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 IPR2016-01842
`Patent 9,189,437
`_______________
`___________________________________
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE .................................. 1
`
`II.
`
`INTRODUCTION ............................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`STATEMENT OF RELIEF REQUESTED ......................................... 1
`
`OVERVIEW OF THE ‘437 PATENT ................................................. 2
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 5
`
`CLAIM CONSTRUCTION .................................................................. 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS ..................... 9
`
`A.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS OF
`REJECTION ........................................................................................................... 12
`PUCCI, SCHMIDT, KEPLEY, SHINOSKY, CAMPBELL AND
`WILSON DO NOT RENDER CLAIMS 1, 4-6, 9-16, 18, 30, 32, 34,
`43 AND 45 OBVIOUS ............................................................................ 12
`1. OVERVIEW OF PUCCI ................................................................ 12
`2. OVERVIEW OF SCHMIDT ......................................................... 13
`3. OVERVIEW OF KEPLEY ............................................................ 13
`
`4. PUCCI, SCHMIDT, KEPLEY, SHINOSKY, CAMPBELL
` AND WILSON DO NOT DISCLOSE THE “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
`ii
`
`
`
`

`

` 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”
` LIMITATION OF INDEPENDENT CLAIM 1 OF THE ‘437
` PATENT ............................................................................................ 14
`
`5. PUCCI, SCHMIDT, KEPLEY, SHINOSKY, CAMPBELL
` AND WILSON DO NOT DISCLOSE THE “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” LIMITATION OF
` INDEPENDENT CLAIM 1 OF THE ‘437 PATENT OR THE
` CORRESPONDING LIMITATION OF INDEPENDENT
` CLAIM 43 OF THE ‘437 PATENT .............................................. 18
`
`6. PUCCI, SCHMIDT, KEPLEY, SHINOSKY, CAMPBELL
` AND WILSON DO NOT DISCLOSE THE “WITHOUT
` REQUIRING ANY USER-LOADED FILE TRANSFER
` ENABLING SOFTWARE TO BE LOADED ON OR
` INSTALLED IN THE COMPUTER AT ANY TIME”
` LIMITATION OF INDEPENDENT CLAIM 1 OF THE ‘437
` PATENT OR THE CORRESPONDING LIMITATION OF
` INDEPENDENT CLAIM 43 OF THE ‘437 PATENT............... 24
`
`7. PUCCI, SCHMIDT, KEPLEY, SHINOSKY, CAMPBELL
`
`
`
`iii
`
`

`

` AND WILSON DO NOT RENDER OBVIOUS DEPENDENT
` CLAIMS 4-6, 9-16, 18, 30, 32, 34 AND 45 OF THE ‘437
` PATENT ........................................................................................... 30
`PUCCI AND SCHMIDT AND PUCCI AND KEPLEY WOULD
`NOT BE COMBINED BY ONE SKILLED IN THE ART ................ 31
`INTER PARTES REVIEW IS UNCONSTITUTIONAL .................... 35
`C.
`IV. CONCLUSION ............................................................................................... 36
`
`B.
`
`
`
`
`
`
`
`
`iv
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`Ex. No.
`2001
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`Ex. No.
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`
`EXHIBIT LIST
`
`Previously and Currently Filed – Patent Owner
`
`
`Description
`U.S. Patent No. 5,508,821 to Murata
`August 24, 2006 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`July 17, 2007 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`January 2, 2008 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`Declaration of Thomas A. Gafford in Support of Patent Owner
`Response (“Gafford Declaration”)
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Claim Construction Memorandum and Order
`issued March 7, 2017
`
`
`
`Previously Filed – Petitioner
`
`Description
`U.S. Patent 9,189,437 to Tasler
`File History Excerpts for U.S. Patent 9,189,437
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 9,189,437
`Curriculum Vitae of Dr. Erez Zadok
`Intentionally left blank
`Intentionally left blank
`“The SCSI Bus and IDE Interface Protocols, Applications and
`Programming,” Schmidt, Friedhelm, 1995
`Intentionally left blank
`U.S. Patent No. 4,727,512 to Birkner
`U.S. Patent No. 4,792,896 to Maclean
`
`v
`
`

`

`1011
`1012
`
`International Publication Number WO 92/21224 to Jorgensen
`Small Computer System Interface-2 (SCSI-2), ANSI X3.131-1994,
`American National Standard for Information Systems (ANSI).
`Operating System Concepts, by Silberschatz et al., Fourth Edition.
`1013
`Microsoft Computer Dictionary, Third Edition, Microsoft Press, 1997.
`1014
`1015-1017 Intentionally left blank
`1018
`IEEE Dictionary
`1019
`Intentionally left blank
`1020
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`1021-1023 Intentionally left blank
`1024
`Declaration of Scott Bennett
`1025-1029 Intentionally left blank
`1030
`Misc. Action No. 07-493 (RMC), MDL No. 1880, Order Regarding
`Claims Construction
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30, 1994
`(“PNP SCSI”)
`1032-1036 Intentionally left blank
`1037
`U.S. Patent No. 6,111,831 to Alon et al.
`1038
`U.S. Patent No. 4,856,871 to Van Sant
`1039
`U.S. Patent No. 5,515,237 to Ogami et al.
`1040
`U.S. Patent No. 5,590,375 to Sangveraphunsiri et al.
`1041
`Pucci, M., “Configurable Data Manipulation in an Attached
`Multiprocessor,” 1991
`U.S. Patent No. 4,790,003 to Kepley et al., titled “Message Service
`System Network”
`U.S. Patent No. 5,081,454 to Campbell, Jr. et al., titled “Automatic
`A/D Converter Operation Using Programmable Sample Time”
`U.S. Patent No. 5,353,374 to Wilson et al., titled “Low Bit Rate Voice
`Transmission for Use in a Noisy Environment”
`U.S. Patent No. 4,065,644 to Shinosky
`1045
`1046-1048 Intentionally left blank
`1049
`’144 German Application (DE 197 08 755)
`1050
`’144 German Application Translated (DE 197 08 755)
`1051
`Intentionally left blank
`1052
`USENIX Declaration
`
`
`1031
`
`1042
`
`1043
`
`1044
`
`
`
`
`
`vi
`
`

`

`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner Apple, Inc. (“Petitioner”) did not submit a statement of material
`
`facts in its Petition for inter partes review. Paper 2 (Petition). Accordingly, no
`
`response to a statement of material facts is due pursuant to 37 C.F.R. § 42.23(a),
`
`and no facts are admitted.
`
`II.
`
`INTRODUCTION
`Patent Owner Papst Licensing GMBH & Co., KG (“Patent Owner”)
`
`respectfully submits this Patent Owner Response under 35 U.S.C. §§ 311-319 and
`
`37 C.F.R. § 42.120. It is being timely filed on or before July 21, 2017 pursuant to
`
`the Scheduling Order issued in this proceeding and the Stipulation Regarding Due
`
`Dates 1 and 2. Paper 11 (Scheduling Order) at 7; Paper 13 (Stipulation Regarding
`
`Due Dates 1 and 2) at 1.
`
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e). Petitioner’s propositions of unpatentability fail
`
`to meet that burden with respect to claims 1, 4-6, 9-16, 18, 30, 32, 34, 43 and 45 of
`
`U.S. Patent No. 9,189,437 (“’437 Patent”).
`
`
`
`
`
`STATEMENT OF RELIEF REQUESTED
`A.
`Pursuant to 35 U.S.C. § 316, Patent Owner respectfully requests that the
`
`1
`
`

`

`Patent Trial And Appeal Board (“Board” or “PTAB”) find that originally issued
`
`claims 1, 4-6, 9-16, 18, 30, 32, 34, 43 and 45 of the ‘437 Patent are valid in view of
`
`the proposed grounds of unpatentability under consideration.
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘437 PATENT
`The ’437 Patent involves a unique 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. Exhibit 1001 (‘437 Patent) 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.
`
`The ‘437 Patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`
`
`2
`
`

`

`without specialized software, while being sufficiently flexible
`
`to operate
`
`independent of device or host manufacturers. Id. at 2:20-41 and 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, 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 and 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.
`
`The interface device disclosed in the ‘437 Patent can 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 (“The interface
`
`device according to the present invention therefore no longer communicates with the
`
`host device or computer by means of a specially 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), and 7:57-64
`
`(describing use of BIOS routines). Similarly, the written description describes also
`
`using drivers included in the operating system. Id. at 5:11-14 (“Communication
`
`
`
`3
`
`

`

`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 the ‘437 Patent’s interface device
`
`instead of, or in addition to, customary drivers which reside in the BIOS. Id. at
`
`10:23-29. Accordingly, the ‘437 Patent contemplated a universal interface device
`
`that could operate independent of the manufacturer of the computer. 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 the ‘437 Patent’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 and FIG. 2.
`
`As is apparent from the title of the ‘437 Patent, the interface device disclosed
`
`is capable of acquiring and processing analog data. As shown in FIG. 2 reproduced
`
`below, the ‘437 Patent 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
`
`
`
`4
`
`

`

`channels 1505 into digital data that may then be processed by the processor 1300.
`
`Id. at 8:60-9:8 and 9:41-56.
`
`
`
`
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`C.
`“The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to have known the relevant art at the time of the invention.” Manual of
`
`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (1) type of problems
`
`
`
`5
`
`

`

`encountered in the art; (2) prior art solutions to those problems; (3) rapidity with
`
`which innovations are made; (4) sophistication of the technology; and (5)
`
`educational level of active workers in the field. In re GPAC, 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995).
`
`Petitioner’s proposed definition of the level of ordinary skill in the art is
`
`partially consistent with Patent Owner’s view. Petitioner asserts that “a person having
`
`ordinary skill in the art (‘POSITA’) at the relevant time, 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.” Paper 2 (Petition) at 8. Petitioner further contends that “[a] POSITA would
`
`also be familiar with operating systems (e.g., MS-DOS, Windows, Unix), their
`
`associated file systems (e.g., 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 contends that the field of the invention relates to “the transfer of
`
`data and in particular to interface devices for communication between a computer or
`
`host device and a data transmit/receive device from which data is to be acquired or
`
`with which two-way communication is to take place.” Exhibit 1001 (‘437 Patent) at
`
`1:18-22. A POSITA would have at least a bachelor’s degree in a related field such as
`
`
`
`6
`
`

`

`computer engineering or electrical engineering and at least three years of experience
`
`in the design, development, and/or testing of hardware and software components
`
`involved with data transfer or in embedded devices and their interfaces with host
`
`systems. Alternatively, a POSITA may have five or more years of experience in these
`
`technologies, without a bachelor’s degree.
`
`The Board determined that there were not meaningful differences between the
`
`parties’ definitions of a POSITA and adopted Petitioner’s assessment of a POSITA
`
`in the Institution Decision. Paper 10 (Institution Decision) at 12. While Patent
`
`Owner believes its proposed definition is more appropriate, it agrees with the Board
`
`that there are not meaningful differences between the parties’ definitions of a
`
`POSITA for purposes of this proceeding.
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board ordinarily construes claim terms
`
`in an unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art. Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 136
`
`S. Ct. 2131, 2146 (June 20, 2016). The broadest reasonable meaning given to claim
`
`language must take into account any definitions presented in the specification. In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass,
`
`
`
`7
`
`

`

`314 F.3d 575, 577 (Fed. Cir. 2002)). Under this 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. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005) (en banc)).
`
`However, because the ‘437 Patent will probably expire prior to the Final
`
`Written Decision in the present proceeding, the Board will likely construe the ‘437
`
`Patent claims based on their ordinary and customary meaning in accordance with
`
`Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Paper 10
`
`(Institution Decision) at 13. In fact, oral argument is not scheduled until January 16,
`
`2018 in this proceeding, and the ‘437 Patent is set to expire on March 3, 2018
`
`pursuant to a terminal disclaimer filed during prosecution of the ‘437 Patent. Paper
`
`11 (Scheduling Order) at 8; Paper 10 (Institution Decision) at 13.
`
`In the Institution Decision, the Board preliminarily adopted a claim
`
`construction related to a “customary device driver” and discussed claim construction
`
`issues related to a “multi-purpose interface.” Paper 10 (Institution Decision) at 13-
`
`17. “Customary device driver” was construed to mean “a driver for a device
`
`normally present in most commercially available host devices (e.g., a hard disk
`
`driver or a SCSI driver).” Id. at 17. “Multi-purpose interface” was not formally
`
`construed, but the Board determined that it at least encompassed a “SCSI interface.”
`
`
`
`8
`
`

`

`Id. at 15.
`
`In the underlying district court litigation related to this IPR, a claim
`
`construction order issued on March 7, 2017 that further construed certain terms of
`
`the ‘437 Patent. A copy of this claim construction order is being included as Exhibit
`
`2006 for the Board’s consideration.
`
`
`
`E. SUMMARY OF PATENT OWNER’S ARGUMENTS
`The Board instituted inter partes review on claims 1, 4-6, 9-12, 14, 15, 30 and
`
`34 of the ‘437 Patent based on Pucci, Kepley and Schmidt. Paper 10 (Institution
`
`Decision) at 37. The Board further instituted inter partes review on claim 16 of the
`
`‘437 Patent based on Pucci, Kepley, Schmidt and Shinosky. Id. at 38. The Board
`
`also instituted review of claims 13 and 18 of the ‘437 Patent in view of Pucci,
`
`Kepley, Schmidt and Campbell. Id. The Board instituted review of claim 32 of the
`
`‘437 Patent based on Pucci, Kepley, Schmidt and Wilson. Id. Finally, the Board
`
`instituted review of claim 43 of the ‘437 Patent over Pucci and Schmidt and claim
`
`45 of the ‘437 Patent over Pucci, Schmidt and Campbell. Id. However, these
`
`proposed grounds of unpatentability fail with respect to all of these claims because
`
`the proposed references and combination of references fail to disclose or suggest
`
`each and every limitation as recited by the ‘437 Patent, and Pucci and
`
`Schmidt/Kepley would not be combined in the manner Petitioner suggests.
`
`Pucci, M., “Configurable Data Manipulation in an Attached Multiprocessor,”
`
`
`
`9
`
`

`

`1991 (“Pucci”), alone or in combination with the other applied prior art, does not
`
`disclose the “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” limitation of
`
`claim 1 of the ‘437 Patent.
`
`Furthermore, Pucci, alone or in combination with the other applied prior art,
`
`does not disclose the “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”
`
`limitation of independent claim 1 of the ‘437 Patent or the corresponding limitation
`
`of independent claim 43 of the ‘437 Patent.
`
`Moreover, Pucci, alone or in combination with the other applied prior art, does
`
`
`
`10
`
`

`

`not disclose the “without requiring any user-loaded file transfer enabling software
`
`to be loaded on or installed in the computer at any time” limitation of independent
`
`claim 1 of the ‘437 Patent or the corresponding limitation of independent claim 43
`
`of the ‘437 Patent.
`
`In addition, Petitioner’s assertions of obviousness based on combining the
`
`primary reference, Pucci, with teachings of the secondary reference, The SCSI Bus
`
`and IDE Interface Protocols, Applications and Programming, by Schmidt, First
`
`Edition, Addison-Wesley, 1995 (“Schmidt”), are mere conclusory statements that
`
`do not account for the manner in which the references teach away from the proposed
`
`combination. The proposed combination of Pucci’s specialized device with SCSI
`
`signaling for a standard hard disk drive as discussed in Schmidt would change the
`
`principle of operation of Pucci, produce a seemingly inoperative device, and/or
`
`create a device that no longer achieved the intended purpose of Pucci. In addition,
`
`combining Pucci’s specialized device that permits data to flow into the host as it is
`
`acquired, rather than being stored in its entirety in a file and then transferred, with
`
`Kepley’s file system would significantly impact Pucci’s principle of operation and
`
`prevent Pucci from achieving its intended purpose. Because Petitioner fails to
`
`provide a persuasive fact-based analysis with some rational underpinning to support
`
`its combination theories of obviousness, Petitioner cannot fulfill its burden of
`
`showing by a preponderance of the evidence that claims 1, 4-6, 9-16, 18, 30, 32,
`
`
`
`11
`
`

`

`34, 43 and 45 of the ‘437 Patent are obvious.
`
`Finally, the IPR process violates the Constitution by extinguishing private
`
`property rights through a non-Article III forum without a jury. To the extent any
`
`claims of the ‘437 Patent are found invalid in this IPR, Patent Owner hereby
`
`challenges the constitutionality of the process of invalidation and reserves all rights
`
`related thereto.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS
`OF REJECTION
`
`
`A.
`
`PUCCI, SCHMIDT, KEPLEY, SHINOSKY, CAMPBELL AND
`WILSON DO NOT RENDER CLAIMS 1, 4-6, 9-16, 18, 30, 32, 34,
`43 AND 45 OBVIOUS
`
`1.
`
`OVERVIEW OF PUCCI
`
`
`
`
`The ION Data Engine is described in the Pucci reference. The ION Data
`
`Engine is a multiprocessor tasking system for providing data manipulation services
`
`for collections of workstations. Exhibit 1041 (Pucci) at 217. The ION Data Engine
`
`allows applications residing in the workstation to implement specific functions by
`
`enabling the reading or writing of specific block addresses within the ION drive. Id.
`
`at 221.
`
`The ION system couples an analog to digital converter (“ADC”) to a SCSI
`
`target interface through a memory buffer. The SCSI target responds to disk drive
`
`commands for reading. However, access by the host to ADC data is done by means
`
`of the host reading a single block address in the simulated disk drive. Thus, the ADC
`
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`data is not provided by files in a file system. The ION reference also has the ability
`
`to emulate a file system, but it teaches that this is only used for disk drive
`
`performance analysis, not for ADC access. Id. at 236. As such, the reference teaches
`
`away from accessing ADC data in the form of files because files exist but are not
`
`used for ADC data. ADC data is accessed by an application that does not use the
`
`host computer’s file system, and instead reads a certain disk block to obtain ADC
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`data. Id. at 221.
`
`2.
`
`OVERVIEW OF SCHMIDT
`
`
`
`As the Board stated, “Schmidt describes the SCSI bus and IDE Integrated
`
`Drive Electronics (“IDE”) interface, which both are American Nation[al] Standards
`
`Institute (“ANSI”) standards.” Paper 10 (Institution Decision) at 21; Exhibit 1007
`
`(Schmidt) at Preface. “According to Schmidt, these interfaces are two of the most
`
`important interfaces for computer peripherals in use at that time, and almost all
`
`computers at that time, from PCs 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.
`
`3.
`
`OVERVIEW OF KEPLEY
`
`
`The Kepley invention “relates to business communication systems and, in
`
`particular, to a message service system network that interconnects a plurality of
`
`message service systems and provides a voice mail message transfer capability
`
`
`
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`between voice mail message service systems.” Exhibit 1042 (Kepley) at Abstract.
`
`“The voice mail message transfer is performed as a computer-to-computer data file
`
`transfer operation over high speed data lines.” Id. “The data file consists of the
`
`digitally encoded and compressed voice mail message to which is appended the
`
`message sender’s name and telephone number as well as the message recipient’s
`
`telephone number.” Id.
`
`4.
`
`PUCCI, SCHMIDT, KEPLEY, SHINOSKY, CAMPBELL
`AND WILSON DO NOT DISCLOSE THE “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” LIMITATION OF INDEPENDENT
`CLAIM 1 OF THE ‘437 PATENT
`
`
`Pucci, Schmidt and Kepley do not disclose the “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
`
`
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`digitized analog data” limitation of independent claim 1 of the ‘437 Patent.1 Exhibit
`
`2005 (Gafford Declaration) at ¶¶ 46-47.
`
`Pucci fails to disclose this limitation because the ION Node stores and
`
`delivers processed analog sensor data to the ION Workstation using a first in/first
`
`out (FIFO) data write and read approach, and not a file format. Exhibit 2005
`
`(Gafford Declaration) at ¶¶ 46-47.
`
`Pucci describes the digitization of analog data as follows:
`
`The third task interfaces to the SCSI bus and returns data to the workstation
`when requested. This task defines a SCSI action function which contains 4
`block addresses for each of 5 A-to-D channels. Each channel contains a block
`address to start conversion, stop conversion, return status, and retrieve A-to-
`D data.
`The part of the application that runs on the workstation requests converted
`data in response to a start/stop signal from other system hardware, which
`indicates the beginning and end of a recording session. Upon start, the
`workstation reads the A-to-D start address for an appropriate channel,
`activating the device. It then retrieves data by reading the data block address
`for that channel, while also monitoring for an end-of-session indication.
`When the latter occurs, the workstation reads the stop address, halting the data
`conversion. It continues to read the data address until all buffered data have
`been obtained. The channel is then available for reuse.
`Exhibit 1041 (Pucci) at 232 (emphasis added).
`
`The above passage shows that the ION Node uses a first in/first out approach
`
`
`1 Neither the Petitioner in the Petition nor the Board in the Institution Decision
`applied Shinosky, Campbell or Wilson to this claim limitation. Consequently, no
`analysis of Shinosky, Campbell or Wilson is necessary herein. Indeed, with respect
`to the “at least one file of digitized analog data” portion of this limitation, only Pucci
`and Kepley were applied and even Schmidt was not cited as disclosing this
`limitation.
`
`
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`to data writing and reading, and not a file format approach, because the data is being
`
`accessed by the workstation while new data is being collected. New data is
`
`collected until the workstation reads a stop address and previously collected data is
`
`read “until all buffered data have been obtained.” Id. Thus, data is being buffered
`
`and not being stored in a file. Exhibit 2005 (Gafford Declaration) at ¶¶ 48-49.
`
`Furthermore, it would not be obvious to a POSITA to store sensor data in a
`
`file in a system where one may choose to access and read data that was first
`
`available prior to all of the data of a “file” being written, such as in the ION voice
`
`messaging application. Exhibit 2005 (Gafford Declaration) at ¶ 50.
`
`Consequently, Pucci fails to disclose the “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” limitation of independent claim 1 of the ’437 Patent. Exhibit
`
`2005 (Gafford Declaration) at ¶ 51.
`
`Petitioner argues that alternatively, Kepley discloses a “digitally encoded and
`
`compressed voice mail message” as a file. Paper 2 (Petition) at 23. While it is
`
`undoubtedly true that other computer systems existed at the time of the invention
`
`
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`that used files for other purposes, this is irrelevant to an obviousness analysis related
`
`to the combination of Pucci with Kepley. The teaching of the Pucci reference is
`
`that memory buffered data transfer, not files, is the developer’s requirement for
`
`moving analog data in the Pucci system. The design of the ION Node permits data
`
`to flow into the host as it is acquired, rather than to be stored in its entirety in a file
`
`and then transferred, and that alone is a major difference in performance that
`
`Petitioner does not address. In other words, it would significantly impa