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
`_______________
`___________________________________
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`
`
`_______________
`
`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
`_______________
`___________________________________
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE .................................. 1
`
`II.
`
`INTRODUCTION ............................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`STATEMENT OF RELIEF REQUESTED ......................................... 1
`
`OVERVIEW OF THE ‘746 PATENT ................................................. 2
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 5
`
`CLAIM CONSTRUCTION .................................................................. 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS ..................... 9
`
`A.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS OF
`REJECTION ........................................................................................................... 12
`PUCCI, SCHMIDT, KEPLEY, SHINOSKY AND WILSON DO
`NOT RENDER CLAIMS 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34
`AND 35 OBVIOUS ................................................................................. 12
`1. OVERVIEW OF PUCCI ................................................................ 12
`2. OVERVIEW OF SCHMIDT ......................................................... 13
`3. OVERVIEW OF KEPLEY ............................................................ 13
`
`4. PUCCI, SCHMIDT, KEPLEY, SHINOSKY AND WILSON
` DO NOT DISCLOSE THE “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
`ii
`
`
`
`
`
` SYSTEM OF THE DATA STORAGE MEMORY AS AT
` LEAST ONE FILE OF DIGITIZED ANALOG DATA”
` LIMITATION OF INDEPENDENT CLAIM 1 OF THE ‘746
` PATENT ........................................................................................... 14
`
`5. PUCCI, SCHMIDT, KEPLEY, SHINOSKY AND WILSON
` DO NOT DISCLOSE THE “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” LIMITATION OF INDEPENDENT CLAIM 1 OF
` THE ‘746 PATENT OR THE CORRESPONDING
` LIMITATION OF INDEPENDENT CLAIM 34 OF THE ‘746
` PATENT ........................................................................................... 17
`
`6. PUCCI, SCHMIDT, KEPLEY, SHINOSKY AND WILSON
` DO NOT DISCLOSE THE “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” LIMITATION OF
` INDEPENDENT CLAIM 1 OF THE ‘746 PATENT OR THE
` CORRESPONDING LIMITATION OF INDEPENDENT
` CLAIM 34 OF THE ‘746 PATENT .............................................. 24
`
`7. PUCCI, SCHMIDT, KEPLEY, SHINOSKYAND WILSON DO
` NOT RENDER OBVIOUS DEPENDENT CLAIMS 4, 6-8, 10,
` 11, 14, 20, 21, 23, 30 AND 35 OF THE ‘746 PATENT ............ 30
`PUCCI AND SCHMIDT AND PUCCI AND KEPLEY WOULD
`NOT BE COMBINED BY ONE SKILLED IN THE ART ................ 30
`
`iii
`
`B.
`
`
`
`
`
`INTER PARTES REVIEW IS UNCONSTITUTIONAL .................... 35
`C.
`IV. CONCLUSION ............................................................................................... 35
`
`
`
`
`
`
`
`
`iv
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Previously and Currently Filed – Patent Owner
`
`
`
`Ex. No.
`2001
`
`2002
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`
`Description
`Defendants’ Responsive Claim Construction Brief in Papst Licensing
`GmbH & Co., KG v. Apple, Inc. (6:15-CV-01095-RWS)
`United States Patent No. 5,508,821 to Murata
`August 24, 2006 Preliminary Amendment for U.S. Application No.
`11/467,073 resulting in ‘144 Patent
`July 17, 2007 Preliminary Amendment for U.S. Application No.
`11/467,073 resulting in ‘144 Patent
`December 18, 2007 Preliminary Amendment for U.S. Application No.
`11/467,073 resulting in ‘144 Patent
`Declaration of Thomas A. Gafford in Support of Patent Owner
`Response (“Gafford Declaration”)
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Claim Construction Memorandum and Order
`issued March 7, 2017
`
`
`
`Previously Filed – Petitioner
`
`Ex. No.
`1001
`1002
`1003
`
`Description
`U.S. Patent 8,504,746 to Tasler
`Excerpts of File History of U.S. Patent 8,504,746 to Tasler
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 8,504,746
`Curriculum Vitae of Dr. Erez Zadok
`1004
`1005-1006 Intentionally Left Blank
`1007
`The SCSI Bus and IDE Interface Protocols, Applications and
`Programming, by Schmidt, First Edition, Addison-Wesley, 1995
`Intentionally Left Blank
`U.S. Patent No. 4,727,512 to Birkner
`U.S. Patent No. 4,792,896 to Maclean
`
`1008
`1009
`1010
`
`v
`
`
`
`1011
`1012
`
`1013
`1014
`1015
`1016
`
`1020
`
`International Publication Number WO 92/21224 to Jorgensen
`Small Computer System Interface-2 (SCSI-2), ANSI X3.131-1994,
`American National Standard for Information Systems (ANSI).
`Operating System Concepts, by Silberschatz et al., Fourth Edition.
`Microsoft Computer Dictionary, Third Edition, Microsoft Press, 1997.
`Intentionally Left Blank
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015).
`1017-1018 Intentionally Left Blank
`1019
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language, Random House, 1996.
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`1021-1023 Intentionally Left Blank
`1024
`Declaration of Scott Bennett
`1025-1030 Intentionally Left Blank
`1031
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30, 1994
`(“PNP SCSI”)
`1032-1040 Intentionally Left Blank
`1041
`Pucci, M., “Configurable Data Manipulation in an Attached
`Multiprocessor,” 1991
`U.S. Patent No. 4,790,003 to Kepley et al., titled “Message Service
`System Network”
`Intentionally Left Blank
`U.S. Patent No. 5,353,374 to Wilson et al., titled “Low Bit Rate Voice
`Transmission for Use in a Noisy Environment”
`U.S. Patent No. 4,065,644 to Shinosky, Jr., titled “Electro-Optical and
`Electronic Switching Systems”
`1046-1051 Intentionally Left Blank
`1052
`Declaration of Michele Nelson, USENIX
`
`1042
`
`1043
`1044
`
`1045
`
`
`
`vi
`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner Apple, Inc. (“Petitioner”) did not submit a statement of material
`
`facts in its Petition for inter partes review. Paper 2 (Petition). Accordingly, no
`
`response to a statement of material facts is due pursuant to 37 C.F.R. § 42.23(a),
`
`and no facts are admitted.
`
`II.
`
`INTRODUCTION
`Patent Owner Papst Licensing GMBH & Co., KG (“Patent Owner”)
`
`respectfully submits this Patent Owner Response under 35 U.S.C. §§ 311-319 and
`
`37 C.F.R. § 42.120. It is being timely filed on or before July 21, 2017 pursuant to
`
`the Scheduling Order issued in this proceeding and the Stipulation Regarding Due
`
`Dates 1 and 2. Paper 11 (Scheduling Order) at 7; Paper 13 (Stipulation Regarding
`
`Due Dates 1 and 2) at 1.
`
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e). Petitioner’s propositions of unpatentability fail to
`
`meet that burden with respect to claims 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34 and
`
`35 of United States Patent No. 8,504,746 (“‘746 Patent”).
`
`
`
`
`
`STATEMENT OF RELIEF REQUESTED
`A.
`Pursuant to 35 U.S.C. § 316, Patent Owner respectfully requests that the
`
`1
`
`
`
`Patent Trial And Appeal Board (“Board” or “PTAB”) find that originally issued
`
`claims 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34 and 35 of the ‘746 Patent are valid in
`
`view of the proposed grounds of unpatentability under consideration.
`
`
`
`
`
`B. OVERVIEW OF THE ‘746 PATENT
`
`
`
`The ’746 Patent involves a unique method for achieving high data transfer
`
`rates for data acquisition systems (e.g., still pictures, videos, voice recordings) to a
`
`general-purpose computer, without requiring a user to purchase, install, and/or run
`
`specialized software for each system. Exhibit 1001 (’746 Patent) at 3:32-36. At the
`
`time of the invention, there were an increasing number and variety of data
`
`acquisition systems with the ability to capture high volumes of information. Id. at
`
`1:44-62. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:31-43. But at that
`
`time—and today—performing that data transfer operation required either loading
`
`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or specifically
`
`matching interface devices for a data acquisition system to a host system that may
`
`maximize data transfer rates but lacks the flexibility to operate with different
`
`devices. Id. at 1:26-3:24.
`
`The ‘746 Patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`
`
`2
`
`
`
`without specialized software, while being sufficiently flexible
`
`to operate
`
`independent of device or host manufacturers. Id. at 2:22-41 and 3:28-31. The
`
`resulting invention would allow a data acquisition system to identify itself as a type
`
`of common device so as to leverage the inherent capabilities of general-purpose,
`
`commercially-available computers. Id. at 4:13-27. Accordingly, users could avoid
`
`loading specific software; improve data transfer efficiency; save time, processing
`
`power, and memory space; and avoid the waste associated with purchasing
`
`specialized computers or loading specific software for each device. Id. at 3:28-31,
`
`3:32-45, 7:32-65, 8:29-36, 9:16-19 and 11:29-46. The ‘746 Patent claims variations
`
`of this concept and provides a crucial, yet seemingly simple, method and apparatus
`
`for a high data rate, device-independent information transfer. Id. at 3:28-31.
`
`The interface device disclosed in the ‘746 Patent can leverage “drivers for
`
`input/output device[s] customary in a host device which reside in the BIOS system
`
`of the host device . . . .” Id. at 10:16-17; see also id. at 4:20-24 (“The interface
`
`device according to the present invention therefore no longer communicates with the
`
`host device or computer by means of a specially designed driver but by means of a
`
`program which is present in the BIOS system . . .”), 5:14-20 (describing the use of
`
`“usual BIOS routines” to issue INQUIRY instructions to the interface), and 7:51-58
`
`(describing use of BIOS routines). Similarly, the written description describes also
`
`using drivers included in the operating system. Id. at 5:8-11 (“Communication
`
`
`
`3
`
`
`
`between the host system or host device and the interface device is based on known
`
`standard access commands as supported by all known operating systems (e.g.,
`
`DOS®, Windows®, Unix®).”). Alternatively, if the required specific driver or
`
`drivers for a multi-purpose interface (such as a SCSI interface) is already present in
`
`a host device, such drivers could be used with the ‘746 Patent’s interface device
`
`instead of, or in addition to, customary drivers which reside in the BIOS. Id. at
`
`10:14-20. Accordingly, the ‘746 Patent contemplated a universal interface device
`
`that could operate independent of the manufacturer of the computer. Id. at 11:29-
`
`46. Indeed, the preferred embodiment discloses that the interface device includes
`
`three different connectors, a 50 pin SCSI connector 1240, a 25 pin D-shell connector
`
`1280, and a 25 pin connector 1282, to allow the ‘746 Patent’s interface device to
`
`connect to a variety of different standard interfaces that could be present in a host
`
`computer. Id. at 8:37-54 and FIG. 2.
`
`As is apparent from the title of the ‘746 Patent, the interface device disclosed
`
`is capable of acquiring and processing analog data. As shown in FIG. 2 reproduced
`
`below, the ‘746 Patent discloses that the interface device 10 has an analog input at
`
`connection 16 for receiving analog data from a data transmit/receive device on a
`
`plurality of analog input channels 1505 and simultaneously digitizing the received
`
`analog data using, inter alia, a sample and hold amplifier 1515 and an analog to
`
`digital converter 1530 that converts analog data received from the plurality of
`
`
`
`4
`
`
`
`channels 1505 into digital data that may then be processed by the processor 1300.
`
`Id. at 8:55-9:3 and 9:34-49.
`
`
`
`
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`C.
`“The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to have known the relevant art at the time of the invention.” Manual of
`
`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (1) type of problems
`
`
`
`5
`
`
`
`encountered in the art; (2) prior art solutions to those problems; (3) rapidity with
`
`which innovations are made; (4) sophistication of the technology; and (5)
`
`educational level of active workers in the field. In re GPAC, 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995).
`
`Petitioner’s proposed definition of the level of ordinary skill in the art is
`
`partially consistent with Patent Owner’s view. Petitioner asserts that “a person having
`
`ordinary skill in the art (‘POSITA’) at the relevant time, would have had at least a
`
`four-year degree in electrical engineering, computer science, computer engineering,
`
`or related field of study, or equivalent experience, and at least two years’ experience
`
`in studying or developing computer interfaces or peripherals and storage related
`
`software.” Paper 2 (Petition) at 8. Petitioner further contends that “[a] POSITA would
`
`also be familiar with operating systems (e.g., MS-DOS, Windows, Unix), their
`
`associated file systems (e.g., FAT, UFS, FFS), device drivers for computer
`
`components and peripherals (e.g., mass storage device drivers), and communication
`
`interfaces (e.g., SCSI, USB, PCMCIA).” Id.
`
`Patent Owner contends that the field of the invention relates to “the transfer of
`
`data and in particular to interface devices for communication between a computer or
`
`host device and a data transmit/receive device from which data is to be acquired or
`
`with which two-way communication is to take place.” Exhibit 1001 (‘746 Patent) at
`
`1:20-24. A POSITA would have at least a bachelor’s degree in a related field such as
`
`
`
`6
`
`
`
`computer engineering or electrical engineering and at least three years of experience
`
`in the design, development, and/or testing of hardware and software components
`
`involved with data transfer or in embedded devices and their interfaces with host
`
`systems. Alternatively, a POSITA may have five or more years of experience in these
`
`technologies, without a bachelor’s degree.
`
`The Board previously determined that there were not meaningful differences
`
`between the parties’ definitions of a POSITA and adopted Petitioner’s assessment
`
`of a POSITA in the Institution Decision. Paper 10 (Institution Decision) at 9-10.
`
`While Patent Owner believes its proposed definition is more appropriate, it agrees
`
`with the Board that there are not meaningful differences between the parties’
`
`definitions of a POSITA for purposes of this proceeding.
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board ordinarily construes claim terms
`
`in an unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art. Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 136
`
`S. Ct. 2131, 2146 (June 20, 2016). The broadest reasonable meaning given to claim
`
`language must take into account any definitions presented in the specification. In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass,
`
`
`
`7
`
`
`
`314 F.3d 575, 577 (Fed. Cir. 2002)). Under this standard, claim terms are given their
`
`ordinary and customary meaning as would be understood by one of ordinary skill in
`
`the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005) (en banc)).
`
`However, because the ‘746 Patent will probably expire prior to the Final
`
`Written Decision in the present proceeding, the Board will likely construe the ‘746
`
`Patent claims based on their ordinary and customary meaning in accordance with
`
`Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Paper 10
`
`(Institution Decision) at 6-8. In fact, oral argument is not scheduled until January
`
`16, 2018 in this proceeding, and the ‘746 Patent is set to expire on March 3, 2018
`
`pursuant to a terminal disclaimer filed during prosecution of the ‘746 Patent. Paper
`
`11 (Scheduling Order) at 7; Paper 10 (Institution Decision) at 8.1
`
`In the Institution Decision, the Board did not formally adopt any claim
`
`constructions. Paper 10 (Institution Decision) at 6-8. The Board noted that
`
`Petitioner proposed a construction for “data transmit/receive device,” but the Board
`
`determined for purposes of instituting review, construction of this limitation was
`
`
`1 The Board requested that the parties confer on the expiration date of the ‘746
`Patent and the appropriate claim construction standard. Paper 10 (Institution
`Decision) at 8. Both the Patent Owner and Petitioner believe that the ‘746 Patent
`expires on March 3, 2018 and the Board should utilize a district court-type claim
`construction.
`
`
`
`8
`
`
`
`unnecessary. Id. The Board also requested that the parties address the construction
`
`of “whereby there is no requirement for any user-loaded file transfer enabling
`
`software to be loaded or installed” in their response and reply briefings. Id. at 7-8.
`
`In the underlying district court litigation related to this IPR, a claim construction
`
`order issued on March 7, 2017 that further construed certain terms of the ‘746 Patent.
`
`A copy of this claim construction order is being included as Exhibit 2007. This order
`
`addresses the “whereby there is no requirement for any user-loaded file transfer
`
`enabling software to be loaded or installed” limitation along with the limitation
`
`related to a “data transmit/receive device.” Exhibit 2007 (Claim Construction Order)
`
`at 34, 39.
`
`
`
`E. SUMMARY OF PATENT OWNER’S ARGUMENTS
`The Board instituted inter partes review on claims 1, 4, 6-8, 10, 11, 20, 21,
`
`30, 34 and 35 of the ‘746 Patent based on Pucci, Kepley and Schmidt. Paper 10
`
`(Institution Decision) at 19-20. The Board further instituted inter partes review on
`
`claim 14 of the ‘746 Patent based on Pucci, Shinosky, Kepley and Schmidt. Id. The
`
`Board also instituted review of claim 23 of the ‘746 Patent in view of Pucci, Kepley,
`
`Schmidt and Wilson. Id. However, these proposed grounds of unpatentability fail
`
`with respect to all of these claims because the proposed references and combination
`
`of references fail to disclose or suggest each and every limitation as recited by the
`
`‘746 Patent, and Pucci and Schmidt/Kepley would not be combined in the manner
`
`
`
`9
`
`
`
`Petitioner suggests.
`
`Pucci, M., “Configurable Data Manipulation in an Attached Multiprocessor,”
`
`1991 (“Pucci”), alone or in combination with the other applied prior art, does not
`
`disclose the “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” limitation of claim 1 of the ‘746 Patent.
`
`Furthermore, Pucci, alone or in combination with the other applied prior art,
`
`does not disclose the “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” limitation of independent claim 1 of the ‘746 Patent or the corresponding
`
`limitation of independent claim 34 of the ‘746 Patent.
`
`Moreover, Pucci, alone or in combination with the other applied prior art, does
`
`not disclose the “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
`
`
`
`10
`
`
`
`operating system” limitation of independent claim 1 of the ‘746 Patent or the
`
`corresponding limitation of independent claim 34 of the ‘746 Patent.
`
`In addition, Petitioner’s assertions of obviousness based on combining the
`
`primary reference, Pucci, with teachings of the secondary reference, The SCSI Bus
`
`and IDE Interface Protocols, Applications and Programming, by Schmidt, First
`
`Edition, Addison-Wesley, 1995 (“Schmidt”), are mere conclusory statements that
`
`do not account for the manner in which the references teach away from the proposed
`
`combination. The proposed combination of Pucci’s specialized device with SCSI
`
`signaling for a standard hard disk drive as discussed in Schmidt would change the
`
`principle of operation of Pucci, produce a seemingly inoperative device, and/or
`
`create a device that no longer achieved the intended purpose of Pucci. Moreover,
`
`combining Pucci’s specialized device that permits data to flow into the host as it is
`
`acquired, rather than being stored in its entirety in a file and then transferred, with
`
`Kepley’s file system would significantly impact Pucci’s principle of operation and
`
`prevent Pucci from achieving its intended purpose. Because Petitioner fails to
`
`provide a persuasive fact-based analysis with some rational underpinning to support
`
`its combination theories of obviousness, Petitioner cannot fulfill its burden of
`
`showing by a preponderance of the evidence that claims 1, 4, 6-8, 10, 11, 20, 21,
`
`30, 34 and 35 of the ‘746 Patent are obvious.
`
`Finally, the IPR process violates the Constitution by extinguishing private
`
`
`
`11
`
`
`
`property rights through a non-Article III forum without a jury. To the extent any
`
`claims of the ‘746 Patent are found invalid in this IPR, Patent Owner hereby
`
`challenges the constitutionality of the process of invalidation and reserves all rights
`
`related thereto.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS
`OF REJECTION
`
`
`A.
`
`PUCCI, SCHMIDT, KEPLEY, SHINOSKY AND WILSON DO
`NOT RENDER CLAIMS 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34
`AND 35 OBVIOUS
`
`1.
`
`OVERVIEW OF PUCCI
`
`
`
`
`The ION Data Engine is described in the Pucci reference. The ION Data
`
`Engine is a multiprocessor tasking system for providing data manipulation services
`
`for collections of workstations. Exhibit 1041 (Pucci) at 217. The ION Data Engine
`
`allows applications residing in the workstation to implement specific functions by
`
`enabling the reading or writing of specific block addresses within the ION drive. Id.
`
`at 221.
`
`The ION system couples an analog to digital converter (“ADC”) to a SCSI
`
`target interface through a memory buffer. The SCSI target responds to disk drive
`
`commands for reading. However, access by the host to ADC data is done by means
`
`of the host reading a single block address in the simulated disk drive. Thus, the ADC
`
`data is not provided by files in a file system. The ION reference also has the ability
`
`to emulate a file system, but it teaches that this is only used for disk drive
`
`
`
`12
`
`
`
`performance analysis, not for ADC access. Id. at 236. As such, the reference teaches
`
`away from accessing ADC data in the form of files because files exist but are not
`
`used for ADC data. ADC data is accessed by an application that does not use the
`
`host computer’s file system, and instead reads a certain disk block to obtain ADC
`
`data. Id. at 221.
`
`2.
`
`OVERVIEW OF SCHMIDT
`
`
`
`“Schmidt describes the SCSI bus and IDE Integrated Drive Electronics
`
`(“IDE”) interface, which both are American Nation[al] Standards Institute (“ANSI”)
`
`standards.” IPR2016-01842, Paper 10 (Institution Decision) at 21; Exhibit 1007
`
`(Schmidt) at Preface. “According to Schmidt, these interfaces are two of the most
`
`important interfaces for computer peripherals in use at that time, and almost all
`
`computers at that time, from PCs to workstations to mainframes, were equipped with
`
`a SCSI interface.” Id. “The SCSI bus is designed for hard drives, as well as tape
`
`drives, CD-ROM, scanners, and printers.” Id.
`
`3.
`
`OVERVIEW OF KEPLEY
`
`
`The Kepley invention “relates to business communication systems and, in
`
`particular, to a message service system network that interconnects a plurality of
`
`message service systems and provides a voice mail message transfer capability
`
`between voice mail message service systems.” Exhibit 1042 (Kepley) at Abstract.
`
`“The voice mail message transfer is performed as a computer-to-computer data file
`
`
`
`13
`
`
`
`transfer operation over high speed data lines.” Id. “The data file consists of the
`
`digitally encoded and compressed voice mail message to which is appended the
`
`message sender’s name and telephone number as well as the message recipient’s
`
`telephone number.” Id.
`
`4.
`
`PUCCI, SCHMIDT, KEPLEY, SHINOSKY AND WILSON
`DO NOT DISCLOSE THE
`“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” LIMITATION OF INDEPENDENT
`CLAIM 1 OF THE ‘746 PATENT
`
`
`Pucci and Kepley do not disclose the “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” limitation of
`
`independent claim 1 of the ‘746 Patent.2 Exhibit 2006 (Gafford Declaration) at ¶¶
`
`
`2 Neither the Petitioner in the Petition nor the Board in the Institution Decision
`applied Shinosky, Schmidt or Wilson to the “at least one file of digitized analog
`data” portion of this claim limitation. Consequently, no analysis of Shinosky,
`Schmidt or Wilson is necessary herein with respect to that portion of this claim
`limitation.
`
`
`
`14
`
`
`
`47, 51-53.
`
`Pucci fails to disclose this limitation because the ION Node stores and
`
`delivers processed analog sensor data to the ION Workstation using a first in/first
`
`out (FIFO) data write and read approach, and not a file format. Exhibit 2006
`
`(Gafford Declaration) at ¶ 47.
`
`Pucci describes the digitization of analog data as follows:
`
`The third task interfaces to the SCSI bus and returns data to the workstation
`when requested. This task defines a SCSI action function which contains 4
`block addresses for each of 5 A-to-D channels. Each channel contains a block
`address to start conversion, stop conversion, return status, and retrieve A-to-
`D data.
`The part of the application that runs on the workstation requests converted
`data in response to a start/stop signal from other system hardware, which
`indicates the beginning and end of a recording session. Upon start, the
`workstation reads the A-to-D start address for an appropriate channel,
`activating the device. It then retrieves data by reading the data block address
`for that channel, while also monitoring for an end-of-session indication.
`When the latter occurs, the workstation reads the stop address, halting the data
`conversion. It continues to read the data address until all buffered data have
`been obtained. The channel is then available for reuse.
`Exhibit 1041 (Pucci) at 232 (emphasis added).
`
`The above passage shows that the ION Node uses a first in/first out approach
`
`to data writing and reading, and not a file format approach, because the data is being
`
`accessed by the workstation while new data is being collected. New data is
`
`collected until the workstation reads a stop address and previously collected data is
`
`read “until all buffered data have been obtained.” Id. Thus, data is being buffered
`
`instead of being stored in a file. Exhibit 2006 (Gafford Declaration) at ¶¶ 48-49.
`
`
`
`15
`
`
`
`Furthermore, it would not be obvious to a POSITA to store sensor data in a
`
`file in a system where one may choose to access and read data that was first
`
`available prior to all of the data of a “file” being written, such as in the ION voice
`
`messaging application. Exhibit 2006 (Gafford Declaration) at ¶ 50.
`
`Consequently, Pucci fails to disclose the “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”
`
`limitation of independent claim 1 of the ‘746 Patent. Exhibit 2006 (Gafford
`
`Declaration) at ¶ 51.
`
`Petitioner argues that, alternatively, Kepley discloses a “digitally encoded
`
`and compressed voice mail message” as a file. Paper 2 (Petition) at 28. While it is
`
`undoubtedly true that other computer systems existed at the time of the invention
`
`that used files for other purposes, this is irrelevant to an obviousness analysis related
`
`to the combination of Pucci with Kepley. The teaching of the Pucci reference is
`
`that memory buffered data transfer, not files, is the developer’s requirement for
`
`moving analog data in the Pucci system. The design of the ION Node permits data
`
`to flow into the host as it is acquired, and not to be stored in its entirety in a file and
`
`then transferred, and that alone is a major difference in performance that Petitioner
`
`
`
`16
`
`
`
`does not address. In other words, it would significantly impact Pucci’s principle of
`
`operation and prevent Pucci from achieving its purpose of permitting data flow into
`
`the host as it is acquired to combine Pucci with Kepley’s file storage system.
`
`Exhibit 2006 (Gafford Declaration) at ¶ 52.
`
`Kepley also discloses a separate database processor for storing digitized
`
`voice files. Exhibit 1042 (Kepley) at 7:58-65 and FIG. 1 (“Data base processor
`
`system 113 is a back-end file system and data base machine. As a back-end
`
`processor, data base processor system 113 serves to offload file system and data
`
`base operations from voice storage processor 111…[b]oth voice and non-voice files
`
`are stored by data base processo
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