Filed on behalf of Apple Inc.
`By:
`Lori A. Gordon
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`Sterne, Kessler, Goldstein & Fox PLLC
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`1100 New York Avenue, NW
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`Washington, D.C.
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`Tel: (202) 371-2600
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`Fax: (202) 371-2540
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,504,746
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`TABLE OF CONTENTS
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`I. Mandatory notices (37 C.F.R. § 42.8(a)(1)). ....................................................... 2
`II. Grounds for standing (37 C.F.R. § 42.104(a)). .................................................... 4
`III. Identification of challenge (37 C.F.R. § 42.104(b)). ........................................... 4
`A. Citation of prior art. ....................................................................................... 4
`B. Statutory grounds for the challenge. .............................................................. 5
`IV. The ’746 Patent .................................................................................................... 6
`A. Overview of the ’746 Patent .......................................................................... 6
`B. The challenged claims of the ’746 patent are not entitled to priority benefit
`of its parent applications. ............................................................................... 8
`C. Level of ordinary skill in the art. ................................................................. 13
`D. Claim construction. ...................................................................................... 13
`V. Ground 1: The combination of Ousley and Steger renders claims 1, 4, 6–8, 10,
`11, 14, 20, 21, and 30 obvious. .......................................................................... 15
`A. Overview of Ousley and Steger. .................................................................. 15
`B. The combination of Ousley and Steger renders claim 1 obvious. ............... 20
`C. The combination of Ousley and Steger renders claim 4 obvious. ............... 45
`D. The combination of Ousley and Steger renders claim 6 obvious. ............... 48
`E. The combination of Ousley and Steger renders claim 7 obvious. ............... 50
`F. The combination of Ousley and Steger renders claim 8 obvious. ............... 50
`G. The combination of Ousley and Steger renders claim 10 obvious. ............. 53
`H. The combination of Ousley and Steger renders claim 11 obvious. ............. 57
`I. The combination of Ousley and Steger renders claim 14 obvious. ............. 58
`J. The combination of Ousley and Steger renders claim 20 obvious. ............. 59
`K. The combination of Ousley and Steger renders claim 21 obvious. ............. 60
`L. The combination of Ousley and Steger renders claim 30 obvious. ............. 61
`VI. Ground 2: The combination of Ousley, Steger, and Nara renders claim 23
`obvious. .............................................................................................................. 63
`VII. The proposed grounds are not redundant to previously filed petitions. ............. 65
`VIII.
`Conclusion ................................................................................................... 67
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`TABLE OF AUTHORITIES
`
`Cases
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`Enzo Biochem, Inc. v. Gen-Probe Inc.,
`323 F.3d 956 (Fed. Cir. 2002) ................................................................................ 11
`
`
`In re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015) .............................................................................. 13
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 15
`
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ................................................................................ 9
`
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555, (Fed. Cir. 1991) ............................................................................... 9
`
`
`Statutes
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`35 U.S.C. § 102(b) ....................................................................................................... 5
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`35 U.S.C. § 102(e) ....................................................................................................... 5
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`35 U.S.C. § 112 ...................................................................................................... 8, 14
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`35 U.S.C. § 120 ............................................................................................................ 8
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`35 U.S.C. §102(a) ........................................................................................................ 5
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`Regulations
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`37 C.F.R. § 42.104(a) ................................................................................................... 4
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`37 C.F.R. § 42.104(b) .................................................................................................. 4
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`37 C.F.R. § 42.8(a)(1) .................................................................................................. 2
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`
`EXHIBIT LIST
`
`Ex. No.
`1001
`1002
`1003
`1004
`1005-1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014-1015
`1016
`1017-1018
`1019
`
`1020
`1021-1023
`1024
`1025
`1026-1030
`1031
`1032-1057
`1058
`1059-1060
`1061
`1062
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`
`
`Description
`U.S. Patent 8,504,746 to Tasler
`Excerpts of File History of U.S. Patent 8,504,746 to Tasler
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 8,504,746
`Curriculum Vitae of Dr. Erez Zadok
`Intentionally Left Blank
`The SCSI Bus and IDE Interface Protocols, Applications and
`Programming, by Schmidt, First Edition, Addison-Wesley, 1995
`Intentionally Left Blank
`U.S. Patent No. 4,727,512 to Birkner
`U.S. Patent No. 4,792,896 to Maclean
`International Publication Number WO 92/21224 to Jorgensen
`Small Computer System Interface-2 (SCSI-2), ANSI X3.131-1994,
`American National Standard for Information Systems (ANSI).
`Operating System Concepts, by Silberschatz et al., Fourth Edition.
`Intentionally Left Blank
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015).
`Intentionally Left Blank
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language, Random House, 1996.
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`Intentionally Left Blank
`Declaration of Scott Bennett
`Discrete-Time Signal Processing, by Oppenheim et al., First Edition,
`Prentice-Hall, 1989
`Intentionally Left Blank
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30,
`1994 (“PNP SCSI”)
`Intentionally Left Blank
`U.S. Patent No. 7,184,922 to Ousley et al.
`Intentionally Left Blank
`Abandoned U.S. Application No. 11/078,778, filed March 11, 2005
`Axelson, Jan, “USB Complete – Everything You Need to Develop
`Custom USB Peripherals,” 2nd Edition, Madison, WI: Lakeview
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`Description
`
`Research LLC, 2001.
`Universal Serial Bus Specification, Revision 2.0, April 27, 2000
`Intentionally Left Blank
`U.S. Patent No. 7,542,867 to Steger et al.
`U.S. Patent No. 6,377,617 to Nara
`U.S. Patent Application No. 11/928,283, filed October 30, 2007
`Preliminary Amendment filed in U.S. Pat. Appl. No. 11/928,283,
`February 9, 2009
`U.S. Provisional Patent Application No. 60/312,254, filed August 14,
`2001
`U.S. Patent No. 7,149,093 to Conway
`Microsoft Computer Dictionary, Third Edition, Microsoft Press,
`1997.
`McGraw-Hill Dictionary of Scientific and Technical Terms, Fifth
`Edition, McGraw-Hill, 1994
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`Ex. No.
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`1063
`1064
`1065
`1066
`1067
`1068
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`1069
`1070
`1071
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`1072
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`Apple Inc. petitions for inter partes review of claims 1, 4, 6–8, 10, 11, 14, 20,
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`21, 23, and 30 of United States Patent No. 8,504,746 to Tasler (“the ’746 patent”).
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`The ’746 patent claims benefit as a continuation of U.S. Patent Application No.
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`11/928,283 (“the ’283 application”) filed on October 30, 2007. However, the
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`challenged claims recite limitations having no written description support in the
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`’283 application. Therefore, the earliest possible priority date of the ’746 patent is
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`the September 27, 2010 filing date of the ’746 patent. In the present petition, Apple
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`presents two intervening references, U.S. Patents No. 7,184,922 to Ousley
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`(“Ousley”) and 7,542,867 to Steger (“Steger”), filed after the PCT application date
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`but before the ’746 patent’s filing date. Apple demonstrates herein that a reasonable
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`likelihood exists that the challenged claims are unpatentable in view of the
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`intervening Ousley and Steger references.
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`The challenged claims recite an analog data acquisition device and associated
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`method. The device performs well-known tasks such as acquiring analog data,
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`digitizing the analog data, storing the digitized data in memory, and allowing
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`transfer of the digitized data to a host computer. The purported novelty of the ’746
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`patent is that, when attached to a host computer, the analog data acquisition device
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`identifies itself as “automatically caus[ing] at least one parameter indicative of the
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`class of devices” of which the device is not a member, such that for file transfer, the
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`“analog data acquisition device appears to the computer as if it were a device of the
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`class of devices.” (Ex. 1001, ’746 patent, claim 1.) This technique is commonly
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`referred to as emulation.
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`Devices that emulated a digital storage device (e.g., hard disk drives) and
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`used the existing storage device’s driver for communication with a host computer
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`were well known before the September 27, 2010 filing date of the ’746 patent. For
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`example, Ousley, filed more than five years before the filing date of the ’746 patent,
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`disclosed a data acquisition device that “communicate[s] with a computer system
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`via files” and “appear[s] to the computer system as a USB Mass Storage device”
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`such as a hard disk. (Ousley, Abstract.)
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`I. Mandatory notices (37 C.F.R. § 42.8(a)(1)).
`REAL PARTY IN INTEREST: The real party-in-interest of Petitioner is Apple
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`Inc. (“Apple”).
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`RELATED MATTERS: The ’746 patent is the subject of the following civil
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`actions.
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`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-01095
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`(E.D. Tex.); Papst Licensing GmbH & Co., KG v. LG Electronics, Inc. et al., Case
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`No. 6-15-cv-01099 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. ZTE
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`Corporation et al., Case No. 6-15-cv-01100 (E.D. Tex.); Papst Licensing GmbH &
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`Co., KG v. Samsung Electronics Co Ltd. et al., Case No. 6:15-cv-01102 (E.D. Tex.);
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`Papst Licensing GmbH & Co., KG v. Lenovo (United States) Inc. et al., Case No. 6-
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`15-cv-01111 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. Huawei
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`Technologies Co., Ltd. et al, Case No. 6:15-cv-01115 (E.D. Tex.); and In Re Papst
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`Licensing GmbH & Co., KG Patent Litigation, MDL No. 1880 (Misc. Action No.
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`07-493) relating to Nos. 07-cv-1118, 07-cv-1222, 07-cv-2086, 07-cv-2088, 08-cv-
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`865, 08-cv-985, 08-cv-1406, and 09-cv-530.
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`The ’746 patent is also the subject of the following Inter Partes Review
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`proceedings: Inter Partes Review by Apple Inc., IPR2016-01862 filed October 11,
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`2016; Inter Partes Review by Apple Inc., IPR2016-01863 filed October 11, 2016;
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`Inter Partes Review by Canon Inc., IPR2016-01211 filed June 17, 2016; Inter
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`Partes Review by Canon Inc., IPR2016-01224 filed June 17, 2016; Inter Partes
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`Review by JVC Kenwood Corporation, IPR2016-01213 filed June 17, 2016; Inter
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`Partes Review by Panasonic Corporation, IPR2016-01223 filed June 17, 2016; Inter
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`Partes Review by Olympus Corporation., IPR2016-01206 filed June 16, 2016; and
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`Inter Partes Review by Fujifilm Corporation, IPR2016-01200 filed June 14, 2016.
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`No other matters related to the ’746 patent are known to the Petitioner.
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`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. § 42.8(b)(3) and
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`42.10(a), Petitioner appoints Lori A. Gordon (Reg. No. 50,633) as its lead counsel
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`and Steven W. Peters (Reg. No. 73,193) as its back-up counsel, and Yasser
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`Mourtada (Reg. No. 61,056) as its additional back-up counsel, all at the address:
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`STERNE, KESSLER, GOLDSTEIN & FOX, 1100 New York Avenue, N.W., Washington,
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`D.C., 20005, phone number (202) 371-2600 and facsimile (202) 371-2540.
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`SERVICE INFORMATION: Petitioner consents to electronic service by email at
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`the email addresses: lgordon-PTAB@skgf.com, speters-PTAB@skgf.com, and
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`ymourtad-PTAB@skgf.com.
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`II. Grounds for standing (37 C.F.R. § 42.104(a)).
`The undersigned and Apple certify the ʼ746 patent is available for inter partes
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`review. Apple certifies it is not barred or estopped from requesting this inter partes
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`review on the grounds identified herein. The assignee of the ’746 patent, Papst, filed
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`a complaint against Apple alleging infringement of the ’746 patent on November 30,
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`2015. (Ex. 1020.) The present petition is being filed within one year of service of
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`Petitioner.
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`Identification of challenge (37 C.F.R. § 42.104(b)).
`III.
`A. Citation of prior art.
`The ’746 patent claims priority through a series of applications, including its
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`immediate parent, the ’283 application, to U.S. Patent No. 6,470,399 which is the
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`national stage of international application PCT/EP98/01187, filed on March 3, 1998.
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`The ’746 patent further claims priority to a German application, filed on March 4,
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`1997. Apple demonstrates in Section IV.B that none of the challenged claims are
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`entitled to priority benefit of the ’283 application.
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`Each of the following prior art documents applied in the grounds of
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`unpatentability were filed prior to the ’746 patent’s filing date.
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`U.S. Patent No. 7,184,922 to Ousley et al., titled “Measurement Device that
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`Appears to a Computer System as a File Storage Device” (Exhibit 1058), is prior art
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`under at least 35 U.S.C. §§102(a), 102(b), and 102(e) because it issued on February
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`27, 2007 and was filed on February 28, 2005, both more than one year before the
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`September 27, 2010 priority date of the ’746 patent.
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`U.S. Patent No. 7,542,867 to Steger et al., titled “Measurement System with
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`Modular Measurement Modules that Convey Interface Information” (Exhibit 1065),
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`is prior art under at least 35 U.S.C. §§102(a), 102(b), and 102(e) because it issued
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`on June 2, 2009 and was filed on July 12, 2002, both more than one year before the
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`September 27, 2010 priority date of the ’746 patent.
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`U.S. Patent No. 6,377,617 to Nara, titled “Real-Time Signal Analyzer”
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`(Exhibit 1066), is prior art under at least 35 U.S.C. §§102(a), 102(b), and 102(e),
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`because it issued on April 23, 2002 and has a §371 date of June 4, 1999, both more
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`than one year before the September 27, 2010 priority date of the ’746 patent.
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`B. Statutory grounds for the challenge.
`Apple requests review of claims 1, 4, 6–8, 10, 11, 14, 20, 21, 23, and 30 on
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`the following grounds:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`References
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`Basis
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`Claims Challenged
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`Ousley and Steger
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`§ 103
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`1, 4, 6–8, 10, 11, 14, 20, 21, 30
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`Ousley, Steger, and Nara
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`§ 103
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`23
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`IV. The ’746 Patent
`A. Overview of the ’746 Patent
`The ’746 patent describes an interface device that enables communication
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`between a host device and a data transmit/receive device from which data is
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`acquired. (See ’746 patent, 1:20–24.) The patent acknowledges that such interface
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`devices were known. However, the patent alleges that these existing interfaces
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`traded high data transfer rates for host-device independence. (Id., 3:28–31.) For
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`example, in existing interfaces devices, high data transfer rates could be achieved
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`using host-specific interface devices; but, these interfaces were not suitable for use
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`with other types of host systems. (Id., 2:6–15.) In other alternative devices, host-
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`device independence was achieved through the use of standard interfaces; but these
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`interfaces required specific driver software that in turn, resulted in reduced data
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`transfer speed. (Id., 1:33–40.)
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`The ’746 patent discloses an interface device that purportedly overcomes
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`these limitations and “provides fast data communication between a host device with
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`input/output interfaces and a data transmit/receive device.” (Id., Abstract.) As
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`illustrated in Figure 1 (reproduced below), the interface device 10 includes “[a] first
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`connecting device 12…attached to a host device (not shown) via a host line 11.”
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`(Id., 4:59–62.) The ’746 patent states “[t]he first connecting device is attached both
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`to a digital signal processor 13 and to a memory means 14” which, in turn, are
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`“attached to a second connecting device.” (Id., 4:62–67.) In some embodiments, the
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`second connecting device is “attached by means of an output line 16 to a data
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`transmit/receive device…from which data is to be read, i.e. acquired, and transferred
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`to the host device.” (Id., 4:67 to 5:4.)
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`The ’746 patent discloses techniques to make “the interface device appear[] to
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`the host device as a hard disk.” (Id., 6:2–3.) Specifically, the ’746 patent relies on a
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`known host system identification process: when a host device is booted, an inquiry
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`instruction as to devices attached to the host device is issued to the input/output
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`interfaces of the host device. (Id., 5:14–20.) When the interface device receives the
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`inquiry instruction, the interface device identifies itself, regardless of the type of
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`attached data transmit/receive device, as a customary input/output device to the host
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`device. (See id., 4:5–13.) Thus, the host device uses its customary driver for the
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`identified input/output device or a corresponding driver for a multi-purpose interface
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`to communicate with the interface device. (Id., 3:49–55.)
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`B.
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`The challenged claims of the ’746 patent are not entitled to priority
`benefit of its parent applications.
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`The ’746 patent is a continuation of U.S. Patent Application No. 11/928,283
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`(“the ’283 application”), filed on October 30, 2007 and provided as Exhibit 1067.
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`The ’283 application is a continuation of U.S. Patent Application No. 11/467,073,
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`filed on August 24, 2006, which is a continuation of U.S. Patent Application No.
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`11/078,778 (“the ’778 application”), filed on March 11, 2005. An application is
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`entitled to priority of a prior application provided that the conditions of 35 U.S.C. §
`
`120 are met. Section 120, in turn, requires the claims meet the written description
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`and enablement requirements of 35 U.S.C. § 112 in order to obtain benefit of the
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`earlier filing date. See 35 U.S.C. §§ 112 and 120.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`1. The challenged claims are not entitled to priority benefit of the
`parent ’283 application.
`
`The challenged claims of the ’746 patent are not entitled to priority benefit of
`
`the ’283 application because the ’283 application does not provide written
`
`description support for the challenged claims. Claim 1 recites “the processed and
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`digitized analog data is stored in a file system of the data storage memory as at least
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`one file of digitized analog data.” The ’283 application fails to provide written
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`description support for the claimed “stor[age] in a file system of the data storage
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`memory” of the analog data acquisition device.
`
`To satisfy the written description requirement, the disclosure of the ’283
`
`application must “convey with reasonable clarity to those skilled in the art that, as of
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`the filing date sought, [the inventor] was in possession of the invention.” Vas-Cath
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`Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). Accordingly, the
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`written description must actually or inherently disclose the claim element.
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008).
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`Here, the ’283 application fails to provide written description support for storing the
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`processed and digitized analog data in a file system of the data storage memory. The
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`’283 application (and the ’746 patent itself) includes no mention whatsoever of any
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`file system on the interface device. Instead, “the interface device according to the
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`present invention simulates a hard disk with a root directory whose entries are
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`‘virtual’ files,” not actual files stored in an actual file system. (’283 application,
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`¶[0023]; see also ’746 patent, 5:11–14.) The ’283 application also mentions a file
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`allocation table (FAT) but distinguishes an “actual drive” which could include a
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`FAT, from the interface device which merely simulates one. (See ’283 application,
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`¶[0024]; ’746 patent, 5:34–58.) For example, for “communication between a
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`processor and a hard disk…, the processor transfer[s] to the hard disk the numbers
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`of the blocks or clusters or sectors whose contents it wishes to read.” (’283
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`application, ¶[0026]; see also ’746 patent, 6:17–21.) Conversely, in the disclosed
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`system, “communication between the host device and the interface device…
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`consists of the very fast transfer of block numbers and preferably block number
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`ranges because a virtual ‘real-time input’ file will not be fragmented.” (’283
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`application, ¶[0026]; see also ’746 patent, 6:22–27.) Thereafter, “[i]f the host device
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`now wants to read the ‘real-time input’ file, it transfers a range of block numbers to
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`the interface device, whereupon data commences to be received via the second
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`connecting device and data commences to be sent to the host device via the first
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`connecting device.” (’283 application, ¶[0026]; see also ’746 patent, 6:27–32.)
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`Thus, in the ’283 application, the data is never stored as a file in a file system on the
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`interface device.
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`Furthermore, the claim of the ’283 application as filed also do not provide
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`written description support for the file system limitation of the ’746 patent. “If a
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`purported description of an invention does not meet the requirements of the statute,
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`the fact that it appears as an original claim… does not save it.” Enzo Biochem, Inc.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`v. Gen-Probe Inc., 323 F.3d 956, 968–69 (Fed. Cir. 2002). The written description
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`requirement does not “distinguish[] between original and amended claims….
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`[G]eneric language in the application as filed does not automatically satisfy the
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`written description requirement.” Enzo, 323 F.3d at 1351.
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`The ’283 application was filed with a single claim, spanning two pages,
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`reciting, inter alia, “the processor being further adapted to store one or more of the
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`sets of digitized analog data in a file system defined within the first memory so that
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`each set of digitized analog data can be selectively retrieved therefrom.” (’283
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`application, p. 23.) Applicant later canceled this claim in a preliminary amendment
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`prior to examination, and never amended the specification to include the claim or
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`the file system limitation. (See Ex. 1068.) This claim is at odds with the
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`specification, which describes “virtual” files and “real-time input” files and where
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`the processes of data acquisition and transfer to the computer commence at the same
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`time. The ’283 claim provides no explanation as to how a system that only emulates
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`a file system by creating the appearance of virtual real-time input files could operate
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`with actual files stored in an actual file system, especially when the system depends
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`on “the very fast transfer… because a virtual ‘real-time input’ file will not be
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`fragmented” (’283 application, ¶[0026]) which cannot be guaranteed for an actual
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`file in an actual file system. (Zadok Decl., ¶162 (quoting Silberschatz, p. 358) (“All
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`file systems suffer from internal fragmentation”).) It is simply generic language
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`describing a feature the Applicant wished was described in its specification—written
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`nearly ten years earlier—and does not constitute written description support for
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`claim 1 of the ’746 patent.
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`Because the ’283 application does not actually or inherently disclose the “file
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`system” limitation such that one skilled in the art would recognize such a disclosure,
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`the challenged claims are not entitled to priority benefit of the ’283 application.
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`Accordingly, the priority date for purposes of this inter partes review proceeding is
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`the September 27, 2010 filing date of the ’746 patent.
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`2. The challenged claims are not entitled to priority benefit of the
`great-grandparent ’778 application.
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`Even if the abandoned claim-as-filed of the ’283 application, discussed in the
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`previous section, provided written description support for the ’746 claims, those
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`claims would still not have a priority date before August 24, 2006. The great-
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`grandparent ’778 application, filed March 11, 2005, does not support the ’746
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`claims for the same reasons as the ’283 application does not, with the additional
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`reason that the ’778 application as filed does not include any claims that mention a
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`file system. (See Ex. 1061, ’778 application, pp. 18–22.) Therefore, the ’746 patent
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`is not entitled to the benefit of the ’778 application’s filing date, and the earliest
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`possible priority date for purposes of this inter partes review is August 24, 2006.
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`(Zadok Decl., ¶163.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`C. Level of ordinary skill in the art.
`Based on the disclosure of the ’746 patent, a person having ordinary skill in
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`the art (“POSITA”) at the relevant time, would have had at least a four-year degree
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`in electrical engineering, computer science, computer engineering, or related field of
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`study, or equivalent experience, and at least two years of experience in studying or
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`developing computer interfaces or peripherals and storage related software. (Zadok
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`Decl., ¶28.) A POSITA would also be familiar with operating systems (e.g., MS-
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`DOS, Windows, Unix), their associated file systems (e.g., FAT, UFS, FFS), device
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`drivers for computer components and peripherals (e.g., mass storage device drivers),
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`and communication interfaces (e.g., SCSI, USB, PCMCIA). (Id.)
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`D. Claim construction.
`Except for the exemplary terms set forth herein, the terms are to be given their
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`plain and ordinary meaning as understood by a POSITA and consistent with the
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`disclosure. 1 Papst asserted patents in the family of the ’746 patent in several district
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`court litigations. In addition, claim construction of certain terms in related U.S.
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`patent 6,470,399 was the subject of an appeal to the Federal Circuit. In re Papst
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`Licensing Digital Camera Patent Litigation, 778 F.3d 1255 (Fed. Cir. 2015). The
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`Federal Circuit addressed the construction of five terms: interface device, second
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`1 Petitioner reserves the right to present different constructions in another
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`forum where a different claim construction standard applies.
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`connecting device, data transmit/receive device, virtual files, and input/output
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`device customary in a host device. Of these five terms, Petitioner proposes2 to
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`construe the term “data transmit/receive device.” The other terms do not appear in
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`any of the claims challenged in this Petition. The District Court and Federal Circuit's
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`claim construction analysis for this term is provided below.
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`Claim term
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`District Court
`
`CAFC
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`“data
`transmit/receive
`device”
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`“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.” (Ex. 1016,
`p. 11.)
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`“need not be capable of
`communicating ‘when
`connected to the host
`device by the interface
`device.’” (Ex. 1016, p.
`12.)
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`“data transmit/receive device” [claim 7]
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`Apple proposes to construe the term “data transmit/receive device” as “a
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`device capable of transmitting or receiving data.” This construction clarifies the
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`term is not limited to devices that both transmit and receive data—only one is
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`necessary under the broadest reasonable interpretation. This construction is
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`2 Petitioner’s proposed claim constructions do not constitute an admission that
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`the claims are valid under 35 U.S.C. §112, and Petitioner reserves the right to
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`challenge the validity of the claims under §112 in other venues.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`consistent with the plain and ordinary meaning of the term because the use of the “/”
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`indicates alternatives. (See Ex. 1019, Websters, p. 2125 (defining “virgule” as “a
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`short oblique stroke (/) between two words indicating that whichever is appropriate
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`may be chosen to complete the sense of the text in which they occur”).) The
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`construction is also consistent with the specification, which discloses “a data
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`transmit/receive device which is to receive data from the host device or from which
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`data is to be read, i.e. acquired, and transferred to the host device.” (’746 patent,
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`5:2–4.) Moreover, the portion of the district court’s interpretation under Phillips v.
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) that the device “is capable of either (a)
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`transmitting data to or (b) transmitting data to and receiving data from the host
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`device” still stands after the Federal Circuit’s decision. (Ex. 1016, p. 11 (“the
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`parties’ dispute focuses on the ‘when connected’ portion of the court’s
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`construction”)).
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`V. Ground 1: The combination of Ousley and Steger renders claims 1, 4, 6–
`8, 10, 11, 14, 20, 21, and 30 obvious.
`A. Overview of Ousley and Steger.
`Ousley is directed to a “Measurement Device that Appears to a Computer
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`System as a File Storage Device.” (Ousley, Title.) Ousley’s “measurement device
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`may… analyze or process the acquired or stored data.” (Ousley, 6:15–17.) Ousley
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`provides a number of examples of measurement devices, including “one or more
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`DAQ or measurement cards or modules in a chassis, an image acquisition device…,
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`oscilloscopes, multimeters, signal analyzers…, and similar measurement, test, or
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`automation instruments.” (Ousley, 6:17–31.)
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`Figure 1 (reproduced below) illustrates Ousley’s basic system. In the system
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`of Ousley, the “measurement device 80 may receive a signal from a physical system
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`or unit under test 150 and may generate measurement data based on the signal.”
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`(Ousley, 7:1–4.) The measurement device in turn “may be operable to generate one
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`or more files based on the measurement data it generates.” (Ousley, 7:18–20.)
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`Ousley’s measurement device “may appear to the computer system 82 as a
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`USB device of a first type, e.g., as a USB Mass Storage device.” (Ousley, 7:66 to
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`8:2.) In that case, “the files generated by the measurement device 80 may appear as
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`files stored on a USB Mass Storage device.” (Ousley, 8:2–3.) This setup allows the
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`computer system 80 to “communicate with the measurement device 80 to obtain the
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`generated files in the same standard manner in which it would obtain files stored on
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`any other USB Mass Storage device.” (Ousley, 8:4–7.) Specifically, the computer
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`system has an “operating system [that] may provide support for automatically
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`detecting and commu