Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: April 17, 2017
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`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 IPR2016-01841
`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 IPR2016-01841
`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, 32, 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 IPR2016-01841
`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.
`
`IPR2016-01840
`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 IPR2016-01841
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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. 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
`
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`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, 32, 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 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
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`
`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
`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;
`
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`
`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).
`
`D. Prosecution History
`The ’437 patent issued from U.S. Application No. 11/467,092 (“the
`’092 Application”). Ex. 1001, [21]. The ’092 Application is a continuation
`of US. Application No. 11/078,778 (“the ’778 Application”), which in turn
`is a continuation of U.S. Application No. 10/219,105 (“the ’105
`Application”), filed on August 15, 2002, and now is issued as U.S. Patent
`No. 6,895,449. Ex. 1001, [60]. The ’105 Application is a division of U.S.
`
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`Application No. 09/331,002 (“the ’002 Application”), which was filed June
`14, 1999, and now is issued as U.S. Patent No. 6,470,399. Ex. 1001, [60].
`U.S. Patent No. 8,966,144 B2 (the ’144 patent”) has substantially the same
`disclosure and also claims the same priority to the ’778 Application, the ’105
`Application, and the ’002 Application. Ex. 2003, [60]. The Board has
`previously denied institution of inter partes review of claims of the ’144
`patent, which include the same disputed limitations recited in claim 1 of the
`’437 patent, and claims of the U.S. Patent No. 8,504,746 B2 (“the ’746
`patent”),1 which include disputed limitations similar to those recited in claim
`43 of the ’437 patent, each of which was challenged on grounds relying on
`the teachings of U.S. Patent No. 5,508,821 to Murata (“Murata ’821”), alone
`or in combination with other references. See Canon, Inc. v. Papst Licensing
`GmbH & Co., Case IPR2016-01202, slip op. at 9 (PTAB Dec. 15, 2016)
`(Paper 15)2; Canon, Inc. v. Papst Licensing GmbH & Co., Case IPR2016-
`
`
`1 The ’746 patent has substantially the same disclosure and also claims the
`same priority to the ’778 Application, as the ’144 patent. Canon, Inc. v.
`Papst Licensing GmbH & Co., Case IPR2016-01206, Ex. 1001, [63].
`2 Patent Owner notes that Murata ’821 was at issue in IPR2016-01202; but
`that U.S. Patent No. 5,506,692 to Murata (“Murata ’692”) is at issue in this
`proceeding. Prelim. Resp. 22 n.1. Murata ’692 issued from an application
`that is a division of the application that issued as Murata ’821. See Ex.
`1008, [62]; Ex. 2001, [21]. Murata ’821 and Murata ’692 were cited to the
`Office during prosecution of the ’437 patent on the same date, August 24,
`2006, and share the same disclosure. See Ex. 2002, 5 (Information
`Disclosure Statement filed in the ’437 patent). Patent Owner contends, and
`we agree, that, apart from the claims and the recitation of the claim to
`priority, there is no significant, substantive difference between the
`disclosures of Murata ’821 and Murata ’692. See Prelim. Resp. 22 n.1
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`01206, slip op. at 10 (PTAB Dec. 15, 2016) (Paper 9).3
`On August 24, 2006, the same day that the ’092 Application was filed,
`Applicant filed a preliminary amendment in the ’092 Application including
`remarks explicitly distinguishing the amended claims over Murata ’821. Ex.
`2004, 2, 5–6. Specifically, Applicant explained that “[a]ll of the claims
`presented in this preliminary amendment generally require that the ADGPD
`send a response signal that allows a [personal computer (“PC”)] to
`automatically and without user intervention recognize that it can
`communicate with the ADGPD as if it were a commercially available mass
`storage device.” Id. at 5 (emphasis in original). Applicant added:
`As one example [Murata ’821] does not teach or suggest, for
`example, the above-noted “automatic recognition” feature
`because, for example, the system disclosed therein is UNIX
`based. As readily apparent to one of ordinary skill in the relevant
`art, such UNIX based systems affirmatively require user
`intervention in order to operate and use the scanner disclosed in
`[Murata ’821].
`Id. at 6 (emphasis added).
`Murata ’821 was discussed at least two subsequent times in
`supplemental preliminary amendments dated July 17, 2007, and January 2,
`2008. Ex. 2005, 1 (“The scanner related references (e.g., [Murata ’821])
`also require user intervention of some sort to allow scanned images to be
`
`
`(“there is no substantive difference between these patent disclosures”).
`Thus, we are persuaded that arguments with respect to Murata ’821 are
`equally applicable to Murata ’692.
`3 Murata ’821 also was at issue in IPR2016-01206.
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`transferred over to a personal computer.”); Ex. 2006, 2–4 (“Murata [’821]
`does not, for example, teach or suggest structure that corresponds to the
`above-described claim feature [reciting no user loading of applications and
`no used interaction with a device external to the ADGPD]); see Ex. 1002,
`610–615, 645–648 (Part 2 of the ’437 patent file history reproducing the
`same documents).
`Applicant noted that, “[i]n direct contrast to the claimed subject
`matter, all devices disclosed in the [Murata] ’821 patent affirmatively
`require intervention in order to cause the PC to understand how to
`communicate with the scanner disclosed in the patent.” Ex. 1002, 612
`(emphasis added). The remarks accompanying the January 2, 2008,
`amendment detailed the differences between Murata ’821 and the claims as
`follows:
`
`Column 4, lines 20–35 of [Murata ’821] state that an
`“mkfs” or “newfs” UNIX command must be executed before the
`scanner can be recognized. These commands are operating
`system commands, and have to be entered by the user or be
`embedded in an application program running on a workstation to
`which the [Murata] ’821 patent scanner is connected. The
`commands require parameters to be given, including at least
`mkfs i-node device_name. This means that, for example, the
`user has to enter the node at which the file system is to be made
`and the device name (associated with the device file and driver
`in the system). These parameter values are not standard and may
`differ according to the actual hardware configuration of the
`workstation. If these commands are embedded in an application
`program, the application program can only be successfully run
`on different workstations if there is an appropriate means for
`entering the parameters by the user.
`
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`
`As readily apparent to one of ordinary skill in the relevant
`art, the UNIX operating system of [Murata ’821] does not
`automatically recognize devices, nor does it perform data
`transmission with a device even though the device may emulate
`the UNIX file system. Detailed operator instructions or an
`application program containing the embedded instructions is
`required to administer and coordinate the data exchange
`described in [Murata ’821]. For this reason alone, for example,
`the new claims should be found to be patentable over [Murata
`’821].
`
`Ex. 2006, 3–4 (emphases added); see Ex. 1002, 612–613 (Part 2 of the ’437
`patent file history reproducing the same documents).
`On August 31, 2009, Applicant again amended its proposed claims,
`including changing several instances of the term “user” to “end user.” See
`Ex. 1002, 277 (Part 1 of the ’437 patent file history introducing new claim
`239). Applicant explained that “additional language has been added into all
`of the new claims to further clarify the differences between them and the
`prior art,” including that
`the processor executes at least one instruction to cause one or
`more user-selected files to be transferred to a particular computer
`with which the claimed device is interfaced without requiring
`any end user to load any file transfer enabling software at any
`time onto the PC after it has been sold to its initial end user.
`Id. at 299. Specifically, Applicant argued that, “if it were proper to
`[combine the teachings of Hashimoto and Kerigan] (which it is not), the
`resulting combination of Hashimoto, Smith, Ristelhueber, Shinohara and
`Kerigan does not result in the invention of claim 239 because, for example,
`the resulting combination requires user-loaded software, which is the
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`antithesis of the multi-use automatic processor claim feature.” Id. at 306
`(emphasis in original).
`The ’092 Application issued as the ’437 patent on November 17,
`2015. Ex. 1001, [45].
`
`E. Applied References
`
`
`
`1008
`
`1024
`1026
`
`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”)4
`U.S. Patent No. 5,506,692 to Murata, filed on March 23,
`1993, issued April 16, 1996 (“Murata ’692”)
`Declaration of Mr. Scott Bennett
`U.S. Patent No. 4,698,131 to Araghi et al., issued on October
`6, 1987 (“Araghi”)
`U.S. Patent No. 5,442,465 to Compton, issued on August 15,
`1995 (“Compton”)
`U.S. Patent No. 5,706,216 to Reisch, filed on July 28, 1995
`(“Reisch”)
`U.S. Patent No. 4,430,673 to Salomon et al., issued on
`February 7, 1984 (“Salomon”)
`Misc. Action No. 07-493 (RMC), MDL No. 1880, Order
`Regarding Claims Construction
`Pet. v–vi, 4–5.
`
`1027
`
`1028
`
`1029
`
`1030
`
`
`4 See Ex. 1024 ¶¶ 23–28.
`
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`Case IPR2016-01841
`Patent 9,189,437 B2
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5–6)5:
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1, 5, 6, 9–12, 14–16, 30,
`34, and 43
`
`35 U.S.C. § 103(a) Murata ’692, Saloman,
`and Schmidt
`
`4
`
`13, 18, and 45
`
`32
`
`35 U.S.C. § 103(a) Murata ’692, Saloman,
`Schmidt, and Araghi
`35 U.S.C. § 103(a) Murata ’692, Saloman,
`Schmidt, and Compton
`35 U.S.C. § 103(a) Murata ’692, Saloman,
`Schmidt, and Reisch
`
`II. ANALYSIS
`Petitioner asserts that claims 1, 4–6, 9–16, 18, 30, 32, 34, 43, and 45
`of the ’437 patent are unpatentable under 35 U.S.C. § 103(a) as rendered
`obvious over Murata ’692, Saloman, and Schmidt, alone or in combination
`with another reference. Pet. 11–62. Petitioner asserts, however, that the
`challenged independent claims, claims 1 and 43, are unpatentable based
`solely on the combined teachings of Murata ’692, Saloman, and Schmidt.
`Id. at 13–38 (claim 1), 50–57 (claim 43). Petitioner does not rely on the
`
`
`5 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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`other applied references to teach the limitations of these independent claims.
`Id. at 11–13, 38–50, 57–62.
`Patent Owner contends that we should reject this Petition under 35
`U.S.C. § 325(d) because the disclosure of Murata ’692 was addressed
`explicitly during the prosecution of the ’437 patent on the same or
`substantially the same arguments now presented by Petitioner. Prelim. Resp.
`11, 21–27.
`For the reasons discussed below, we agree with Patent Owner and
`decline to institute inter partes review on any of the grounds asserted in this
`Petition.
`
`A. Overview of Murata ’692
`Murata ’692 discloses an image scanner used with an external host
`computer. Ex. 1008, Abs. According to Murata ‘692, the image scanner
`includes an optical system and charge-coupled device (“CCD”) image sensor
`for reading an image of a document, a central processing unit (“CPU”), a
`nonvolatile memory, and “an interface means for connecting the image
`scanner to an external host apparatus, and a file system emulation means for
`emulating a file system contained in the external host computer.” Id. at
`1:64–67, 7:61–65. An object of Murata ’692 is “to provide an improved
`image handling apparatus . . . which requires no preparation of any new
`device driver.” Id. at 1:58–61.
`Murata ’692 explains that “[b]ecause an operating system of a
`computer constructs a file system in a hard disc, there invariably exists a
`device driver for the hard disc.” Id. at 2:5–7. Moreover, because Murata
`’692’s image scanner includes a file system emulation means, control of the
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`image scanner or transfer of image data “can be carried out using the device
`driver for existing hard discs” meaning “it is not necessary to prepare the
`device driver for each type of computer if the file system of the computer is
`the same.” Id. at 2:12–22. In short, the image scanner “can be connected to
`any one of various types of computers having the same file system, e.g. any
`one of all computers having software called the ‘UNIX’ as an operating
`system.” Id. at 2:18–25.
`
`B. Arguments
`Petitioner includes the prosecution history of the ’437 patent as an
`exhibit (Ex. 1002 (Parts 1 and 2)), but does not specifically address the
`contents of the prosecution history, including the various preliminary
`amendments or the discussion of the disclosure of Murata ’821 during the
`prosecution of the ’437 patent. See Ex. 1003 ¶ 40 (sole mention of Ex. 1002
`by Petitioner’s declarant). Moreover, with regard to the negative limitations
`of claim 1, i.e., “(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” (Ex.
`1001, 12:17–20), and of claim 43, i.e., “without requiring the user to load the
`device driver” (id. at 17:9–10), Petitioner argues that Murata ’692 teaches or
`suggests these limitations. Pet. 31–33, 55–56. For the following reasons,
`we are not persuaded by Petitioner’s arguments.
`1. 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
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`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
`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)). 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
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`Case IPR2016-01841
`Patent 9,189,437 B2
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`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.
`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.
`2. Claim 1
`Claim 1 recites that
`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.
`Ex. 1001, 12:11–20 (emphasis added). With respect to claim 1, Petitioner
`argues that, “[i]n order to appear like a hard disc to workstation 21, a hard
`disc file system is prepared in image scanner 20 the first time it is connected
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`to workstation 21.” Pet. 25–26 (citing Ex. 1008, 4:26–29). In particular,
`Petitioner argues that “workstation 21 recognizes image scanner 20 as a hard
`disc before the hard disc file system is prepared in image scanner 20.” Id. at
`26 (emphasis in original; citing Ex. 1003 ¶¶ 92–93); see Ex. 1008, 4:28–32
`(“In practice, an ‘mkfs’ or ‘newfs’ command of the ‘UNIX’ is executed. At
`this moment, the operating system provides a device file and a device driver
`required for operating the hard disc as those required for preparing the file
`system.” (emphasis added)). Petitioner argues that, “[b]ecause Murata
`[’692] uses a hard disc device file and device driver to prepare the file
`system in image scanner 20, workstation 21 must recognize image scanner
`20 as a hard disc before the file system is prepared.” Pet. 26 (citing Ex.
`1003 ¶ 93). Nevertheless, Petitioner acknowledges that “Murata [’692] does
`not explicitly disclose how workstation 21 recognizes image scanner 20 as a
`hard disc when image scanner 20 is connected to workstation 21.” Id.
`(emphasis in original). Further, claim 1 recites that the end user is not
`required “to load any software onto the computer at any time” and that the
`end user is not required “to interact with the computer to set up a file system
`in the ADGPD at any time.” Ex. 1001, 12:17–20 (emphases added); see
`Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir.
`2012) (“Negative limitations are adequately supported when the
`specification describes a reason to exclude the relevant limitation.”).
`Petitioner argues that it was known that “SCSI bus initialization
`between a host computer and a peripheral device included the peripheral
`device identifying its device class and type to the host computer.” Pet. 26–
`27 (citing Ex. 1003 ¶ 93; Ex. 1007, 138). Thus, Petitioner concludes that
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`“because Murata [’692]’s image scanner 20 is designed to emulate a hard
`disc, a [person of ordinary skill in the art] would also have found it obvious
`to have image scanner 20 return the ‘hard disk’ class (misidentifying itself as
`a member of the hard disk class even though it is not itself a hard disk) in its
`response to the INQUIRY command from workstation 21,” as taught by
`Schmidt. Id. at 29 (citing Ex. 1003 ¶ 94). Although Petitioner’s arguments
`may explain how the teachings of a SCSI interface may be combined with
`the teachings of the emulated hard drive of Murata ’692, Petitioner does not
`argue that Schmidt and/or Salomon teaches the negative limitations of
`claim 1. Id. at 31–33; see Ex. 1003 ¶ 129 (citing only to Murata ’692).
`3. Claim 43
`Claim 43 recites that “the ADGPD [is] 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, 17:6–10 (emphasis
`added). With respect to claim 43, Petitioner argues that “Murata [’692]
`discloses that ‘image scanner 20 looks like the hard disc from the
`workstation 21 and can be handled as the hard disc.’” Pet. 56 (quoting
`Ex. 1008, 4:20–22 (emphasis in original)). Murata ’692 teaches that “no
`preparation of any new device driver” is needed for image scanner 20. Id.
`(quoting Ex. 1008, 1:58–61 (emphasis added)). Consequently, Petitioner
`argues that the combined teachings of Murata ’692, Salomon, and Schmidt
`accomplish file transfers using existing hard disc drivers. Id. Thus,
`Petitioner argues that the file transfers taught by the combination of Murata
`’692, Salomon, and Schmidt do not require “the user to load the device
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`driver.” Id. (quoting Ex. 1003 ¶ 185). Petitioner does not argue that
`Schmidt and/or Salomon teaches the negative limitation of claim 43.Pet. 56;
`see Ex. 1003 ¶ 185 (citing only to Murata ’692).
`
`C. 35 U.S.C. § 325(d)
`The Board may reject a Petition requesting institution of inter partes
`review because “the same or substantially the same prior art or arguments
`previously were presented to the Office.” 35 U.S.C. § 325(d); 37 C.F.R.
`§ 42.3(a). Patent Owner contends that
`Petitioner argues here that Murata [’692] discloses the
`limitations related to loading software and drivers onto the
`computer. In particular, Petitioner applies Murata for the
`“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