Trials@uspto.gov
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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 IPR2016-01862
`Patent 8,504,746 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 IPR2016-01862
`Patent 8,504,746 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 IPR2016-01862
`Patent 8,504,746 B2
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`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1, 4, 6–8, 10, 11, 14, 20, 21, 23, 30, 34, and 35 (“the
`challenged claims”) of U.S. Patent No. 8,504,746 B2 (Ex. 1001, “the ’746
`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 ’746 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 ’746 Patent
`The ’746 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, 1:20–24,
`1:56–59. According to the ’746 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 2:6–21. Several solutions to this problem were known in the
`art. Id. at 2:22–3:24. 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 2:25–30. The plug-in card provided a printer
`interface for enhancing data transfer rates. Id. at 2:30–34. 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 ’746 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 3:32–36. Figure 1 of the ’746 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 4:59–5:7. 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 3:49–55, 8:37–41. According to the ’746 patent,
`SCSI interfaces were known to be present on most host devices or laptops.
`Id. at 8:37–41. 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 11:29–35.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 34 are independent. Each of
`claims 4, 6–8, 10, 11, 14, 20, 21, 23, and 30 depends directly or indirectly
`from claim 1; claim 35 depends directly from claim 34.
`Claim 1 is illustrative:
`1. An analog data acquisition device operatively connectable to
`a computer through a multipurpose interface of the computer, the
`computer having an operating system programmed so that, when
`the computer receives a signal from the device through said
`multipurpose interface of the computer indicative of a class of
`devices, the computer automatically activates a device driver
`corresponding to the class of devices for allowing the transfer of
`data between the device and the operating system of the
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`computer, the analog data acquisition device comprising:
`a) a program memory;
`b) an analog signal acquisition channel for receiving a signal
`from an analog source;
`c) a processor operatively interfaced with the multipurpose
`interface of the computer, the program memory, and a data
`storage memory when the analog data acquisition device is
`operational;
`d) wherein the processor is configured and programmed to
`implement a data generation process by which analog data is
`acquired from the analog signal acquisition channel, the analog
`data is processed and digitized, and the processed and digitized
`analog data is stored in a file system of the data storage memory
`as at least one file of digitized analog data;
`e) wherein when the analog acquisition device is operatively
`interfaced with the multipurpose interface of the computer, the
`processor executes at least one instruction set stored in the
`program memory and thereby automatically causes at least one
`parameter indicative of the class of devices to be sent to the
`computer through the multipurpose interface of the computer,
`independent of the analog source, wherein the analog data
`acquisition device is not within the class of devices; and
`f) wherein the processor is further configured and programmed
`to execute at least one other instruction set stored in the program
`memory to thereby allow the at least one file of digitized analog
`data acquired from the analog signal acquisition channel to be
`transferred to the computer using the device driver corresponding
`to said class of devices so that the analog data acquisition device
`appears to the computer as if it were a device of the class of
`devices;
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`whereby there is no requirement for any user-loaded file transfer
`enabling software to be loaded on or installed in the computer in
`addition to the operating system.
`
`Ex. 1001, 11:57–12:36.
`
`Ard
`
`D. Prior Art Relied Upon
`Petitioner submitted the references listed below with its Petition.
`Araghi
`US 4,698,131
`
`Oct. 6, 1987
`(Ex. 1026)
`Reisch
`US 5,706,216
`
`Jan. 6, 1998
`
` Filing date July 28, 1995
`(Ex. 1028)
`US 5,915,106
`
`June 22, 1999
`(Ex. 1046)
` Filing date March 20, 1997
`(Ex. 1048)
`US 5,489,772
`
`Feb. 6, 1996
`Webb
`(Ex. 1056)
`US 5,300,767
`
`Apr. 5, 1994
`Steinle
`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
`Interface-2, ANSI X3.131-1994, 1–438 (1994) (Ex. 1012, “the SCSI
`Specification”).2
`
`
`
`
`
`
`
`
`1 Citations to Schmidt refer to the original page numbers.
`2 Citations to the SCSI Specification refer to the original page numbers.
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 6) 3:
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1, 6–8, 14, 20, 21, 30, and 34
`
`§ 103(a) Ard, Schmidt, and Webb
`
`4 and 11
`
`10 and 35
`
`23
`
`§ 103(a) Ard, Schmidt, Webb, and
`Araghi
`§ 103(a) Ard, Schmidt, Webb, and
`Steinle
`§ 103(a) Ard, Schmidt, Webb, 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
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`
`
`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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`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.”
`
`“multipurpose interface”
`Claim 1 recites an “analog data acquisition device operatively
`
`connectable to a computer through a multipurpose interface of the
`computer.” Ex. 1001, 11:48–50. The Specification of the ’746 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 3:49–53 (emphases added). The
`Specification also indicates that SCSI interfaces were known to be present
`on most host devices or laptops. Id. at 8:37–41. In light of the
`Specification, we construe a “multipurpose interface”4 to encompass a
`“SCSI interface.”
`
`
`4 The claims of the ’746 patent recite a “multipurpose interface” whereas the
`’746 Specification uses the term “multi-purpose interface” with the spelling
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`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. 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 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,
`
`
`difference having no impact on the scope of the term. Therefore, in this
`Decision, we use these terms interchangeably.
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`alternatively, five or more years of experience without a bachelor’s degree.
`Prelim. Resp. 6–7.
`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 ’746
`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 ’746 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”)5 because the German Priority Application
`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
`
`
`5 In this Decision, we cite to the English translation of the German Priority
`Application (Ex. 1050).
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`Priority Application fails to provide adequate support for the following
`limitations, as recited in claim 1: (1) a multi-purpose interface of a
`computer; and (2) storing data “in a file system of the data storage memory”
`of the analog data acquisition device. 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 ’746 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).
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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 an “analog data acquisition device
`operatively connectable to a computer through a multipurpose interface of
`the computer.” Ex. 1001, 11:48–50 (emphasis added).
`Petitioner argues that the German Priority Application does not
`explicitly or inherently disclose a multipurpose interface of a computer.
`Pet. 9–14. As support, Petitioner proffers a comparison chart between the
`’746 patent and the German Priority Application to highlight that the
`concept of a multipurpose 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 multipurpose interface. Ex. 1003 ¶ 171;
`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. 19–26.
`Based on the evidence in this record, we are not persuaded by
`Petitioner’s arguments or supporting evidence. Pet. 9–14; Ex. 1003 ¶ 171.
`Rather, we agree with Patent Owner that Petitioner has not demonstrated
`sufficiently that the German Priority Application lacks adequate written
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`description support for a multi-purpose interface of a computer. Prelim.
`Resp. 19–26.
`As discussed above in our claim construction analysis, in light of the
`Specification of the ’746 patent, we construe the claim term “multipurpose
`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. 16; 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
`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
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`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). Based on the evidence in this record, we find that one with
`ordinary skill in the art would have recognized SCSI interfaces as
`multi-purpose interfaces.
`For the foregoing reasons, we determine that Petitioner fails to
`demonstrate sufficiently that the German Priority Application lacks adequate
`written description support for a multipurpose interface of a computer.
`
`File System
`
`Petitioner also alleges that the German Priority Application lacks
`adequate written description support for storing the processed and digitized
`analog data “in a file system of the data memory” of the analog data
`acquisition device. Pet. 14–15. To substantiate its position, Petitioner
`argues that the German Priority Application “includes no mention . . . of any
`file system on the interface device” and that “the data is never stored as a file
`in a file system on the interface device” because the files are “virtual” files,
`not actual files, and the FAT is merely simulated. Id.
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`Patent Owner counters that the German Priority Application describes
`the interface device using files and a file allocation table (FAT). Prelim.
`Resp. 26–27; see Ex. 1050, 4. Patent Owner also argues that “even a
`simulated file system still teaches a file system because the FAT must
`actually exist in the interface device in order to be readable” by the digital
`signal processor. Id. at 27. Patent Owner further contends that “in order to
`be able to store these files and make them available to the host system, the
`interface device of the invention must inherently implement a file system.”
`Id. We agree with the Patent Owner’s arguments.
`At the outset, we are not persuaded by Petitioner’s argument that the
`German Priority Application “includes no mention . . . of any file system on
`the interface device.” Pet. 13. 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 v. Am. Airlines, Inc., 107 F.3d 1565, 1572
`(Fed. Cir. 1997)). Significantly, the German Priority Application describes
`using a file position table or FAT on the interface device. Ex. 1050, 4
`(explaining “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 confirm that a person with
`ordinary skill in the art, as of March 4, 1997, would have been “familiar with
`operating systems (e.g., MS-DOS, Windows, Unix)” and “their associated
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`file systems (e.g., a FAT, UFS, FFS).” Pet. 15–16; Ex. 1003 ¶ 28 (emphases
`added).
`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
`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).
`We also are not persuaded by Petitioner’s argument that the files on
`the interface device are “virtual” files, not actual files. Pet. 14–15.
`Petitioner conflates how the interface device simulates as a hard disk to the
`host device, with how data are actually stored in the interface device.
`Petitioner’s argument narrowly focuses on the discussion regarding how the
`interface device appears to the host device as “a hard disk with a root
`directory whose entries are ‘virtual’ files,” but ignoring other pertinent
`disclosures regarding how data are actually stored in the interface device.
`Pet. 14–15 (citing Ex. 1050, 3; Ex. 1001, 5:11–14). In fact, the German
`Priority Application makes clear that there is “the option to save any files in
`agreed formats taking into consideration the maximum storage capacity on
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`the interface device 10 in the storage device 14” and “the host device can
`access any programs [or files] stored on the interface device.” Ex. 1050, 4
`(emphases added). The German Priority Application also describes that the
`“virtual” files for the host device have actual files stored in the interface
`device. Id. at 7 (describing “the virtual files have batch files or executable
`files for the host unit that are stored in the interface device” (emphases
`added)). Petitioner’s argument fails to consider the German Priority
`Application in its entirety.
`We also are not persuaded by Petitioner’s argument that the interface
`device merely simulates a FAT. Pet. 14–15. Significantly, Petitioner’s
`argument ignores the pertinent portion of the German Priority Application
`that describes an actual FAT on the interface device:
`The digital signal processor [(DSP) of the interface device]
`responds to the host device exactly as a conventional hard disk
`would respond; namely, the file position table or FAT on the
`sector specified in the boot sequence is read, which is normally
`the first writable sector, and transferred to the host device.
`Ex. 1050, 4; Ex. 1001, 5:49–54 (emphasis added). We agree with Patent
`Owner’s contention that “the FAT must actually exist in the interface device
`in order to be readable by the DSP.” Prelim. Resp. 27.
`
`The discussion cited by Petitioner, regarding how the interface device
`appears as a hard disk to the host device by sending a “virtual” boot
`sequence to the host device, does not support Petitioner’s position. Pet. 14
`(citing Ex. 1050, 3; Ex. 1001, 5:34–58). That discussion compares how the
`host device normally accesses files that are stored on the physical disk drives
`of the host device, with how it accesses files that are stored on the interface
`17
`
`
`
`Case IPR2016-01862
`Patent 8,504,746 B2
`
`
`
`device. Ex. 1050, 3; Ex. 1001, 5:34–58. Petitioner conflates the file system
`on the host device with the file system on the interface device. Pet. 14.
`Moreover, other discussions cited by Petitioner also do not support its
`position. Id. at 14–15 (citing Ex. 1050, 4, Ex. 1001, 6:17–32). Those
`discussions are related to reading the “real-time entry” file embodiment, in
`which the interface device simultaneously receives data from a data
`sending/receiving unit, and sends data to the host device. As discussed
`above, the interface device has “the option to save any files in agreed
`formats taking into consideration the maximum storage capacity on the
`interface device 10 in the storage device 14” and “the host device can access
`any programs [or files] stored on the interface device.” Ex. 1050, 4
`(emphases added). Therefore, based on the evidence in this record, we are
`not persuaded by Petitioner’s argument “the data is never stored as a file in a
`file system on the interface device.”
`In light of the foregoing, we determine that Petitioner has not
`demonstrated sufficiently that the German Priority Application lacks
`adequate written description support for storing the processed and digitized
`analog data in a file system of the interface device. Given that, we also
`determine that Petitioner has not shown sufficiently that Ard is prior art to
`the challenged claims of the ’746 patent. Each ground asserted by Petitioner
`is based on Ard in combination with other references. Pet. 6. Consequently,
`we conclude that Petitioner has not established a reasonable likelihood of
`prevailing on its assertion that claims 1, 4, 6–8, 10, 11, 14, 20, 21, 23, 30,
`
`18
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`Case IPR2016-01862
`Patent 8,504,746 B2
`
`
`
`34, and 35 of the ’746 patent are unpatentable over Ard in combination with
`other references.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not
`establish a reasonable likelihood of prevailing on its assertion that any of
`claims 1, 4, 6–8, 10, 11, 14, 20, 21, 23, 30, 34, and 35 of the ’746 patent are
`unpatentable.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`19
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`Case IPR2016-01862
`Patent 8,504,746 B2
`
`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
`
`
`20
`
`
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