Petitioner applies Schmidt to the former and Alon to the latter of these
`missing elements from Kawasaki, but neither reference cures the
`deficiencies of Kawasaki with regard to the analog data generating and
`processing device.”). For the reasons set forth below, we are persuaded by
`Patent Owner’s contentions.
`As noted above, each of independent claims 1 and 43 recites that
`“analog data” is acquired and digitized. See supra Section I.C. (emphasized
`language recited in claims 1 and 43). Petitioner argues that:
`In Kawasaki, data recorded on optical disk drive 5 of the hard
`disk emulator 2 can be read by host computer 1 via emulation
`unit 3. (Kawasaki, 16:33–52.) Reading data from an optical disk
`includes generating and processing analog data. (Zadok Decl.,
`¶77.) Specifically, in an optical disk, a laser beam is focused
`onto a track on the disk and the reflected light is detected by an
`optical system (“photodetector” or “optical sensor”) to
`generate an analog electrical signal. (Zadok Decl., ¶77; see also
`Alon, 1:38–47, 4:45–49.) The analog electrical signal is then
`processed by front end circuitry to recover the digital data stored
`on the optical disk. (Zadok Decl., ¶77; see also Alon 4:18–25.)
`The optical system and front end circuitry include analog devices
`and therefore form an “analog acquisition channel.” (Zadok
`Decl., ¶77; see also Alon, 4:23–25, 4:44–48.) Kawasaki thus
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`teaches “acquiring analog data” on an “analog acquisi