Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: April 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`____________
`
`Case IPR2016-01863
`Patent 8,504,746 B2
`____________
`
`
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`

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`IPR2016-01863
`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.”).
`We have jurisdiction under 35 U.S.C. § 314. For the reasons that
`follow, we institute inter partes review of the claims challenged in the
`Petition.
`
`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 is titled, “Analog Data Generating and Processing
`Device for use With a Personal Computer.” It relates generally 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 communications is to
`take place. Ex. 1001, 1:20–24. Figure 1, reproduced below, illustrates a
`general block diagram of an interface device 10. Id. at 4:59−60.
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`According to Figure 1, first connecting device 12 is attached to a host
`device (not shown), to digital signal processor (“DSP”) 13 and memory
`means 14. Id. at 4:60−65. DSP 13 and memory means 14 also are
`connected to second connecting device 15. Id. at 4:64−67. The interface
`device “simulates a hard disk with a root directory whose entries are
`‘virtual’ files which can be created for the most varied functions.” Id. at
`5:11−14. “Regardless of which data transmit/receive device at the output
`line 16 is attached to the second connecting device, the digital signal
`processor 13 informs the host device that it is communicating with a hard
`disk drive.” Id. at 5:31−34. In one embodiment, the interface device is
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`automatically detected when the host system is “booted,” resulting in the
`user “no longer [being] responsible for installing the interface device 10 on
`the host device by means of specific drivers which must also be loaded.” Id.
`at 7:13−20.
`
`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; and claim 35 depends 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
`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
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`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;
`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, 11:48–12:26.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5):
`
`Challenged Claims
`1, 4, 6−8, 10, 11, 20, 21,
`30, 34, 35
`
`14
`
`23
`
`Basis
`
`References
`
`§ 103(a) Pucci,1 Kepley,2 and Schmidt3
`
`§ 103(a) Pucci, Shinosky,4 Kepley, and
`Schmidt
`§ 103(a) Pucci, Kepley, Schmidt, and
`Wilson5
`
`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
`
`
`1 Marc F. Pucci, Configurable Data Manipulation in an Attached
`Multiprocessor, 4 COMPUTING SYSTEMS 217 (1991) (“Pucci”) (Ex. 1041).
`
` U.S. Patent No. 4,790,003 (“Kepley”) (Ex. 1042).
`3 Friedhelm Schmidt, THE SCSI BUS AND IDE INTERFACE (Addison-Wesley
`1995) (“Schmidt”) (Ex. 1007). See Ex. 1024 ¶¶ 23–28.
`
`4 U.S. Patent No. 4,065,644 (“Shinosky”) (Ex. 1045).
`
` 2
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`5 U.S. Patent No. 5,353,374 (“Wilson”) (Ex. 1044).
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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).
`Relying on a Federal Circuit decision regarding a related patent,
`Petitioner proposes construction for the term data transmit/receive device.
`Pet. 9−12 (citing Ex. 1016, 17). That construction is the device is capable of
`either (a) transmitting data to or (b) transmitting data to and receiving data
`from the host device.” Id. at 11−12. Patent Owner agrees, but notes that
`Petitioner asserts a different construction in the underlying District Court
`litigation. Prelim. Resp. 8. We acknowledge that the parties do not dispute
`the construction for “data transmit/receive device,” but it is not necessary for
`us to determine whether that construction is appropriate in this proceeding,
`at this juncture. However, noting that Patent Owner disagrees with
`Petitioner’s assertion that Pucci discloses “whereby there is no requirement
`for any user-loaded file transfer enabling software to be loaded or
`installed,”6 the parties should address, in the Response and Reply, the claim
`
`
`6 Prelim. Resp. 21−24.
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`construction of this phrase under the broadest reasonable interpretation, if
`that standard applies in this proceeding,7 or under any claim construction
`standard, if the standard does not make a difference.8
`
`
`
` 8
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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)
`
`
`7 On December 28, 2011, Applicants filed a Terminal Disclaimer
`disclaiming the term of the ’746 patent beyond the expiration of the term of
`U.S. Patent No. 9,189,437 B2 (“the ’437 patent”). In IPR2016-01839,
`Patent Owner informed the Board that it believes that the ’399 patent will
`expire on March 3, 2018, and the ’437 patent is subject to a Terminal
`Disclaimer, disclaiming term beyond the expiration of the ’399 patent.
`IPR2016-01839, Paper 14, 2. If, as a result of the Terminal Disclaimers
`filed in the ’746 and ’437 patents, Patent Owner believes that the ’746 patent
`also will expire on March 3, 2018 (i.e., before the statutory deadline to issue
`any final written decision in this proceeding), the parties should confer and
`advise the Board whether it is appropriate for the Board to apply a district
`court-type claim construction standard. See 37 C.F.R. § 42.100(b) (“A party
`may request a district court-type claim construction approach to be applied if
`a party certifies that the involved patent will expire within 18 months from
`the entry of the Notice of Filing Date Accorded to Petition.”).
`
` To maintain consistency across proceedings, the parties also are directed to
`consider the Board’s preliminary claim construction of the claim phrase in
`the Decision on Institution entered in Case IPR2016-01200 (Paper 8), which
`addresses the claims of the patent-at-issue.
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`(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 ¶¶ 28–29; Pet. 8.
`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, 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. See Ex. 1004. Our analysis in this Decision is supported by
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`either assessment, but, for purposes of this Decision, we adopt Petitioner’s
`assessment.
`
`C. Obviousness Over Pucci in Combination with Other References
`The three asserted grounds rely primarily on Pucci as disclosing all of
`the claim limitations of the challenged claims, except for transducers, a file
`system, “device recognition” process, and fast Fourier transform.
`Pet. 12−70. Petitioner relies on the other asserted references as disclosing
`the missing limitations. For example, Shinosky is alleged to disclose
`transducers designed to transmit data. Id. at 57−61. Schmidt is alleged to
`disclose the details of a SCSI adapter and its functionality, in particular with
`regard to the INQUIRY command. Id. at 18–22. Further, Kepley is relied
`upon for its teachings of a voice mail system that stores a “digitally encoded
`and compressed voice mail message” as a file. Id. at 13 (citing Ex. 1042,
`Abs.). And Wilson is relied upon for its disclosure of a transform coder,
`such as a Fourier transform. Id. at 61−63.
`Given our discussion that follows, a short overview of Pucci is in
`order.
`
`1. Overview of Pucci (Ex. 1041)
`
`Pucci is titled “Configurable Data Manipulation in an Attached
`Multiprocessor.” Ex. 1041, 217. According to Pucci,
`The ION Data Engine is a multiprocessor tasking system
`that provides data manipulation services for collections of
`workstations or other conventional computers. It is a back-
`end system, connecting to a workstation via the Small
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`Computer Systems Interface (SCSI) disk interface. ION
`appears to the workstation as a large, high speed disk
`device, but with user extensible characteristics. By
`mapping an application's functionality into simple disk
`read and write accesses, ION achieves a high degree of
`application portability, while providing
`enhanced
`performance via dedicated processors closely positioned to
`I/O devices and a streamlined tasking system for device
`control.
`Id. Pucci describes the interaction between ION and the workstation as
`workstation transmitting “a small list of data manipulation directives” to the
`ION node. Id. The ION node returns results only, although, in the extreme
`case, the ION system generates all output data requiring no processing in the
`workstation. Id. Pucci further describes “ION [] being used as an
`experimental platform for voice mail services in a user[ ] programmable
`telephone switch prototype.” Id. at 218.
`In particular, Pucci partitions an application into “hardware dependent
`and independent components.” Id. at 219. The “hardware independent
`components” reside in the workstation to “easily port[]” the application to
`new architectures. Id. The “hardware dependent components” are in a
`separate backplane-based environment. Id. These components are
`connected using the SCSI disk interface. Id. Accordingly, each workstation
`accesses ION using its local disk system, and sees ION as “though it were
`physically a local disk drive.” Id. at 219-20. The basic structure of an ION
`system is shown in Figure 1, reproduced below.
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`Figure 1 depicts an ION node interconnected with workstations,
`private disk, ION disks, and other hardware, including analog-to-digital (A-
`to-D) converters. In connection with the voice messaging service for the
`prototype telephone switch, the “bulk of the application resides in a
`conventional workstation.” Id. at 221. The peripheral devices, such as the
`A-to-D converters “are located within ION.” Id. The application at the
`workstation interfaces with the A-to-D converters by implementing
`“actions,” which are application specific functions. Id. To obtain converted
`data, the controlling program within the workstation reads from a designated
`disk block address corresponding to one of the five analog channels
`available. Id. Pucci describes the interaction as a “standard disk read and
`write” access, such as by using the “lseek()” command followed by the
`“read()” command in the UNIX domain. Id.
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`2. Reasonable Likelihood Determination
`
`After considering Petitioner’s contentions and Patent Owner’s
`arguments in opposition, we are persuaded that Petitioner has demonstrated
`a reasonable likelihood of prevailing on showing that the challenged claims
`would have been obvious over Pucci in combination with the other applied
`references.
`
`Independent Claims 1 and 34
`i.
`On this record, we are satisfied that the Petition proffers arguments
`and evidence supporting the contention that Pucci discloses:
`a) A program memory (Pucci’s resident memory within ION) (Pet.
`22);
`b) An analog signal acquisition channel for receiving a signal from an
`analog source (input to each of Pucci’s A-to-D converters
`receiving signals from a telephone switch) (id. at 23−24);
`c) A processor (Pucci’s application CPU and interface SBC CPUs, in
`combination) (id. at 24); and
`d) Data storage memory (local ION storage and large buffer memory)
`(id.).
`With regard to the claimed file system, we note that the Petition relies
`on Kepley’s disclosure of a voice mail system as teaching voice messages
`stored as files. Pet. 28–30. Further Petitioner relies on Pucci as disclosing
`that data can be stored as “traditional file system data.” Id. at 28–29. For
`purposes of this Decision, Petitioner provides a reasonable rationale for
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`adding Kepley’s voice mail file teachings to those of Pucci. Id. For
`example, we note that the Petitioner states a person of ordinary skill in the
`art would have found it obvious “to store the digitized A-to-D converted
`data as a file in Pucci’s voice messaging service application to enable
`‘computer-to-computer data file transfer’ between the ION-enabled voice
`messaging service system and other messaging service systems as taught by
`Kepley.” Id. at 29 (citing Ex. 1003 ¶ 111). Dr. Zadok states that file
`systems are an essential part of any computer system, and relies on Kepley’s
`description of “computer-to-computer file transfer mechanism [that] insures
`[sic] the integrity of the data comprising the voice mail message.” Ex. 1003
`¶ 111.
`With regard to the device recognition limitations, the Petition relies on
`Pucci’s disclosure of using a SCSI interface, and acknowledges that Pucci
`does not describe the details of interconnection between the SCSI bus and
`the workstation. Pet. 14, 18−22, 31−34, 53−54. For these missing details,
`Petitioner relies on Schmidt, which describes the SCSI interface. Id. at 18–
`22. Patent Owner argues that Petitioner has proffered “conclusory analysis.”
`Prelim. Resp. 20−21. For purposes of this Decision, Petitioner provides at
`least one rationale that on this record appears reasonable for adding
`Schmidt’s SCSI INQUIRY command details to the teachings of Pucci. See,
`e.g., Pet. 23 (Petitioner arguing that all SCSI devices, which Pucci discloses,
`must support the INQUIRY command, making the use of Schmidt’s detailed
`explanations of the INQUIRY command obvious to an ordinarily skilled
`person).
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`With regard to the “no requirement for user-loaded file transfer
`enabling software” limitation, Petitioner relies on Pucci’s disclosure of the
`workstation interconnecting with ION as if it were a disk drive. Pet. 37−38
`(citing Ex. 1041 at 220–21 and Ex. 1003 ¶ 133). Pucci allegedly utilizes the
`existing SCSI hard disk drivers, which, according to Petitioner, does not
`require a user to load file transfer enabling software. Id. Patent Owner
`points out that Pucci “contemplates the need for an end user to upgrade the
`workstation by installing the application for the peripherals located within
`ION.” Prelim. Resp. 23. At this juncture, there is no evidence in the record
`showing that the application in Pucci’s workstation constitutes “user-loaded
`file transfer enabling software.” For purposes of this Decision, Petitioner’s
`citations in Pucci and the relevant declarant testimony appear to support the
`contention that using the SCSI hard disk drivers does not require any other
`software to be loaded by the user. Patent Owner will have an opportunity
`during trial to present evidence and argument to the contrary.
`Patent Owner also challenges Petitioner’s reliance on Pucci based on
`the fact that Pucci is a UNIX-based system. Prelim. Resp. 24–27. We
`acknowledge that Patent Owner has made remarks during the prosecution of
`the ’144 patent claims concerning the role of UNIX in a particular reference
`referred to as Murata.9 And although the Board has denied other petitions
`asserting Murata in the ground of unpatentability, those denials focused on
`the fact that Murata had been before the Office, not on the basis that “UNIX
`
`
`9 U.S. Patent No. 5,508,821 (“Murata”) (Ex. 2002).
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`operating systems,” as a whole, were already before the Office. See Prelim.
`Resp. 27 n.2 (pointing out denial of institution in IPR2016-01202 and
`IPR2016-01222). Here, we agree that Pucci is a UNIX-based system. But
`Patent Owner’s arguments, as presented in the Preliminary Response, do not
`address how the specific arguments regarding Murata’s UNIX-based
`operation with regard to user intervention are applicable to Pucci, other than
`generally asserting that both references involve UNIX-based systems. Id. at
`24−27. We are unable also to determine from the arguments and evidence
`of record before us whether the Murata arguments are applicable to the
`’746 patent claims, which claims are silent concerning restrictions on file
`system user intervention.
`With regard to the further limitations of claims 1 and 34 not addressed
`above, we have reviewed Petitioner’s mapping of the limitations of these
`claims onto the applied references, as well as the cited testimony of Dr.
`Zadok, and we are persuaded by the evidence and analysis presented for
`purposes of this Decision. Pet. 15−56; Ex. 1003 ¶¶ 75−133. We determine
`that, on this record, in combination with the arguments and evidence
`addressed above, Petitioner has established a reasonable likelihood of
`prevailing on its assertion that claims 1 and 34 of the ’746 patent are
`unpatentable over Pucci in combination with other references.
`
`ii.
`
`Dependent Claims 4, 6−8, 10, 11, 20, 21, 30, and 35
`
`The Petition addresses separately each of the challenged dependent
`claims 4, 6−8, 10, 11, 20, 21, 30, and 35. Pet. 38−50, 56–57. For claim 4,
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`for example, the Petition points to Pucci’s disclosure of the ION system
`connected to a telephone switch system where an ordinarily skilled person
`would understand them switch to be detachable from the ION node by a
`telephone cable, for example. Id. at 38−39. For claim 6, the Petition states
`that cables are a conventional way to connect SCSI peripherals to a
`workstation. Id. at 39. For claim 7, Petitioner argues that the telephone
`switch is a “data transmit/receive device” because it transmits data to the
`ION node. Id. at 40. Claim 8 recites “one-way communication” and
`Petitioner argues that the telephone switch is designed for at least “one way
`communication.” Id. at 42. Regarding claims 10 and 35, Petitioner relies on
`Pucci’s disclosure of multiple A-to-D converters, and argues that it would
`have been obvious to a person of ordinary skill to simultaneously acquire
`data from these converters. Id. at 43−45, 56−57. For claim 11, the Petition
`points to Figure 1 of Pucci to argue that ION contemplates attaching and
`detaching from ION disks, which is a data transmit device different from the
`telephone switch. Id. at 45−47. For claim 20, Petitioner argues that Pucci’s
`access of data from a workstation is a direct file transfer, where it would
`have been obvious to store the file in the workstation’s RAM, which is an
`“input/output device.” Id. at 48. Claim 21 recites a further limitation
`concerning allowing a mode of operation other than the transfer of the file to
`be controlled by an external computer. And Petitioner argues that, as
`exemplified in Figure 5, Pucci’s workstation controls data acquisition tasks
`of the ION node. Id. at 48−49. For claim 30, Petitioner argues that the
`controlling program in Pucci’s workstation is the claimed “device driver
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`program,” and that data transfer between the ION node and the workstation
`takes place by means of this program. Id. at 49−50.
`After consideration of the information presented in the Petition and in
`the Preliminary Response, we determine that Petitioner has shown a
`reasonable likelihood of prevailing in showing that the asserted prior art
`combination renders obvious dependent claims 4, 6−8, 10, 11, 20, 21, 30,
`and 35.
`
`iii. Dependent Claim 14
`Claim 14 recites the further limitation of “the analog source includes
`at least first and second transducers both of which are designed to transmit
`data.” Petitioner relies on Shinosky’s teachings of a photosensor array as
`disclosing the recited first and second transducers. Id. at 57–61. We are
`satisfied on this record with Petitioner’s argument that Shinosky’s
`photosensor array constitutes transducers. Id. We further note that
`Petitioner has proffered a rationale for combining Shinosky’s photosensor
`with Pucci’s system as resulting in a “significant reduction in component
`requirements, and a consequent reduction in cost.” Id. at 61 (citing Ex. 1003
`¶ 172 and Ex. 1045 at 28:44−47). Upon review of Petitioner’s stated
`rationale for the combination of Pucci with Shinosky, we have considered
`Patent Owner’s argument that such a rationale is conclusory and the result of
`hindsight analysis. Prelim. Resp. 19–20. Patent Owner’s argument is not
`persuasive at this time because Petitioner relies on Shinosky’s disclosure of
`an apparent reason to apply its teachings (i.e., reduction in components and,
`therefore, costs), and unrebutted declarant testimony relying on that
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`disclosure (Pet. 57–61). Thus, we decide that the evidence and arguments
`presented in the current record are sufficient to meet the reasonable
`likelihood threshold.
`
`iv. Dependent Claim 23
`Claim 23 recites that “the analog data is processed by being subject to
`a fast Fourier transform.” Petitioner relies on Wilson’s teachings of using a
`“transform coder,” such as a fast Fourier transform. Id. at 62. For purposes
`of this Decision, Petitioner provides a reasonable rationale for adding
`Wilson’s teachings of a fast Fourier transform to those of Pucci and the other
`asserted references in this ground. Thus, we are persuaded, on this record,
`that Petitioner has shown a reasonable likelihood of prevailing on its
`assertion that that the asserted prior art combination renders claim 23
`unpatentable.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`established a reasonable likelihood of prevailing on its assertion that the
`challenged claims of the ’746 patent are unpatentable based on the following
`asserted grounds.
`
`Challenged Claims
`1, 4, 6−8, 10, 11, 20, 21,
`30, 34, 35
`
`14
`
`Basis
`
`References
`
`§ 103(a) Pucci, Kepley, and Schmidt
`
`§ 103(a) Pucci, Shinosky, Kepley, and
`Schmidt
`
`19
`
`

`

`References
`Basis
`§ 103(a) Pucci, Kepley, Schmidt, and
`Wilson
`
`IPR2016-01863
`Patent 8,504,746 B2
`
`
`
`Challenged Claims
`
`23
`
`
`The Board has not made a final determination on the construction of
`any claim term. Further, our determination in this Decision is not a final
`determination on the patentability of any challenged claims and, thus, leaves
`undecided any remaining fact issues necessary to determine whether
`sufficient evidence supports Petitioner’s contentions by a preponderance of
`the evidence in the final written decision. See TriVascular, Inc. v. Samuels,
`812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant
`difference between a petitioner’s burden to establish a ‘reasonable likelihood
`of success’ at institution, and actually proving invalidity by a preponderance
`of the evidence at trial”) (quoting 35 U.S.C. § 314(a) and comparing
`§ 316(e)).
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review is instituted for the grounds of
`unpatentability listed above in the Conclusion as to claims 1, 4, 6−8, 10, 11,
`14, 20, 21, 23, 30, 34, and 35 of the ’746 patent; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’746 patent is hereby instituted with trial commencing
`on the entry date of this decision, and pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of trial.
`20
`
`

`

`IPR2016-01863
`Patent 8,504,746 B2
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`
`
`
`
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`
`Michael R. Fleming
`IRELL & MANELLA LLP
`mfleming@irell.com
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`info@themeolafirm.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`
`21
`
`