Trials@uspto.gov
`571-272-7822
`
`
`Paper 35
`Entered: March 19, 2018
`
`
` 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 IPR2016-01864
`Patent 6,470,399 B1
`
`____________
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

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`IPR2016-01864
`Patent 6,470,399 B1
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`I.
`
`INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 134,
`Apple Inc. (“Petitioner”) challenges the patentability of certain claims of
`U.S. Patent No. 6,470,399 B1 (Ex. 1001, “the ’399 patent”), owned by Papst
`Licensing GMBH & Co. KG (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
`Petitioner has shown by a preponderance of the evidence that claims 1, 3, 5,
`11, and 14 of the ’399 patent are unpatentable.
`
`A. PROCEDURAL HISTORY
`
`Petitioner filed a Petition to institute inter partes review of claims 1,
`
`3, 5, 11, and 14 of the ’399 patent (“challenged claims”). Paper 2 (“Pet.”).
`Patent Owner filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). On
`April 17, 2017, we instituted inter partes review as to all the challenged
`claims. Paper 13 (“Institution Decision” or “Dec.”).
`
`After institution, Patent Owner filed a Patent Owner Response.
`Paper 19 (“PO Resp.”). Petitioner then filed a Reply. Paper 21 (“Reply”).
`We heard oral arguments on January 16, 2018, and entered a transcript of the
`hearing into the record. Paper 33 (“Tr.”).
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`B. RELATED MATTERS
`
`The parties indicate that the ’399 patent is involved in Papst Licensing
`GmbH & Co. KG v. Apple, Inc., Case No. 6-15-cv-01095 (E.D. Tex.) and
`other proceedings. Pet. 2–3; Paper 8, 2–5. The ’399 patent is also the
`subject matter of inter partes review IPR2016-01839, filed by Petitioner and
`of IPR2017-00714, filed by Samsung Electronics Co., Ltd, and Samsung
`Electronics America, Inc. This Final Written Decision is filed concurrently
`with the Final Written Decisions in IPR2016-01839 and IPR2017-00714.
`
`C. REAL PARTIES-IN-INTEREST
`
`Petitioner asserts that Apple Inc. is the only real party-in-interest.
`
`Pet. 2.
`
`D. THE ’399 PATENT (EX. 1001)
`
`The ’399 patent describes interface devices for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1001, 1:9–13,
`1:48–51. According to the ’399 patent, using a specific driver to match very
`closely to an individual host system would achieve high data transfer rates
`across the interface, but the specific driver cannot be used with other host
`systems. Id. at 1:65–2:12. Several solutions to this problem were known in
`the art. Id. at 2:16–3:21. For example, IOtech introduced an interface
`device for laptops, using a plug-in card for converting the personal computer
`memory card association (“PCMCIA”) interface into a known standard
`interface (“IEEE 1284”). Id. at 2:19–24. The plug-in card provided a
`printer interface for enhancing data transfer rates. Id. at 2:24–28. In another
`example, a floppy disk drive interface was used for connecting a host device
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`to a peripheral device. Id. at 3:6–10. The interface appeared as a floppy
`disk drive to the host, allowing a floppy disk drive and another peripheral
`device to be connected to the host device. Id. at 3:13–15.
`The ’399 patent indicates that its “invention is based on the finding
`that both a high data transfer rate and host device-independent use can be
`achieved if a driver for an input/output device customary in a host device” is
`utilized. Id. at 4:23–27. Figure 1 of the ’399 patent, reproduced below,
`illustrates a block diagram of an interface device.
`
`
`As shown in Figure 1 above, interface device 10 connects to a host device
`via host line 11, and to a data transmit/receive device via output line 16. Id.
`at 5:47–63. Interface device 10 includes first connecting device 12, second
`connecting device 15, digital signal processor 13, and memory means 14.
`Id. In a preferred embodiment, the interface device is attached to a host
`device via a multi-purpose interface—e.g., a small computer systems
`interface (“SCSI”)—which includes both an interface card and the driver for
`the interface card. Id. at 4:40–46, 8:29–32. According to the ’399 patent,
`SCSI interfaces were known to be present on most host devices or laptops.
`Id. at 8:29–32. By using a standard interface of a host device and by
`simulating an input/output device to the host device, the interface device “is
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`automatically supported by all known host systems without any additional
`sophisticated driver software.” Id. at 12:23–29.
`
`E. ILLUSTRATIVE CLAIM
`
`Of the challenged claims, claims 1, 11, and 14 are independent. Each
`of claims 3 and 5 depends directly from claim 1. Claim 1 is illustrative:
`1. An interface device for communication between a host
`device, which comprises drivers for input/output devices
`customary in a host device and a multi-purpose interface, and a
`data transmit/receive device, the data transmit/receive device
`being arranged for providing analog data, comprising:
`a processor;
`a memory;
`a first connecting device for interfacing the host device with the
`interface device via the multi-purpose interface of the host
`device; and
`a second connecting device for interfacing the interface device
`with the data transmit/receive device, the second connecting
`device including a sampling circuit for sampling the analog data
`provided by the data transmit/receive device and an analog-to-
`digital converter for converting data sampled by the sampling
`circuit into digital data,
`wherein the interface device is configured by the processor and
`the memory to include a first command interpreter and a second
`command interpreter,
`wherein the first command interpreter is configured in such a
`way that the command interpreter, when receiving an inquiry
`from the host device as to a type of a device attached to the
`multi-purpose interface of the host device, sends a signal,
`regardless of the type of the data transmit/receive device
`attached to the second connecting device of the interface
`device, to the host device which signals to the host device that it
`is an
`input/output device customary
`in a host device,
`whereupon the host device communicates with the interface
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`
`device by means of the driver for the input/output device
`customary in a host device, and
`wherein the second command interpreter is configured to
`interpret a data request command from the host device to the
`type of input/output device signaled by the first command
`interpreter as a data transfer command for initiating a transfer of
`the digital data to the host device.
`Ex. 1001, 12:42–13:12.
`
`F. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`We instituted inter partes review of all challenged claims as follows
`(Dec. 21):
`Challenged
`Claim(s)
`
`Basis
`
`References
`Pucci,1 Kepley,2 Schmidt,3 and the
`“sampling circuit” references (Horowitz,4
`Burr-Brown,5 Intersil,6 MT-090,7 and
`Oppenheim8)
`
`1, 3, 11, and 14
`
`§ 103(a)
`
`
`1 Marc F. Pucci, Configurable Data Manipulation in an Attached
`Microprocessor, 4 COMPUTING SYSTEMS 217 (1991) (“Pucci”) (Ex. 1041).
`2 US Patent No. 4,790,003 (“Kepley”) (Ex. 1042).
`3 Friedhelm Schmidt, THE SCSI BUS AND IDE INTERFACE (Addison-Wesley
`1995) (“Schmidt”) (Ex. 1007).
`4 Paul HOROWITZ, THE ART OF ELECTRONICS 246–47, 254–55, 421
`(Cambridge University Press 1980) (Ex 1017, “Horowitz”).
`5 Principles of Data Acquisition and Conversion, Burr-Brown Application
`Bulletin (1994) (Ex. 1021, “Burr-Brown”).
`6 Principles of Data Acquisition and Conversion, Intersil application Note
`(1986) (Ex. 1022, “Intersil”).
`
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`
`Challenged
`Claim(s)
`
`5
`
`Basis
`References
`§ 103(a) Pucci, Kepley, Schmidt, the “sampling
`circuit” references, and Li9
`
`In addition to the supporting argument for these grounds in the
`Petition, Petitioner also presents expert testimony. Ex. 1003, First
`Declaration of Erez Zadok, Ph.D. (“First Zadok Declaration”). Petitioner
`also presents expert testimony in support of its Reply. Ex. 1054, Second
`Declaration of Dr. Erez Zadok (“Second Zadok Declaration”). Patent
`Owner supports its arguments of patentability with expert testimony. Ex.
`2002, Declaration of Thomas A. Gafford (“Gafford Declaration”).
`
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`
`Claims of an expired patent are given their ordinary and customary
`meaning in accordance with Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005) (en banc) (“Phillips”). See Wasica Fin. GmbH v. Cont’l Auto.
`Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017) (applying the Phillips
`standard to construe the claims of an expired patent in an inter partes
`review). In this proceeding, Patent Owner states that “the ’399 Patent will
`probably expire prior to the Final Written Decision.” PO Resp. 8. We agree
`
`
`7 Sample-and-Hold Amplifiers, Analog Devices MT-090 Tutorial (2009)
`(Ex. 1023, “MT-090”).
`8 Alan V. Oppenheim and Ronald W. Schafer, Discrete-Time Signal
`Processing (Prentice-Hall 1989) (Ex. 1025, “Oppenheim”).
`9 US Patent No. 5,617,423 (“Li”) (Ex. 1053).
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`that the asserted expiration date is likely before the entry of a final written
`decision in this proceeding.
`Petitioner indicates that the U.S. Court of Appeals for the Federal
`Circuit (the “Federal Circuit”) has construed certain terms of the ’399 patent
`in connection with a related district court proceeding. Pet. 9−11 (citing In re
`Papst Licensing GmbH & Co. KG Litig. v. Fujifilm corp., 778 F.3d 1255
`(Fed. Cir. 2015); Ex. 1016). As indicated by Patent Owner in a related inter
`partes review concerning the ’399 patent, the expiration date is believed to
`be May 3, 2018 (20 years from the filing date). See Apple Inc. v. Papst,
`Case IPR2016-01839, Paper 14, 2. We reproduce below the Federal Circuit
`determinations regarding claim construction, and we adopt the claim
`constructions, to the extent they are applicable to the instant proceeding. No
`other terms are construed expressly, for purposes of this Decision.10
`
`Claim term
`
`District Court
`Construction
`
`“interface
`device”
`
`may not be “a permanent
`part of either the data
`transmit/receive device or
`the host device/computer.”
`Papst, 778 F.3d at 1262.
`
`Federal Circuit Holding
`
`“is not limited to… a
`device that is physically
`separate and apart from,
`and not permanently
`attached to, a data device
`(or a host computer).” Id.
`
`
`10 We note that Patent Owner filed, as Exhibit 2003, the claim construction
`opinion and order from the district court “for the Board’s consideration.”
`We have considered the order. We have not been presented with any
`argument or issue where either party asks us to construe the claim in view
`of, or differently than, the district court’s order. However, to the extent the
`district court’s claim construction is proffered as relevant to an issue, we
`discuss its applicability to our analysis in this decision.
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`Claim term
`
`District Court
`Construction
`
`Federal Circuit Holding
`
`“second
`connecting
`device”
`
`“a physical plug or socket
`for permitting a user readily
`to attach and detach the
`interface device with a
`plurality of dissimilar data
`transmit/receive devices.”
`Id. at 1264.
`
`does not require “a
`physical plug, socket, or
`other structure that
`permits a user to readily
`attach and detach
`something else.” Id. at
`1265.
`
`“data transmit/
`receive device”
`
`“virtual files”
`
`“input/output
`device
`customary in a
`host device”
`
`“a device that is capable of
`either (a) transmitting data to
`or (b) transmitting data to
`and receiving data from the
`host device when connected
`to the host device by the
`interface device.” Id. at 1265
`(emphasis omitted).
`“files that appear to be but
`are not physically stored;
`rather they are constructed
`or derived from existing data
`when their contents are
`requested by an application
`program so that they appear
`to exist as files from the
`point of view of the host
`device.” Id. at 1267.
`“data input/output device
`that was normally present
`within the chassis of most
`commercially available
`computers at the time of the
`invention.” Id. at 1270.
`
`“need not be capable of
`communicating ‘when
`connected to the host
`device by the interface
`device.’” Id. at 1266.
`
`not limited to a file
`“whose content is stored
`off the interface device,
`though it includes such
`files.” Id. at 1268.
`
`not limited to a device
`“‘normally present within
`the chassis’ of a
`computer.” Id. (emphasis
`in original).
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`B. SUMMARY OF APPLICABLE LEGAL PRINCIPLES
`
`A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if
`the differences between the claimed subject matter and the prior art are such
`that the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`In inter partes review, it is petitioner’s “burden to demonstrate both
`that a skilled artisan would have been motivated to combine the teachings of
`the prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.” In
`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
`(quotations omitted). Accordingly, the petitioner must “articulate[]
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (citation omitted). The “factual
`inquiry” into the reasons for “combin[ing] references must be thorough and
`searching, and the need for specificity pervades.” In re Nuvasive, Inc., 842
`F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). An obviousness
`determination cannot be reached where the record lacks “explanation as to
`how or why the references would be combined to produce the claimed
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`invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016).
`
`C. LEVEL OF ORDINARY SKILL IN THE ART
`
`Consistent with the Graham factors, we first determine the assessment
`of ordinary skill in the art applicable to this proceeding. In our Institution
`Decision we stated,
`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 ¶¶ 29−30; 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 difference[] 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.
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`Dec. 9−10 (internal citation omitted). Patent Owner in its Response
`reiterates the same assessment of ordinary skill that it proffered in the
`Preliminary Response. PO Resp. 6−7. Patent Owner agrees that “there are
`not meaningful differences between the parties’ definitions of a POSITA for
`purposes of this proceeding.” Id. at 7. More importantly, no argument
`presented hinges on whether either party’s proposed assessment of ordinary
`skill in the art is adopted.
`We find the Zadok testimony in this regard persuasive as it presents
`more than just the educational level of a person of ordinary skill in the art.
`Petitioner’s proposal is more helpful as it identifies the familiar objects of
`the technology used by a person of ordinary skill at the time of the
`invention: operating systems (e.g., MS-DOS, Windows, Unix) and their
`associated file systems (e.g., a FAT file system), device drivers for computer
`components and peripherals (e.g., mass storage device drivers), and
`communication interfaces (e.g., SCSI and PCMCIA interfaces). Ex. 1003
`¶ 29. We, therefore, determine that Petitioner’s assessment of ordinary skill
`in the art is appropriate.
`
`D. FACTUAL ANALYSIS OF ASSERTED GROUNDS
`
`The two asserted grounds rely primarily on Pucci as teaching all of the
`claim limitations of the challenged claims, except for a sampling circuit,
`device recognition process, data transmit/receive device, and digital signal
`processor. Pet. 12−70. Petitioner relies on the other asserted references as
`disclosing these missing limitations. For example, Schmidt is alleged to
`teach 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
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`upon for its teaching of a voice mail system for “computer-to-computer data
`file transfer.” Id. at 13 (citing Ex. 1042, Abs.), 16−19. Li is relied upon for
`its teaching of a digital signal processor. Id. at 46−47.
`Given our discussion that follows, a short overview of Pucci, Kepley,
`and Schmidt are in order.
`
`1. Overview of Pucci (Ex. 1041)
`
`Pucci is entitled “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 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 the
`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
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`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 Small Computer Systems Interface (“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.
`
`
`
`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 to the A-to-D converters by implementing “actions,”
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`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.
`
`2. Kepley (Exhibit 1042)
`
`Kepley is entitled “Message Service System Network,” and is directed
`to a message service system network that provides a voice mail message
`transfer capability between voice mail message service systems. Ex. 1042,
`[54], Abstract. According to Kepley, existing voice mail systems had
`multiple telephone switching systems, each associated with a voice mail
`system, and it was difficult to network the voicemail service system together
`without incurring a significant transmission cost and degradation of the
`quality of the voice transmissions. Id. at 1:54−60. In practice, when a voice
`mail message received at one voice mail system is transmitted to a distant
`voice mail system, the message, which is stored in digital form, is
`reconverted to analog form for transmission over standard voice-grade
`trunks. Id. at 1:65−68. The transmitted voice mail message then is
`reconverted to digitally encoded form and stored in the distant voice mail
`system. Id. at 2:1−2.
`Kepley solves these problems by improving the message transfer
`capability between the voice mail message service systems such as by
`performing the message transfer as a “computer-to-computer data file
`transfer over high speed data lines which provides error correction
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`capability.” Id. at 2:51−63. Kepley describes the voice mail message
`systems in connection with Figure 1, reproduced below.
`
`
`
`Figure 1 depicts two telephone switching systems 100, 140, each with
`a voice mail service system 110, 150, (illustrated further with a red outline)
`respectively. Kepley describes that when telephone station set T100 creates
`a voice mail message for delivery to a message recipient at telephone station
`set T160, the feature processor of voice mail service system 110 places the
`message in a queue. Ex. 1042, 5:50−56. At the scheduled delivery time,
`feature processor 112 retrieves the stored voice mail message and originates
`a data call to the destination voice mail service system 150 to transfer the
`voice message. Id. at 5:56−65. “The transfer of a voice mail message is
`accomplished as a computer-to-computer data file transfer.” Id. at 5:66−67.
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`This data call is originated from voice mail service system 110 to telephone
`switching system 100, over communication line 104, and then further
`through central exchange office 130, telephone switching system 140, and
`over communication line 154 to destination voice mail service system 150.
`Id. at 6:1−5.
`Kepley further describes that the voice mail messages are stored as
`digitally encoded voice signals, which feature processor 112 formats for
`transmission over the data call. Ex. 1042, 5:41−42, 6:8−10. This formatting
`includes reading the telephone number of the message sender from the voice
`mail message, appending the message sender to the retrieved voice mail
`message and adding data file transfer header information to form the data
`file that is transmitted over the data call to destination voice mail service
`system 150. Id. at 6:10−20.
`
`3. Schmidt (Ex. 1007)
`
`Schmidt describes the SCSI bus and IDE Integrated Drive Electronics
`(“IDE”) interface, which both are American Nation Standards Institute
`(“ANSI”) standards. Ex. 1007, Preface. According to Schmidt, these
`interfaces are two of the most important interfaces for computer peripherals
`in use at that time of Schmidt’s publication, and almost all computers at that
`time, from personal computers 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.
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`
`4. Differences Between the Prior Art and Claimed Subject Matter:
`Claims 1, 11, and 14
`Petitioner proffers arguments and evidence supporting the contention
`that Pucci discloses:
`a) A processor (Pucci’s application CPU and interface SBC CPUs, in
`combination) (Pet. 26);
`b) A memory (Pucci’s SBC memory) (Id.);
`c) A first connecting device for interfacing the host device with the
`interface device (Pucci’s SCSI bus interface in an SBC) (Id. at
`26−27);
`d) Multi-purpose interface of the host device (SCSI host controller of
`Pucci’s workstation) (Id. at 27); and
`e) A second connecting device for interfacing the interface device
`with the data transmit/receive device (Pucci’s A-to-D converters
`within ION) (Id. at 28).
`With regard to the recited “data transmit/receive device being
`arranged for providing analog data,” Petitioner relies on Kepley’s disclosure
`of a telephone switch. Id. at 16, 22 (stating that Kepley discloses a
`telephone switch that can be used with Pucci’s voice message application
`(A-to-D conversion application)). Petitioner also proffers argument and
`supporting testimony from Dr. Zadok that a person of ordinary skill in the
`art would have understood that Kepley’s telephone switching system 100
`could be used as the I/O device/telephone switch in Pucci’s exemplary voice
`mail system. Id. at 18 (citing Ex. 1003 ¶ 79). We agree with Petitioner and
`we credit Dr. Zadok’s testimony in this regard. Furthermore, we note that
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`Patent Owner does not dispute the combination of Pucci and Kepley with
`regard to the “data transmit/receive device.”
`The challenged claims further recite that the second connecting device
`includes “sampling circuits” and an “analog-to-digital converter.” Claim 1
`(Ex. 1001, 12:55−60); claim 11 (id. at 13:63−67); claim 14 (id. at 14:62−67).
`Petitioner points out that the ION node includes A-to-D converters that
`constitute the “second connecting device,” and acknowledges that Pucci
`does not explicitly teach that the second connecting device includes a
`sampling circuit. Pet. 28−29. Petitioner asserts, however, that the combined
`teachings of Pucci, Kepley, and Schmidt, together with the general
`knowledge of a person of ordinary skill in the art regarding sampling
`circuits, as evidenced by the “sampling circuit” references, teach or suggest
`the disputed limitations. Id. at 29–30. Nevertheless, Dr. Zadok opines, and
`we agree, that the use of a sampling circuit and analog-to-digital converters
`were well-known at the time of the invention. Ex. 1003 ¶ 100. Petitioner
`cites to Dr. Zadok’s testimony (Ex. 1003 ¶¶ 100-102), as well as five prior
`art references—namely, Horowitz (Ex. 1017), Burr-Brown (Ex. 1021),
`Intersil (Ex. 1022), MT-090 (Ex. 1023), and Oppenheim (Ex. 1025)—to
`show that using a sampling circuit with, or in, an analog-to-digital converter
`was well-known at the time of the invention. For instance, citing to
`Oppenheim (Ex. 1025, 114), Petitioner submits that a person of ordinary
`skill in the art would have understood that analog-to-digital converters
`typically included a sampling circuit and that using a sampling circuit is
`beneficial because the conversion of an analog voltage to a quantized binary
`code does not take place instantaneously—“the sampling circuit holds the
`voltage at a single value for a short time period to allow conversion to
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`complete before converting the next value.” Pet. 29−30 (citing Ex. 1025,
`114; Ex. 1003 ¶¶ 100–102). Further, Dr. Zadok testifies that an analog-to-
`digital system typically “included a sampling circuit such as a sample and
`hold circuit,” which is included to help improve the operations of the
`“analog-to-digital converter.” Ex. 1003 ¶¶ 100, 101 (citing Ex. 1025, 114,
`190).
`Thus, we agree with Petitioner’s contention that a person of ordinary
`skill in the art would have understood analog-to-digital converters typically
`include a sampling circuit, such as a sample and hold circuit, and that it
`would have been obvious to such an artisan to include a sampling circuit as
`part of Pucci’s A-to-D converter embodiment to improve the efficiency of
`the conversion process. Pet. at 29−30 (citing Ex. 1003 ¶¶ 100–102; Ex.
`1025, 81, 114; Ex. 1021, 1, 2; Ex. 1022, 1, Fig. 1; Ex. 1023; Ex. 1017, 421,
`Fig. 9.47). We also credit Dr. Zadok’s testimony, discussed above, in this
`regard. We further note that Patent Owner does not challenge Petitioner’s
`contentions or Dr. Zadok’s testimony concerning the sampling circuit.
`
`i.
`
`Inquiry/Response Limitations
`
`Claims 1 and 11 recite a “first command interpreter” that receives an
`inquiry from the host device, and “sends a signal, regardless of the type of
`the data transmit/receive device attached to the second connecting device of
`the interface device.” Ex. 1001, 12:65−13:3, 14:4−10. Claim 14 recites a
`similar limitation, except that claim 14 does not require a “first command
`interpreter.” Id. at 14:47−54. In other words, and by way of summary, a
`host device sends an inquiry to the interface requesting identification of the
`type of device attached to the host via the multi-purpose interface, such as
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`for example, a SCSI interface. Regardless of the type of device with which
`the host device actually communicates, the response to the inquiry identifies
`the device as an input/output device customary in a host device. Petitioner
`has mapped the “inquiry/response” limitations to a combination of the SCSI
`standard teachings of Pucci and of Schmidt. Pet. 33−37. Petitioner also
`proffers rationales for the combination of the teachings of Pucci and
`Schmidt, such as, for example, that Pucci provides the motivation to
`incorporate Schmidt’s teachings of the SCSI protocol because Pucci
`discloses using the SCSI bus. Pet. 15 (citing Ex. 1003 ¶¶ 71−73).
`Pucci, for example, expressly discloses the use of the SCSI disk
`interface as the “low level connection” between the workstation and the ION
`node applications. Ex. 1041, 219. Further, Pucci describes that “ION
`appears to the workstation as a large, high speed disk device, but with user
`extensible characteristics.” Id. at Abstract; Pet. 33. The connection of the
`workstati