Trials@uspto.gov
`571-272-7822
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` Paper 13
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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 IPR2016-01864
`Patent 6,470,399 B1
`____________
`
`
`
`
`
`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
`
`
`
`
`
`
`571-272-7822
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` Paper 13
`
`
`
` Entered: April 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`____________
`
`Case IPR2016-01864
`Patent 6,470,399 B1
`____________
`
`
`
`
`
`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
`
`
`
`
`
`
`
`IPR2016-01864
`Patent 6,470,399 B1
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`INTRODUCTION
`
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1, 3, 5, 11, and 14 (“the challenged claims”) of U.S. Patent
`No. 6,470,399 B1 (Ex. 1001, “the ’399 patent”). Paper 2 (“Pet.”). Papst
`Licensing GmbH & Co., KG (“Patent Owner”), filed a Preliminary
`Response. Paper 12 (“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 ’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 9, 2–5.
`
`B. The ’399 Patent
`
`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 1:65–2:13. Several solutions to this problem were known in
`the art. Id. at 2:16–3:21. For example, IOtech offered an interface device
`for laptops, using a plug-in card for converting the personal computer
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`memory card association (“PCMCIA”) interface into a known standard
`interface (“IEEE 1284”). Id. at 2:16–24. 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
`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
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`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, 9:29–32. According to
`the ’399 patent, SCSI interfaces were known to be present on most host
`devices or laptops. Id. at 9:32–38. By using a standard interface of a host
`device and by simulating an input/output device to the host device, the
`interface device “is automatically supported by all known host systems
`without any additional sophisticated driver software.” Id. at 12:23–29.
`
`C. 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
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`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 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.
`
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 4):1
`
`Challenged
`Claim(s)
`
`1, 3, 11, and 14
`
`Basis
`
`References
`Pucci,2 Kepley,3 Schmidt,4 and the
`“sampling circuit” references (Horowitz,5
`Burr-Brown,6 Intersil,7 MT-090,8 and
`Oppenheim9)
`
`
`§ 103(a)
`
`1 For clarity, we include the “sampling circuit” references in this statement
`of the asserted ground because they are relied upon by Petitioner and
`discussed in its analysis (see, e.g., Pet. 29−30). To the extent that Patent
`Owner may argue that Petitioner did not identify this ground in the Petition,
`we exercise our discretion to set forth this ground explicitly, thereby clearly
`placing Patent Owner on notice of the asserted combination of references,
`upon which review is instituted. See Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2140–2041 (2016).
`
`2 Marc F. Pucci, Configurable Data Manipulation in an Attached
`Multiprocessor, 4 COMPUTING SYSTEMS 217 (1991) (“Pucci”) (Ex. 1041).
`
`3 U.S. Patent No. 4,790,003 (“Kepley”) (Ex. 1042).
`
`4 Friedhelm Schmidt, THE SCSI BUS AND IDE INTERFACE (Addison-Wesley
`1995) (“Schmidt”) (Ex. 1007). See Ex. 1024 ¶¶ 23–28.
`
`5 Paul HOROWITZ, THE ART OF ELECTRONICS 246–47, 254–55, 421
`(Cambridge University Press 1980) (Ex 1017, “Horowitz”).
`
`6 Principles of Data Acquisition and Conversion, Burr-Brown Application
`Bulletin (1994) (Ex. 1021, “Burr-Brown”).
`
`7 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 Li10
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`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
`
`
`8 Sample-and-Hold Amplifiers, Analog Devices MT-090 Tutorial (2009)
`(Ex. 1023, “MT-090”).
`
`9 Alan V. Oppenheim and Ronald W. Schafer, Discrete-Time Signal
`Processing (Prentice-Hall 1989) (Ex. 1025, “Oppenheim”).
`
`10 U.S. Patent No. 5,617,423 (“Li”) (Ex. 1053).
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`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner indicates that the U.S. Court of Appeals for 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. This date is most likely before the entry of a final
`written decision in this proceeding. We reproduce below the Federal Circuit
`holdings 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.
`
`Claim term
`
`District Court
`Construction
`
`CAFC Holding
`
`“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.
`
`“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.
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`Claim term
`
`District Court
`Construction
`
`CAFC 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”
`
`“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.
`“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.
`
`“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.
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`Claim term
`
`“input/output
`device
`customary in a
`host device”
`
`District Court
`Construction
`
`CAFC Holding
`
`“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.
`
`not limited to a device
`“‘normally present within
`the chassis’ of a
`computer.” Id. (emphasis
`in original).
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner’s
`declarant, Erez Zadok, Ph.D., testifies that a person having ordinary skill in
`the art at the time of the invention “would have had at least a four-year
`undergraduate degree in electrical engineering, computer science, computer
`engineering, or related field of study, or equivalent experience, and at least
`two years’ experience in studying or developing computer interfaces or
`peripherals and storage related software.” Ex. 1003 ¶¶ 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
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`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
`either assessment, but, for purposes of this Decision, we adopt Petitioner’s
`assessment.
`
`C. Obviousness Over Pucci in Combination with Other References
`The two asserted grounds rely primarily on Pucci as disclosing 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. 12−47. Petitioner relies on the other asserted references as
`disclosing the missing limitations. For example, Schmidt is alleged to
`disclose the details of a SCSI adapter and its functionality, in particular with
`regard to the INQUIRY command. Id. at 19–22. Further, Kepley is relied
`upon for its disclosure of a voice mail system for “computer-to-computer
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`data file transfer.” Id. at 13 (citing Ex. 1042, Abs.), 16−19. And Li is relied
`upon for its disclosure of a digital signal processor. Id. at 46−47.
`Given our discussion that follows, a short overview of Pucci and
`Schmidt 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
`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.
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`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.
`
`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
`
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`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.
`
`2. Overview of Schmidt
`
`Schmidt describes the SCSI bus and IDE (Integrated Drive
`Electronics) interface, which both are ANSI (American Nation Standards
`Institute) standards. Ex. 1007, 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. 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 in showing that the challenged claims
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`would have been obvious over Pucci in combination with the other asserted
`references.
`
`Independent Claims 1, 11, and 14
`i.
`On this record, we are satisfied that the Petition proffers arguments
`and evidence supporting the contention that Pucci discloses:
`a) A processor (Pucci’s application CPU and interface SBC CPUs, in
`combination) (Pet. at 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 data transmit/receive device, we note that the
`Petition relies on the telephone switch in the combination of teachings of
`Pucci, Schmidt, and Kepley. Pet. 22. In particular, Petitioner notes
`Kepley’s disclosure of a telephone switch with voice mail features that can
`be used with Pucci’s voice message application. Id. Petitioner also proffers
`testimony from Dr. Zadok supporting the proffered reason for combining the
`teachings of Kepley’s voice mail system with Pucci. See Ex. 1003 ¶ 66–68.
`For example, we note that Petitioner relies on Dr. Zadok’s testimony to state
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`that “[t]he modification would have involved a simple substitution of one
`known element (Kepley’s analog voice message processing) for another
`(Pucci’s analog voice message processing) to obtain predictable results.” Id.
`¶ 68; see also Pet. 13−14. Dr. Zadok states that storage of voice message
`data in the form of a file was well-known, and relies on Pucci’s disclosure
`that the ION node includes disk interfaces that “are used to control local
`node storage, which may consist of file system data.” Id. (citing Ex. 1041,
`222). On this record and for purposes of this Decision, Petitioner provides a
`reasonable rationale for adding Kepley’s telephone switching system
`teachings to those of Pucci. Id. at 17−18, 22−24.
`With regard to the recognition limitations, the Petition relies on
`Pucci’s disclosure of using a SCSI interface, and acknowledges that Pucci
`does not describe the SCSI interface. Pet. 19−20. For the missing details,
`Petitioner relies on Schmidt, which describes operation of the SCSI
`interface. Id. at 15, 19−22, 33−37, 40−44. Patent Owner argues that
`Petitioner has proffered “conclusory analysis.” Prelim. Resp. 18−19. For
`purposes of this Decision, Petitioner provides at least one rationale that
`appears reasonable on this record for adding Schmidt’s teachings of SCSI
`command details to the teachings of Pucci. See, e.g., Pet. 21 (Petitioner
`arguing that Schmidt teaches that the SCSI interface “makes it possible to
`write device drivers for a device without knowing device specific details,”
`and that inclusion of SCSI on a workstation to connect with a hard disk was
`commonplace).
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`With regard to the sampling circuit, Petitioner asserts that the
`combination 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, teaches or
`suggests the disputed limitations. Pet. 29–30. For example, Petitioner
`argues that Pucci describes A-to-D converters (second connecting device)
`being part of the ION node and interfacing with the Pucci telephone
`switching system. Id. at 29−30. Petitioner confirms, however, that Pucci
`does not disclose explicitly that the A-to-D converters include a sampling
`circuit. Id. at 29. Nevertheless, Petitioner contends that a person with
`ordinary skill in the art would have understood that 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 for
`improving the efficiency of the conversion process. Id. at 29−30 (citing Ex.
`1003 ¶¶ 100–02; Ex. 1025, 81, 114; Ex. 1021, 1, 2; Ex. 1022, 1, Fig. 1; Ex.
`1023; Ex. 1017, 421, Fig. 9.47).
`Patent Owner counters that Petitioner does not provide a reference
`that teaches a sampling circuit, nor does Petitioner provide any reason for an
`ordinarily skilled artisan to add a sampling circuit to Pucci’s analog-to-
`digital converter or modify Pucci’s analog-to-digital converter to include a
`sampling circuit. Prelim. Resp. 20–21. According to Patent Owner, because
`Pucci uses multiple A-to-D converters to handle only one analog channel,
`there would be no reason for one with ordinary skill in the art to understand
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`Pucci as inherently disclosing a sampling circuit or to modify Pucci to
`include a sampling circuit. Id. at 21−23. Based on the evidence in this
`record, we determine that Petitioner has demonstrated sufficiently for
`purposes of this Decision that the combination of prior art teachings at least
`suggests a second connecting device including an analog-to-digital converter
`and a sampling circuit, as recited in the challenged claims. We have
`considered Patent Owner’s arguments to the contrary and find them
`unpersuasive on this record.
`In particular, Patent Owner’s argument that Petitioner fails to cite a
`reference to teach a sampling circuit is unavailing. Notably, Petitioner cites
`to Dr. Zadok’s testimony (Ex. 1003 ¶¶ 100-02), 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 with 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 complete before
`converting the next value.” Pet. 29−30 (citing Ex. 1025, 114; Ex. 1003
`¶¶ 100-02). Further, Petitioner proffers Dr. Zadok’s testimony that an
`analog-to-digital system typically “included a sampling circuit such as a
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`sample and hold circuit”, which is included to help improve the operations
`of the analog-to-digital converter,” and is beneficial because by holding the
`voltage at a single value for a short time [] allow[s] conversion to complete
`before converting the next value. Ex. 1003 ¶¶ 100-101 (citing Ex. 1025,
`114, 190). On this record, we determine that Petitioner has provided at least
`one prior art reference, e.g., Oppenheim, to teach a sampling circuit with an
`analog-to-digital converter. See, e.g., Ex. 1025, 114–115, 190; Ex. 1021, 2;
`Ex. 1017, 421; Ex. 1023, 1–2.
`We also are not persuaded by Patent Owner’s argument that Pucci’s
`alleged disclosure of one analog channel is evidence that a person of
`ordinary skill in the art would not recognize a need for a sampling circuit.
`Prelim. Resp. 21–22. To the extent Patent Owner distinguishes the prior art
`teachings on the basis of the ’399 patent’s disclosure of multiple analog
`channels, the argument is an attempt to import a limitation from a preferred
`embodiment disclosed in the Specification, i.e., Patent Owner argues that the
`prior art must teach multiple analog channels. Such an argument, however,
`is not commensurate with the scope of the claims, and is, therefore,
`unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It is well
`established that limitations not appearing in the claims cannot be relied upon
`for patentability). Nothing in the claims requires more than one analog
`channel.
`With regard to the further limitations of claims 1, 11, and 14, 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
`
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`Dr. Zadok, and we are persuaded by the evidence and analysis presented for
`purposes of this Decision. Pet. 15−44; Ex. 1003 ¶¶ 65−126. 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 those claims of the ’399 patent are
`unpatentable over Pucci in combination with other references.
`
`Dependent Claims 3 and 5
`
`ii.
`The Petition addresses each of the challenged dependent claims 3 and
`5. Pet. 44−47. For claim 3, for example, the Petition points out that the
`recited “memory means compris[ing] a buffer” is taught in Pucci because
`data is buffered after conversion and prior to transmission to the
`workstation. Pet. 44−45. In particular, the Petition points out Pucci’s
`disclosure that “the workstation ‘continues to read the data address until all
`buffered data have been obtained.’” Id.at 45 (citing Ex. 1041, 232).
`With regard to claim 5, Petitioner relies on Li’s disclosure of a digital
`signal processor (“DSP”) to perform compression. Id. at 46−47. According
`to Petitioner, it would have been obvious to an ordinarily skilled artisan to
`use a DSP to implement voice compression in Pucci’s system for faster and
`more effective processing. Id. (citing Ex. 1003 ¶¶ 129−131). For purposes
`of this Decision, Petitioner provides a reasonable rationale for adding Li’s
`DSP teachings to those of Pucci, Schmidt, and Kepley. 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
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`in showing that the asserted prior art combination renders obvious dependent
`claims 3 and 5.
`
`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 ’399 patent are unpatentable based on the following
`asserted grounds.
`Challenged
`Claim(s)
`
`Basis
`
`References
`Pucci, Kepley, Schmidt, and the
`“sampling circuit” references (Horowitz,
`Burr-Brown, Intersil, MT-090, and
`Oppenheim)
`§ 103(a) Pucci, Kepley, Schmidt, the “sampling
`circuit” references, and Li
`
`§ 103(a)
`
`1, 3, 11, and 14
`
`5
`
`
`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
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`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, 3, 5, 11, and 14
`of the ’399 patent; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’399 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.
`
`
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`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
`
`
`23
`
`
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