Trials@uspto.gov
`571-272-7822
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`Paper 11
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` Entered: March 10, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00158
`Patent 8,504,746 B2
`____________
`
`
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
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`
`
`
`Paper 11
`
` Entered: March 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00158
`Patent 8,504,746 B2
`____________
`
`
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00158
`Patent 8,504,746 B2
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`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1, 4, 6–8, 10, 11, 14, 20, 21, 23, and 30 (“the challenged
`
`claims”) of U.S. Patent No. 8,504,746 B2 (Ex. 1001, “the ’746 patent”).
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`Paper 2 (“Pet.”). Papst Licensing GmbH & Co., KG (“Patent Owner”), filed
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`a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
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`unless the information presented in the petition “shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” For the reasons set forth
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`below, we determine that, on this record, Petitioner has not established a
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`reasonable likelihood that it would prevail with respect to any of the
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`challenged claims. We hereby decline to institute an inter partes review in
`
`this proceeding.
`
`A. Related Matters
`
`The parties indicate that the ’746 patent is involved in Papst Licensing
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`GmbH & Co. KG v. Apple, Inc., Case No. 6-15-cv-01095 (E.D. Tex.) and
`
`other proceedings. Pet. 2–3; Paper 5, 2–5.
`
`B. The ’746 Patent
`
`The ’746 patent describes an interface device for communication
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`between a computer host device and a data transmit/receive device (e.g., a
`
`multi-meter, transmitting measured data to a computer). Ex. 1001, 1:20–24,
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`1:56–59. According to the ’746 patent, using a specific driver to match very
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`closely to an individual host system would achieve high data transfer rates
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`across the interface, but the specific driver cannot be used with other host
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`systems. Id. at 2:6–21. Several solutions to this problem were known in the
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`art. Id. at 2:22–3:24. For example, IOtech introduced an interface device
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`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
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`interface (IEEE 1284). Id. at 2:25–30. The plug-in card provided a printer
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`interface for enhancing data transfer rates. Id. at 2:30–34. In another
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`example, a floppy disk drive interface was used for connecting a host device
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`to a peripheral device. Id. at 3:10–14. The interface appeared as a floppy
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`disk drive to the host, allowing a floppy disk drive and another peripheral
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`device to be connected to the host device. Id. at 3:10–19.
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`The ’746 patent indicates that the “invention is based on the finding
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`that both a high data transfer rate and host device-independent use can be
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`achieved if a driver for an input/output device customary in a host device” is
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`utilized. Id. at 3:32–36. Figure 1 of the ’746 patent, reproduced below,
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`illustrates a block diagram of an interface device.
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`As shown in Figure 1 above, interface device 10 connects to a host
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`device via host line 11, and to a data transmit/receive device via output line
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`16. Id. at 4:59–5:7. Interface device 10 includes first connecting device 12,
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`second connecting device 15, digital signal processor 13, and memory
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`means 14. Id. In a preferred embodiment, the interface device is attached to
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`a host device via a multi-purpose interface—e.g., a small computer systems
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`interface (SCSI)—which includes both an interface card and the driver for
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`the interface card. Id. at 3:49–55, 8:37–41. According to the ’746 patent,
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`SCSI interfaces were known to be present on most host devices or laptops.
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`Id. at 8:37–41. By using a standard interface of a host device and by
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`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
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`sophisticated driver software.” Id. at 11:29–35.
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`C. Illustrative Claim
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`Of the challenged claims, claim 1 is independent. Each of claims 4,
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`6–8, 10, 11, 14, 20, 21, 23, and 30 depends directly or indirectly from
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`claim 1.
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`Claim 1 is illustrative:
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`1. An analog data acquisition device operatively connectable to
`a computer through a multipurpose interface of the computer, the
`computer having an operating system programmed so that, when
`the computer receives a signal from the device through said
`multipurpose interface of the computer indicative of a class of
`devices, the computer automatically activates a device driver
`corresponding to the class of devices for allowing the transfer of
`data between the device and the operating system of the
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`computer, the analog data acquisition device comprising:
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`a) a program memory;
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`b) an analog signal acquisition channel for receiving a signal
`from an analog source;
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`c) a processor operatively interfaced with the multipurpose
`interface of the computer, the program memory, and a data
`storage memory when the analog data acquisition device is
`operational;
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`d) wherein the processor is configured and programmed to
`implement a data generation process by which analog data is
`acquired from the analog signal acquisition channel, the analog
`data is processed and digitized, and the processed and digitized
`analog data is stored in a file system of the data storage memory
`as at least one file of digitized analog data;
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`e) wherein when the analog acquisition device is operatively
`interfaced with the multipurpose interface of the computer, the
`processor executes at least one instruction set stored in the
`program memory and thereby automatically causes at least one
`parameter indicative of the class of devices to be sent to the
`computer through the multipurpose interface of the computer,
`independent of the analog source, wherein the analog data
`acquisition device is not within the class of devices; and
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`f) wherein the processor is further configured and programmed
`to execute at least one other instruction set stored in the program
`memory to thereby allow the at least one file of digitized analog
`data acquired from the analog signal acquisition channel to be
`transferred to the computer using the device driver corresponding
`to said class of devices so that the analog data acquisition device
`appears to the computer as if it were a device of the class of
`devices;
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`whereby there is no requirement for any user-loaded file transfer
`enabling software to be loaded on or installed in the computer in
`addition to the operating system.
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`Ex. 1001, 11:57–12:36.
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability (Pet. 46):
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`Challenged Claims
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`Basis
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`References
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`1, 4, 68, 10, 11, 14, 20,
`21, 30
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`§ 103(a) Ousley1 and Steger2
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`23
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`§ 103(a) Ousley, Steger, and Nara3
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`II. DISCUSSION
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
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`broadest reasonable interpretation standard as the claim interpretation
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`
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`1 US Patent No. 7,184,922 B2, filed Feb. 28, 2005 and issued on Feb. 27,
`2007 (“Ousley”) (Ex. 1058).
`
`2 US Patent No. 7,542,867 B2 (“Steger”) (Ex. 1065).
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`3 US Patent No. 6,377,617 B1 (“Nara”) (Ex. 1066).
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`standard to be applied in inter partes reviews). Under the broadest
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`reasonable interpretation standard, claim terms generally are given their
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`ordinary and customary meaning, as would be understood by one of ordinary
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`skill in the art in the context of the entire disclosure. See In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
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`claim terms that are in controversy need to be construed, and only to the
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`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this
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`Decision, it is not necessary for us to construe any claim term explicitly.
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`B. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
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`may be considered, including the “type of problems encountered in the art;
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`prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active
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`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
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`(internal quotation and citation omitted). In that regard, Petitioner’s
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`declarant, Erez Zadok, Ph.D., testifies that a person having ordinary skill in
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`the art at the time of the invention “would have had at least a four-year
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`undergraduate degree in electrical engineering, computer science, computer
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`engineering, or related field of study, or equivalent experience, and at least
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`two years’ experience in studying or developing computer interfaces or
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`peripherals and storage related software.” Ex. 1003 ¶ 28. Dr. Zadok further
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`testifies that such an artisan also would have been “familiar with operating
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`systems (e.g., MS-DOS, Windows, Unix), their associated file systems
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`(e.g., a FAT, UFS, FFS), device drivers for computer components and
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`peripherals (e.g., mass storage device drivers), and communication
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`interfaces (e.g., SCSI, USB, PCMCIA).” Id. Patent Owner confirms that
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`Petitioner’s statements regarding the level of ordinary skill in the art are
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`partially consistent with Patent Owner’s view, but nonetheless contends that
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`an ordinarily skilled artisan would have one more year of experience, or,
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`alternatively, five or more years of experience without a bachelor’s degree.
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`Prelim. Resp. 57. We do not observe a meaningful differences between the
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`parties’ assessments of a person of ordinary skill in the art. We further note
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`that either assessment appears consistent with the level of ordinary skill in
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`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
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`analysis in this Decision is supported by either assessment, but, for purposes
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`of this Decision, we adopt Petitioner’s assessment.
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`C. Obviousness Over Ousley in Combination with Other References
`
`Each of Petitioner’s asserted grounds of unpatentability relies on
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`Ousley. Pet. 6. Ousley has a filing date of February 28, 2005, which is after
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`the ’746 patent’s foreign priority date of March 4, 1997. Ex. 1058 at [22];
`
`Ex. 1001 at [30]. Petitioner asserts that the challenged claims of the ’746
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`patent are not entitled to the benefit of the filing date of US Patent
`
`Application No. 11/928,283 ( “the ’283 Application,” Ex. 1067) because the
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`’283 Application allegedly lacks adequate written description support for the
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`subject matter recited in the challenged claims. Pet. 9. In particular,
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`Petitioner alleges that the ’283 Application fails to provide adequate written
`
`description support for the limitation “stor[age] in a file system of the data
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`storage memory” of the analog data acquisition device. Id. at 9–12.
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`Petitioner also alleges that the challenged claims of the ’746 patent are not
`
`entitled to the benefit of the filing date of US Patent Application 11/078,778
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`(“the ’778 Application,” Ex. 1061), for the same reasons proffered with
`
`respect to the ’283 Application. Id. at 12. Patent Owner opposes. Prelim.
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`Resp. 19–24.
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`For the reasons that follow, we determine that Petitioner has not
`
`established sufficiently that the challenged claims are not entitled to the
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`benefit of the filing date of the ’283 Application and the ’778 Application.
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`Consequently, Petitioner fails to make a threshold demonstration that Ousley
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`is prior art to the challenged claims of the ’746 patent in this proceeding. 35
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`U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2).
`
`Principles of Law
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`Under 35 U.S.C. § 120, a patent claim is entitled to the benefit of the
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`filing date of an prior-filed application only if the disclosure of the
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`prior-filed application provides written description support for the patent
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`claim as required by 35 U.S.C. § 112. In re Chu, 66 F.3d 292, 297 (Fed. Cir.
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`1995). The test for determining compliance with the written description
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`requirement under 35 U.S.C. § 112, ¶ 1, is whether the original disclosure of
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`the earlier-filed application reasonably would have conveyed to one with
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`ordinary skill in the art that the inventor had possession the claimed subject
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`matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli
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`Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); In re Kaslow,
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`707 F.2d 1366, 1375 (Fed. Cir. 1983).
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`File System
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`
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`Claim 1 recites “the processed and digitized analog data is stored in a
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`file system of the data storage memory as at least one file of digitized analog
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`data.” Ex. 1001, 12:14. Petitioner alleges that the ’283 Application lacks
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`adequate written description support for storing the processed and digitized
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`analog data “in a file system of the data storage memory” of the analog data
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`acquisition device. Pet. 9. In particular, Petitioner argues that the ’283
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`Application “includes no mention whatsoever of any file system on the
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`interface device” and that “the data is never stored as a file in a file system
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`on the interface device” because the files are “virtual” files, not actual files,
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`and the FAT is merely simulated. Id.
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`Patent Owner counters that the ’282 Application describes the
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`interface device using files and a file allocation table (FAT). Prelim. Resp.
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`2122; see Ex. 1067 ¶¶ 24 (directory structure in virtual hard disk, reading
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`the file allocation table), 29 (create configuration file on the interface device
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`10), 30 (EXE files installed and programs stored on the interface device 10;
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`storing any files in agreed formats in the memory of the interface device 10).
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`Patent Owner also argues that the disclosures of storing files in memory of
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`the interface device and using a FAT table to organize those files belies
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`10
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`Petitioner’s arguments that the ’283 Application only discloses “virtual,” not
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`actual files. Id. at 23. We agree with the Patent Owner’s arguments.
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`At the outset, we are not persuaded by Petitioner’s argument that the
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`’283 Application “includes no mention . . . of any file system on the
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`interface device.” Pet. 9. As our reviewing court has articulated, “when
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`examining the written description for support for the claimed invention, . . .
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`the exact terms appearing in the claim ‘need not be used in haec verba.’”
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`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1345–46 (Fed. Cir.
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`2016) (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
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`1997)). Significantly, the ’283 Application describes using a file allocation
`
`table or FAT on the interface device. Ex. 1067 ¶ 24 (explaining that the
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`digital signal processor reads “on request the file allocation table or FAT on
`
`a sector specified in the boot sequence, normally the first writable sector,
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`and transfe[rs] it to the host device.”). Petitioner and Dr. Zadok confirm that
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`a person with ordinary skill in the art, as of March 4, 1997, would have been
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`“familiar with operating systems (e.g., MS-DOS, Windows, Unix)” and
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`“their associated file systems (e.g., a FAT, UFS, FFS).” Pet. 13; Ex. 1003
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`¶ 28 (emphases added).
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`
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`We find that such an artisan would have appreciated the following
`
`general knowledge regarding a FAT file system:
`
`The [FAT] file system [is] used by MS-DOS to organize and
`manage files. The FAT (file allocation table) is a data structure
`that MS-DOS creates on the disk when the disk is formatted.
`When MS-DOS stores a file on a formatted disk, the operating
`system places information about the stored file in the FAT so that
`MS-DOS can retrieve the file later when requested. The FAT is
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`the only file system MS-DOS can use; OS/2, Windows NT, and
`Windows 95 operating systems can use the FAT file system in
`addition to their own file system (HPFS, NTFS, and VFAT,
`respectively).
`
`MICROSOFT COMPUTER DICTIONARY 189–90 (3rd ed. 1997) (Ex. 3001, 3–4)
`
`(emphasis added).
`
`We also are not persuaded by Petitioner’s argument that the files on
`
`the interface device are “virtual” files, not actual files. Pet. 9. Petitioner
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`conflates how the interface device simulates as a hard disk to the host
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`device, with how data are actually stored in the interface device. Petitioner’s
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`argument narrowly focuses on the discussion regarding how the interface
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`device appears to the host device as “a hard disk with a root directory whose
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`entries are ‘virtual’ files,” but ignoring other pertinent disclosures regarding
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`how data are actually stored in the interface device. Pet. 9 (citing Ex. 1067
`
`¶ 23; Ex. 1001, 5:11–14). The ’283 Application, however, describes that
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`there is “the option of storing any files in agreed formats in the memory
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`means 14 of the interface device 10, taking into account the maximum
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`storage capacity of the memory means” and “the host device can access all
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`programs [or files] stored on the interface device 10.” Ex. 1067 ¶ 30
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`(emphases added). The ’283 Application also describes that files executable
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`by the host device (and help files) can be stored in the interface device. Id.
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`(describing “batch files or executable files” for the host device “can be
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`implemented in the interface device” (emphases added)). Petitioner’s
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`argument fails to consider the ’283 Application in its entirety.
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`We also are not persuaded by Petitioner’s argument that the interface
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`device merely simulates a FAT. Pet. 10. Significantly, Petitioner’s
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`argument ignores the pertinent portion of the ’283 Application that describes
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`an actual FAT on the interface device:
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`The digital signal processor [(DSP) of the interface device] can
`respond to the host device in exactly the same way as a
`conventional hard disk would, namely, by reading on request the
`file allocation table or FAT on a sector specified in the boot
`sequence, normally the first writable sector, and transferring it to
`the host device, and subsequently by transferring the directory
`structure of the virtual hard disk.
`
`Ex. 1067 ¶ 24; Ex. 1001, 5:49–54 (emphasis added). We agree with Patent
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`Owner’s contention that, in order for the DSP to read the table, the FAT is
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`stored in the interface device. Prelim. Resp. 22. Id.
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`
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`The discussion cited by Petitioner, regarding how the interface device
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`appears as an “actual drive” to the host device by sending a “virtual” boot
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`sequence to the host device, does not support Petitioner’s position. Pet. 10
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`(citing Ex. 1067 ¶ 24; Ex. 1001, 5:34–58). That discussion compares how
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`the host device normally accesses files that are stored on the physical disk
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`drives of the host device, with how it accesses files that are stored on the
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`interface device. Ex. 1067 ¶ 24; Ex. 1001, 5:34–58. Petitioner conflates the
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`file system on the host device with the file system on the interface device.
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`Pet. 10. Moreover, other discussions cited by Petitioner also do not support
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`its position. Id. at 14–15 (citing Ex. 1067 ¶ 26, Ex. 1001, 6:17–32). Those
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`discussions are related to reading the “real-time input” file embodiment, in
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`which the interface device simultaneously receives data from a data
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`sending/receiving unit, and sends data to the host device. As discussed
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`above, the interface device has “the option of storing any files in agreed
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`formats in the memory means 14 of the interface device 10, taking into
`
`account the maximum storage capacity of the memory means” and “the host
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`device can access all programs [or files] stored on the interface device 10.”
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`Ex. 1067 ¶ 30 (emphases added). Therefore, based on the evidence in this
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`record, we are not persuaded by Petitioner’s argument that “the data is never
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`stored as a file in a file system on the interface device.”4
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`
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`Petitioner further alleges that the ’778 Application does not support
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`the “file system” limitation discussed above. Pet. 12. Petitioner, however,
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`relies on the same reasons proffered with respect to the ’283 Application.
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`Id. Having found those reasons insufficient, we determine that Petitioner’s
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`argument regarding the alleged lack of written description support in the
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`’778 Application is not persuasive.
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`In light of the foregoing, we determine that Petitioner has not
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`demonstrated sufficiently that either the ’283 Application or the ’778
`
`Application lacks adequate written description support for storing the
`
`processed and digitized analog data in a file system of the interface device.
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`Given that, we also determine that Petitioner has not shown sufficiently that
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`
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`4 Petitioner also argues that the claim in the originally filed ’283 Application
`does not provide written description support for the “file system” limitation
`discussed above. Pet. 1112. Based on our discussion of the written
`description in the ’283 Application supporting the disputed limitation, we do
`not need to address this additional argument.
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`Ousley is prior art to the challenged claims of the ’746 patent. Each ground
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`asserted by Petitioner is based on Ousley in combination with other
`
`references. Pet. 6. Consequently, we conclude that Petitioner has not
`
`established a reasonable likelihood of prevailing on its assertion that the
`
`challenged claims of the ’746 patent are unpatentable over Ousley in
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`combination with other references.
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`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has not
`
`establish a reasonable likelihood of prevailing on its assertion that any of
`
`claims 1, 4, 6–8, 10, 11, 14, 20, 21, 23, and 30 of the ’746 patent are
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`unpatentable.
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`For the foregoing reasons, it is
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`IV. ORDER
`
`ORDERED that the Petition is denied, and no trial is instituted.
`
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`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Michael R. Fleming
`mfleming@irell.com
`IRELL & MANELLA LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`
`16
`
`
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