Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Entered: March 10, 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 IPR2016-01843
`Patent 6,470,399 B1
`____________
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
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` Paper 13
`
`
`
` Entered: March 10, 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 IPR2016-01843
`Patent 6,470,399 B1
`____________
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2016-01843
`Patent 6,470,399 B1
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1, 3, 5, 11, and 14 (“the challenged claims”) of U.S. Patent
`No. 6,470,399 B1 (Ex. 1001, “the ’399 patent”). Paper 2 (“Pet.”). Papst
`Licensing GmbH & Co., KG (“Patent Owner”), filed a Preliminary
`Response. Paper 12 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we determine that, on this record, Petitioner has not established a reasonable
`likelihood that it would prevail with respect to any of the challenged claims.
`We hereby decline to institute an inter partes review in this proceeding.
`
`A. Related Matters
`The parties indicate that the ’399 patent is involved in Papst Licensing
`GmbH & Co. KG v. Apple Inc., Case No. 6-15-cv-01095 (E.D. Tex.) and
`other proceedings. Pet. 2–3; Paper 11, 2–5.
`
`B. The ’399 Patent
`The ’399 patent describes interface devices 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, 1:9–13,
`1:48–51. According to the ’399 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
`2
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`Case IPR2016-01843
`Patent 6,470,399 B1
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`systems. Id. at 1:65–2:12. Several solutions to this problem were known in
`the art. Id. at 2:16–3:21. For example, IOtech introduced an interface
`device for laptops, using a plug-in card for converting the personal computer
`memory card association (PCMCIA) interface into a known standard
`interface (IEEE 1284). Id. at 2:19–24. The plug-in card provided a printer
`interface for enhancing data transfer rates. Id. at 2:24–28. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:6–10. The interface appeared as a floppy
`disk drive to the host, allowing a floppy disk drive and another peripheral
`device to be connected to the host device. Id. at 3:13–15.
`The ’399 patent indicates that its “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 4:23–27. Figure 1 of the ’399 patent, reproduced below,
`illustrates a block diagram of an interface device.
`
`
`As shown in Figure 1 above, interface device 10 connects to a host
`device via host line 11, and to a data transmit/receive device via output
`
`3
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`Case IPR2016-01843
`Patent 6,470,399 B1
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`line 16. Id. at 5:47–63. 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)—which includes both an interface card and the driver for
`the interface card. Id. at 4:40–46, 9:29–34. According to the ’399 patent,
`SCSI interfaces were known to be present on most host devices or laptops.
`Id. at 9:29–34. By using a standard interface of a host device and by
`simulating an input/output device to the host device, the interface device “is
`automatically supported by all known host systems without any additional
`sophisticated driver software.” Id. at 12:23–29.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 11, and 14 are independent. Each
`of claims 3 and 5 depends directly from claim 1. Claim 1 is illustrative:
`1. An interface device for communication between a host device,
`which comprises drivers for input/output devices customary in a
`host device and a multi-purpose
`interface, and a data
`transmit/receive device, the data transmit/receive device being
`arranged for providing analog data, comprising:
`a processor;
`a memory;
`a first connecting device for interfacing the host device with the
`interface device via the multi-purpose interface of the host
`device; and
`a second connecting device for interfacing the interface device
`with the data transmit/receive device, the second connecting
`device including a sampling circuit for sampling the analog data
`
`4
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`Patent 6,470,399 B1
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`
`provided by the data transmit/receive device and an analog-to-
`digital converter for converting data sampled by the sampling
`circuit into digital data,
`wherein the interface device is configured by the processor and
`the memory to include a first command interpreter and a second
`command interpreter,
`wherein the first command interpreter is configured in such a
`way that the command interpreter, when receiving an inquiry
`from the host device as to a type of a device attached to the
`multi-purpose interface of the host device, sends a signal,
`regardless of the type of the data transmit/receive device attached
`to the second connecting device of the interface device, to the
`host device which signals to the host device that it is an
`input/output device customary in a host device, whereupon the
`host device communicates with the interface device by means of
`the driver for the input/output device customary in a host device,
`and
`wherein the second command interpreter is configured to
`interpret a data request command from the host device to the type
`of input/output device signaled by the first command interpreter
`as a data transfer command for initiating a transfer of the digital
`data to the host device.
`
`Ex. 1001, 12:42–13:12.
`
`
`
`D. Prior Art Relied Upon
`Petitioner submitted the references listed below with its Petition.
`Ard
`
`US 5,915,106
`
`June 22, 1999
` Filing date March 20, 1997
`US 5,303,064
`
`Apr. 12, 1994
`US 5,489,772
`
`Feb. 6, 1996
`
`Johnson
`Webb
`
`(Ex. 1046)
`(Ex. 1047)
`(Ex. 1048)
`
`5
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`Patent 6,470,399 B1
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`
`FRIEDHELM SCHMIDT, THE SCSI BUS AND IDE INTERFACE PROTOCOLS,
`APPLICATIONS AND PROGRAMMING, (J. Michael Schultz trans., Addison-
`Wesley Publishing Company 1995) (Ex. 1007, “Schmidt”). 1
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`Interface-2, ANSI X3.131-1994, 1–438 (1994) (Ex. 1012, “the SCSI
`Specification”).2
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5)3:
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1, 3, 11, and 14
`
`§ 103(a) Ard, Schmidt, and Webb
`
`5
`
`
`
`§ 103(a) Ard, Schmidt, Webb, and Johnson
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`
`1 Citations to Schmidt refer to the original page numbers.
`2 Citations to the SCSI Specification refer to the original page numbers.
`3 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§§ 102, 103, and 112 in this Decision.
`6
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`Case IPR2016-01843
`Patent 6,470,399 B1
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`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this
`Decision, we find it necessary to address only the claim term “multi-purpose
`interface.”
`
`“multi-purpose interface”
`Claim 1 recites “a first connecting device for interfacing the host
`
`device with the interface device via the multi-purpose interface of the host
`device.” Ex. 1001, 12:50–51. The Specification of the ’399 patent describes
`“the interface device according to the present invention is to be attached to a
`host device by means of a multi-purpose interface of the host device which
`can be implemented, for example, as an SCSI interface or as an enhanced
`printer interface.” Id. at 4:40–44 (emphases added). The Specification also
`indicates that SCSI interfaces were known to be present on most host
`devices or laptops. Id. at 9:33–34. In light of the Specification, we construe
`the claim term “multi-purpose interface” to encompass a “SCSI interface.”
`
`7
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`B. Principles of Law
`
`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 ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner’s
`declarant, Erez Zadok, Ph.D., testifies that a person with 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 ¶ 29. Dr. Zadok further testifies that such an
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`Case IPR2016-01843
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`
`artisan 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 contends that an ordinarily skilled
`artisan would have at least three years of experience, or, alternatively, five or
`more years of experience without a bachelor’s degree. Prelim. Resp. 5–7.
`We do not observe a meaningful differences 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.
`2001). Moreover, Dr. Zadok appears to satisfy either assessment. Our
`analysis in this Decision is supported by either assessment, but, for purposes
`of this Decision, we adopt Petitioner’s assessment.
`
`D. Obviousness over Ard in Combination with Other References
`
`Each of Petitioner’s asserted grounds of unpatentability relies on Ard.
`Pet. 5. Ard has a filing date of March 20, 1997, which is after the ’399
`patent’s foreign priority date of March 4, 1997. Ex. 1046 at [22]; Ex. 1001
`at [30]. Petitioner asserts that the challenged claims of the ’399 patent are
`not entitled to the benefit of the filing date of German Patent Application
`No. DE 197 08 755 A1 (Ex. 1049) (Ex. 1050, English translation, “the
`
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`German Priority Application”)4 because the German Priority Application
`allegedly lacks adequate written description support for the subject matter
`recited in the challenged claims. Pet. 9–14. Patent Owner opposes. Prelim.
`Resp. 18–24.
`For the reasons that follow, we determine that Petitioner has not
`established sufficiently that the challenged claims are not entitled to the
`benefit of the German Priority Application’s filing date. Consequently,
`Petitioner fails to make a threshold demonstration that Ard is prior art to the
`challenged claims of the ’399 patent in this proceeding. 35 U.S.C. § 311(b);
`37 C.F.R. § 42.104(b)(2).
`
`Principles of Law
`Under 35 U.S.C. § 119, a patent claim is entitled to the benefit of a
`foreign priority date if the corresponding foreign application supports the
`claim in the manner required by 35 U.S.C. § 112. In re Gosteli, 872 F.2d
`1008, 1010 (Fed. Cir. 1989). The test for determining compliance with the
`written description requirement under 35 U.S.C. § 112, ¶ 1, is whether the
`original disclosure of the earlier-filed application reasonably would have
`conveyed to one with ordinary skill in the art that the inventor had
`possession the claimed subject matter at the time of the earlier-filed
`application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010) (en banc); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
`1983).
`
`
`4 In this Decision, we cite to the English translation of the German priority
`application (Ex. 1050).
`
`10
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`Case IPR2016-01843
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`
`Multi-Purpose Interface
`Each of the challenged claims requires a multi-purpose interface of a
`computer. For instance, claim 1 recites “a first connecting device for
`interfacing the host device with the interface device via the multi-purpose
`interface of the host device.” Ex. 1001, 12:50–52 (emphasis added).
`Petitioner argues that the German Priority Application does not
`explicitly or inherently disclose a multi-purpose interface of a computer.
`Pet. 9–14. As support, Petitioner proffers a comparison chart between the
`’399 patent and the German Priority Application to highlight that the
`concept of a multi-purpose interface was added as a new embodiment after
`the filing of the German Priority Application. Id. at 11–13. According to
`Dr. Zadok’s testimony, the inventor did not recognize BIOS routines
`implementing SCSI commands as a multi-purpose interface. Ex. 1003
`¶ 134; Pet. 13.
`Patent Owner counters that a person with ordinary skill in the art
`would have recognized that the German Priority Application discloses a
`multi-purpose interface because it describes SCSI interfaces, which were
`known by a person with ordinary skill in the art to be multi-purpose
`interfaces. Prelim. Resp. 18–24.
`Based on the evidence in this record, we are not persuaded by
`Petitioner’s arguments or supporting evidence. Pet. 9–14; Ex. 1003 ¶ 134.
`Rather, we agree with Patent Owner that Petitioner has not demonstrated
`sufficiently that the German Priority Application lacks adequate written
`description support for a “multi-purpose interface” of a host computer.
`Prelim. Resp. 18–24.
`
`11
`
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`Case IPR2016-01843
`Patent 6,470,399 B1
`
`
`As discussed above in our claim construction analysis, in light of the
`Specification of the ’399 patent, we construe the claim term “multi-purpose
`interface” to encompass a SCSI interface. Significantly, the German Priority
`Application discloses a SCSI interface of a host computer. For example, the
`German Priority Application discloses the following:
`The first connecting device 12 in Fig. 1 includes the following
`components for the preferred embodiment of the interface device
`10 shown Fig. 2: an SCSI interface 1220 and a 50-pin SCSI
`connector 1240 for connecting with an SCSI interface present in
`most host units or laptops.
`Ex. 1050, 5 (emphases added).
`As our reviewing court has articulated, the written description “test
`requires an objective inquiry into the four corners of the specification from
`the perspective of a person of ordinary skill in the art.” Ariad, 598 F.3d at
`1351. Petitioner confirms and Dr. Zadok testifies that, as of March 4, 1997,
`such an artisan would have been familiar with communication interfaces,
`including SCSI interfaces. Pet. 15–16; Ex. 1003 ¶ 29. Indeed, the evidence
`before us shows that SCSI interfaces were known multi-purpose interfaces at
`the time of the German Priority Application’s filing date. Ex. 1007;
`Ex. 1012. For instance, the SCSI Specification, which is a technical
`specification published by the American National Standard for Information
`Systems to set forth the SCSI standards, describes that the SCSI protocol “is
`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
`including one or more hosts,” and the primary objective of the SCSI
`interface is “to provide host computers with device independence within a
`class of devices.” Ex. 1012, Abstr., 6. The SCSI-2 “standard defines an
`
`12
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`Case IPR2016-01843
`Patent 6,470,399 B1
`
`input/output bus for interconnecting computers and peripheral devices.” Id.
`at 1. “SCSI-2 includes command sets for magnetic and optical disks, tapes,
`printers, processors, CD-ROMs, scanners, medium changers, and
`communications devices.” Id. at Abstr. Additionally, as Patent Owner
`points out, Schmidt also confirms that the SCSI bus was “designed not only
`for hard drives but also for tape drives, CD-ROM, scanners, and printers,”
`and almost all computers were “equipped with a SCSI interface.” Ex. 1007
`(Preface). In short, one with ordinary skill in the art would have recognized
`that SCSI interfaces were known multi-purpose interfaces.
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated sufficiently that the German Priority Application lacks
`adequate written description support for a multi-purpose interface of a host
`computer, as recited by the challenged claims. As a result, Petitioner has not
`shown sufficiently that Ard is prior art to the challenged claims of the ’399
`patent in this proceeding. Each ground asserted by Petitioner is based on
`Ard in combination with other references. Pet. 5. Consequently, we
`conclude that Petitioner has not established a reasonable likelihood of
`prevailing on its assertion that claims 1, 3, 5, 11, and 14 of the ’399 patent
`are unpatentable over Ard in combination with other references.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not
`established a reasonable likelihood of prevailing on its assertion that any of
`claims 1, 3, 5, 11, and 14 of the ’399 patent are unpatentable.
`
`13
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`Case IPR2016-01843
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`
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`
`
`
`14
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`Case IPR2016-01843
`Patent 6,470,399 B1
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`
`
`
`For PATENT OWNER:
`
`Gregory S. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Michael R. Fleming
`mfleming@irell.com
`IRELL & MANELLA LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`15
`
`
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