Trials@uspto.gov
`571-272-7822
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` Paper 10
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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 IPR2016-01844
`Patent 9,189,437 B2
`____________
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
` Paper 10
`
`
`
` 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 IPR2016-01844
`Patent 9,189,437 B2
`____________
`
`
`
`
`
`
`
`
`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 IPR2016-01844
`Patent 9,189,437 B2
`
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an 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.”). Papst Licensing GmbH & Co., KG (“Patent Owner”), filed
`a Preliminary Response. Paper 9 (“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 set forth
`below, 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 ’437 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 8, 2–5.
`
`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, 1:17–22,
`1:54–57. According to the ’437 patent, using a specific driver to match very
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`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 2:4–18. Several solutions to this problem were known in the
`art. Id. at 2:20–3:25. 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 2:23–29. The plug-in card provided a printer
`interface 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 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 3:10–19.
`The ’437 patent indicates that the “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.
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`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 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)—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 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 11:38–44.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 43 are independent. Each of
`claims 4–6, 9–16, 18, 30, 32, and 34 depends directly or indirectly from
`claim 1; claim 45 depends directly from claim 43.
`Claim 1 is illustrative:
`1. An analog data generating and processing device (ADGPD),
`comprising:
`an input/output (i/o) port;
`a program memory;
`a data storage memory;
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`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 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
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`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.
`
`Ex. 1001, 11:57–12:42 (emphases added).
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner submitted the references listed below with its Petition.
`Araghi
`US 4,698,131
`
`Oct. 6, 1987
`(Ex. 1026)
`Compton US 5,442,465
`
`Aug. 15, 1995
`(Ex. 1027)
`Reisch
`US 5,706,216
`
`Jan. 6, 1998
`
` Filing date July 28, 1995
`(Ex. 1028)
`Salomon US 4,430,673
`
`Feb. 7, 1984
`(Ex. 1029)
`Ard
`
`US 5,915,106
`
`June 22, 1999
` Filing date Mar. 20, 1997
`
`(Ex. 1046)
`
`FRIEDHELM SCHMIDT, THE SCSI BUS AND IDE INTERFACE PROTOCOLS,
`APPLICATIONS AND PROGRAMMING, 3–301 (J. Michael Schultz trans.,
`Addison-Wesley Publ. Co. 1995) (Ex. 1007, “Schmidt”).1
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`
`
`1 Citations to Schmidt refer to the original page numbers.
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`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. 6) 3:
`
`Challenged Claim(s)
`1, 5, 6, 9–12, 14–16, 30, 34,
`and 43
`
`4
`
`13, 18, and 45
`
`32
`
`Basis
`
`References
`
`§ 103(a) Ard, Salmon, and Schmidt
`
`§ 103(a) Ard, Salmon, Schmidt, and
`Araghi
`§ 103(a) Ard, Salmon, Schmidt, and
`Compton
`§ 103(a) Ard, Salmon, Schmidt, and
`Reisch
`
`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
`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
`
`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.
`§§ 103(a) and 112 in this Decision.
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`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 multi-purpose interface of the host computer.”
`
`Ex. 1001, 12:8–9. Petitioner proposes to construe “multi-purpose interface
`of the host computer” as “a communication interface designed for use with
`multiple devices that can have different functions from each other.”
`Pet. 16–17. At this juncture, Patent Owner does not challenge that
`construction. Prelim. Resp. 7–8.
`The Specification of the ’437 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.” Ex. 1001, 3:51–56 (emphases added). The Specification also
`indicates that SCSI interfaces were known to be present on most host
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`devices or laptops. Id. at 8:45–46. In light of the Specification, we construe
`a “multi-purpose interface” to encompass a “SCSI interface.” For purposes
`of this Decision, it is not necessary for us to determine whether Petitioner’s
`proposed claim construction is the broadest reasonable construction for the
`claim term “multi-purpose interface.” See Vivid Techs., 200 F.3d at 803.
`
`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
`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 having ordinary skill in
`the art at the time of the invention “would have had at least a four-year
`undergraduate 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 ¶ 28; Pet. 15.
`Dr. Zadok further testifies that such an 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
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`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 one more year 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.
`
`C. Obviousness Over Ard in Combination with Other References
`Each of Petitioner’s asserted grounds of unpatentability relies on Ard.
`Pet. 6. Ard has a filing date of March 20, 1997, which is after the ’437
`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 ’437 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
`German Priority Application”)4 because the German Priority Application
`
`
`4 In this Decision, we cite to the English translation of the German priority
`application (Ex. 1050).
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`allegedly lacks adequate written description support for the subject matter
`recited in the challenged claims. Pet. 9. In particular, citing to Dr. Zadok’s
`Declaration (Ex. 1003) for support, Petitioner alleges that the German
`Priority Application lacks adequate support for the following limitations:
`(1) a multi-purpose interface of a computer, as required by all of the
`challenged claims; and (2) “an automatic recognition process . . . in which
`. . . at least one parameter . . . [is] automatically sent . . . without requiring
`any end user to interact with the computer to set up a file system in the
`ADGPD at any time,” as recited by claims 1, 4–6, 9–16, 18, 30, 32, and 34.
`Id. at 9–15. Patent Owner opposes. Prelim. Resp. 19–27.
`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 ’437 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
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`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).
`
`Multi-Purpose Interface
`Each of the challenged claims requires a multi-purpose interface of a
`computer. For instance, claim 1 recites a processor “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.” Ex. 1001, 12:6–9 (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
`’437 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
`¶ 208; 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. 20–25.
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`Based on the evidence in this record, we are not persuaded by
`Petitioner’s arguments or supporting evidence. Pet. 9–14; Ex. 1003
`¶¶ 207–09. 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
`computer. Prelim. Resp. 19–25.
`As discussed above in our claim construction analysis, in light of the
`Specification of the ’437 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; Ex. 1003 ¶ 28. 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
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`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
`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). Even if we were to apply Petitioner’s proposed claim
`construction that interprets “a multi-purpose interface of the host computer”
`as “a communication interface designed for use with multiple devices that
`can have different functions from each other” (Pet. 16–17), one with
`ordinary skill in the art would have recognized that SCSI interfaces were
`known multi-purpose interfaces at the time of the German Priority
`Application’s filing date.
`For the foregoing reasons, we determine that Petitioner fails to
`demonstrate sufficiently that the German Priority Application lacks adequate
`written description support for a multi-purpose interface of a host computer.
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`Automatic Recognition Process
`
`Petitioner also alleges that the German Priority Application does not
`provide adequate written description support for an automatic recognition
`process in which at least one parameter is sent automatically “without
`requiring any end user to interact with the computer to set up a file system in
`the ADGPD at any time,” as recited in claim 1. Pet. 9, 14–15. To
`substantiate its position, Petitioner argues that the German Priority
`Application “includes no mention . . . of the ‘file system in the ADGPD’”
`and fails to disclose a reason to exclude the limitation of an end user
`interacting “with the computer to set up a file system in the ADGPD at any
`time.” Id. at 14–15 (citing Ex. 1003 ¶ 210).
`Patent Owner counters that the German Priority Application
`repeatedly describes multiple files stored in the interface device, and key
`components of the file system (e.g., a file position table or file allocation
`table (FAT)). Prelim. Resp. 25–27; see Ex. 1050, 4. Patent Owner further
`argues that the German Priority Application also discloses reasons to
`exclude the “end user interaction” limitation for setting up a file system in
`the interface device. Prelim. Resp. 25–27.
`At the outset, the parties do not dispute that “without requiring any
`end user to interact with the computer to set up a file system in the ADGPD
`at any time” is a negative claim limitation. Pet. 9; Prelim. Resp. 25–27.
`However, they seem to disagree as to the written description standard for
`negative limitations. Pet. 14; Prelim. Resp. 26.
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`“Negative claim limitations are adequately supported when the
`specification describes a reason to exclude the relevant limitation.”
`Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
`As our reviewing court has explained, Santarus did not create a heightened
`standard for written description support of negative limitations. Nike, Inc. v.
`adidas AG, 812 F.3d 1326, 1348 (Fed. Cir. 2016). Rather, “properly
`describing alternative features—without articulating advantages or
`disadvantages of each feature—can constitute a ‘reason to exclude’ under
`the standard articulated in Santarus.” Inphi Corp. v. Netlist, Inc., 805 F.3d
`1350, 1355–56 (Fed. Cir. 2015). In short, “claims may state the exclusion of
`alternation.” Santarus, 694 F.3d at 1351 (quoting MPEP § 2173.05(i) (“If
`alternative elements are positively recited in the specification, they may be
`explicitly excluded in the claims.”)); see also In re Johnson, 558 F.2d 1008,
`1018 (CCPA 1977) (observing that “[i]t is for the inventor to decide what
`bounds of protection he will seek,” allowing applicant to narrow the claims
`to exclude the content of a lost interference count.). In short, we do not
`apply a heightened written description standard, as urged by Petitioner. See
`Nike, 812 F.3d at 1348.
`Applying the above-stated principles and based on the evidence
`before us, we are not persuaded by Petitioner’s arguments and Dr. Zadok’s
`testimony, as they unduly rely upon the absence of the exact claim terms in
`the German Priority Application. Pet. 9, 14–15; Ex. 1003 ¶ 210. Instead,
`we agree with Patent Owner that Petitioner has not demonstrated sufficiently
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`that the German Priority Application lacks adequate written description
`support for the aforementioned limitation. Prelim. Resp. 25–27.
`In particular, we agree with Patent Owner that a person with ordinary
`skill in the art would have recognized that the German Priority Application
`discloses a “file system in the ADGPD.” Id. at 27. Notably, the German
`Priority Application describes storing files in the interface device. Ex. 1050,
`4 (describing “the option to save any files in agreed formats taking into
`consideration the maximum storage capacity on the interface device 10 in
`the storage 14”). Moreover, the German Priority Application describes
`using key components of a file system (e.g., a file position table and FAT).
`Id. (explaining that “the file position table or FAT on a sector specified in
`the boot sequence is read, which is normally the first writable sector, and
`transferred to the host device”).
`Petitioner and Dr. Zadok’s testimony confirm that a person with
`ordinary skill in the art would have been “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).” Pet. 15; Ex. 1003 ¶ 28. Such an artisan would have
`appreciated the following general knowledge regarding a FAT file system:
`The [FAT] file system [is] used by MS-DOS to organize and
`manage files. The FAT (file allocation table) is a data structure
`that MS-DOS creates on the disk when the disk is formatted.
`When MS-DOS stores a file on a formatted disk, the operating
`system places information about the stored file in the FAT so that
`MS-DOS can retrieve the file later when requested. The FAT is
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`the only file system MS-DOS can use; OS/2, Windows NT, and
`Windows 95 operating systems can use the FAT file system in
`addition to their own file system (HPFS, NTFS, and VFAT,
`respectively).
`MICROSOFT COMPUTER DICTIONARY 189–90 (3rd ed. 1997) (Ex. 3001, 3–4)
`(emphasis added).
`However, Petitioner and Dr. Zadok’s testimony merely allege that the
`German Priority Application “includes no mention whatsoever of the ‘file
`system in the ADGPD,’” and did not provide any explanation. Pet. 14–15;
`Ex. 1003 ¶ 210. Such conclusory statement is entitled to little, if any,
`weight, as nothing requires a fact finder to credit the inadequately explained
`testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d
`1089, 1092 (Fed. Cir. 1997); see also 37 C.F.R. § 42.65(a) (“Expert
`testimony that does not disclose the underlying facts or data on which the
`opinion is based is entitled to little or no weight”). Moreover, when
`determining whether the specification of an application provides adequate
`written description for the claimed subject matter, the exact terms appearing
`in the claim “need not be used in haec verba.” Lockwood v. Am. Airlines,
`Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
`
`More importantly, we observe that the German Priority Application
`discloses an automatic recognition process and reasons for not requiring any
`end user to interact with the computer to set up a file system in the interface
`device. Specifically, the German Priority Application discloses the
`following preferred embodiment:
`Communication with the host system or host device is based on
`recognized standard access commands as they are supported by
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`all known operating systems (e.g., DOS, Windows, UNIX).
`Preferably, the interface device as per the present invention
`simulates a hard disk with a root directory whose entries are
`“virtual” files that can be created for the widest variety of
`functions. If the host device system with which the interface
`device as per the present invention is connected for which a data
`sending/receiving unit is also linked to the interface device 10, is
`booted, normal BIOS routines output a command to each
`input/output interface available in the host device that is
`recognized among experts as an “INQUIRY” command.
`Ex. 1050, 3 (emphases added).
`The German Priority Application further explains the automatic
`recognition process and the benefits of using such a process:
`With a preferred design example of the present invention with
`which the interface device 10 simulates a hard disk drive to the
`host device, the same is already automatically recognized when
`switching on or booting the host system. This corresponds to the
`currently expanding “plug-and-play” standard. The user no
`longer has to deal with the installation of the interface device 10
`on the host device by loading special drivers rather the interface
`device 10 is automatically made available when booting the host
`system.
`Id. at 4 (emphases added).
`[I]t is desirable that an interface be so flexible that very different
`electrical or electronic systems can be linked to a host device
`using an interface. In order to prevent operating errors, it is also
`desirable that a service representative must not operate different
`interfaces in different ways for every different application rather
`the representative should operate them in a way that one
`universal interface service is created for as large a number of
`applications as possible.
`Id. at 2 (emphasis added).
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`Neither Petitioner’s argument nor Dr. Zadok’s testimony discusses
`these pertinent disclosures, much less explains why one of ordinary skill in
`the art would not have understood that such an automatic recognition
`process would not require any end user to interact with the computer to set
`up a file system in the interface device. Pet. 9, 14–15; Ex. 1003 ¶ 210.
`Petitioner’s argument merely asserts that the German Priority Application
`does not use the exact terms as those used in the claims, and that the priority
`application does not “disclose anything that may be understood as a reason
`to exclude” user intervention, without any explanation. Pet. 9, 14–15.
`Petitioner’s argument is conclusory. Pet. 9, 14–15. Dr. Zadok’s testimony
`(Ex. 1003 ¶ 210) adds nothing beyond the conclusory statement in the
`Petition, and, hence, is entitled to little, if any, weight. See Rohm and Haas,
`127 F.3d at 1092. Furthermore, as our reviewing court has articulated,
`“when examining the written description for support for the claimed
`invention, . . . the exact terms appearing in the claim ‘need not be used in
`haec verba.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1345–46
`(Fed. Cir. 2016) (citing Lockwood, 107 F.3d at 1572). Petitioner’s
`assertions, without more, are insufficient to show persuasively that the
`German Priority Application lacks adequate written description support for
`claimed subject matter. See id. at 1346 (holding expert’s opinion that “is
`abstract and untethered from the context provided by the [] patent”
`insufficient to support a finding of lack of written description).
`In light of the foregoing, we determine that Petitioner has not
`demonstrated sufficiently for purposes of this Decision that the German
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`Priority Application lacks adequate written description support for an
`automatic recognition process in which at least one parameter is sent
`automatically “without requiring any end user to interact with the computer
`to set up a file system in the ADGPD at any time,” as recited by each
`challenged claim. Given that, we also determine
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