Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Entered: June 12, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI DEVICE CO., LTD., LG ELECTRONICS, INC., and
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00443
`Patent 6,470,399 B1
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 7
`
`
`
` Entered: June 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI DEVICE CO., LTD., LG ELECTRONICS, INC., and
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00443
`Patent 6,470,399 B1
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00443
`Patent 6,470,399 B1
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, identified above, filed a Petition requesting inter partes
`
`review of claims 1–8, 10, 11, and 13–15 (“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 6 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless the information presented in the petition “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`
`we determine that, on this record, Petitioner has established a reasonable
`
`likelihood that it would prevail with respect to the challenged claims. We
`
`hereby institute an inter partes review as to the challenged claims.
`
`A. Related Matters
`
`The parties indicate that the ’399 patent is involved in Papst Licensing
`
`GmbH & Co. KG v. Huawei Technologies Co., Ltd., Case No. 6:15-cv-
`
`01115 (E.D. Tex.) and other proceedings. Pet. 4–5; Paper 4, 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
`2
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`IPR2017-00443
`Patent 6,470,399 B1
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`the art. Id. at 2:16–3:21. For example, IOtech introduced an interface
`
`device for laptops, using a plug-in card for converting the personal computer
`
`memory card association (“PCMCIA”) interface into a known standard
`
`interface (“IEEE 1284”). Id. at 2:19–24. The plug-in card provided a
`
`printer interface for enhancing data transfer rates. Id. at 2:24–28. In another
`
`example, a floppy disk drive interface was used for connecting a host device
`
`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
`
`
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`3
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`IPR2017-00443
`Patent 6,470,399 B1
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`memory means 14. Id. In a preferred embodiment, the interface device is
`
`attached to a host device via a multi-purpose interface—e.g., a small
`
`computer systems interface (“SCSI”)—which includes both an interface card
`
`and the driver for the interface card. Id. at 4:40–46, 8:29–32. According to
`
`the ’399 patent, SCSI interfaces were known to be present on most host
`
`devices or laptops. Id. at 9:32–33. By using a standard interface of a host
`
`device and by simulating an input/output device to the host device, the
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`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 2–8 and 10 depends directly or indirectly from claim 1. Claim 13
`
`depends directly from claim 11, and claim 15 depends directly from
`
`claim 14. Claim 1 is illustrative and is reproduced below with disputed
`
`limitations emphasized:
`
`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
`
`4
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`IPR2017-00443
`Patent 6,470,399 B1
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`
`provided by the data transmit/receive device and an analog-to-
`digital converter for converting data sampled by the sampling
`circuit into digital data,
`
`wherein the interface device is configured by the processor and
`the memory to include a first command interpreter and a second
`command interpreter,
`
`wherein the first command interpreter is configured in such a
`way that the command interpreter, when receiving an inquiry
`from the host device as to a type of a device attached to the
`multi-purpose interface of the host device, sends a signal,
`regardless of the type of the data transmit/receive device attached
`to the second connecting device of the interface device, to the
`host device which signals to the host device that it is an
`input/output device customary in a host device, whereupon the
`host device communicates with the interface 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 (emphases added).
`
`
`
`Petitioner relies upon the references listed below.
`
`D. Applied References
`
`Murata
`
`Lin
`
`
`
`Beretta
`
`
`
`
`
`
`
`US 5,508,821
`
`Apr. 16, 1996
`
`(Ex. 1005)
`
`US 6,522,432 B1 Feb. 18, 2003
`
`(Ex. 1008)
`
`US 5,850,484
`
`Dec. 15, 1998
`
`(Ex. 1014)
`
`FRIEDHELM SCHMIDT, THE SCSI BUS AND IDE INTERFACE PROTOCOLS,
`APPLICATIONS AND PROGRAMMING, (J. Michael Schultz trans., Addison-
`Wesley Publishing Company 1995) (Ex. 1006, “Schmidt”).
`
`5
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`Patent 6,470,399 B1
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`THE MICROSOFT PRESS COMPUTER DICTIONARY (2nd ed. 1994)
`(Ex. 1013).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 8):1
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1–4, 6–8, 11, and 13–15
`
`§ 103(a) Murata, Schmidt, and Lin
`
`5
`
`10
`
`
`
`§ 103(a)
`
`Murata, Schmidt, Lin, and
`Microsoft Dictionary
`
`§ 103(a) Murata, Schmidt, Lin, and Beretta
`
`II. DISCUSSION
`
`A. Claim Construction
`
`Patent Owner indicates that the ’399 patent will expire on March 3,
`
`2018 (20 years from the ’399 patent’s March 3, 1998 filing date, Ex. 1001,
`
`[22])—most likely prior to a final written decision in this proceeding.
`
`Prelim. Resp. 7 n.1. Claims of an expired patent are given their ordinary and
`
`customary meaning similar to the construction standard applied by the U.S.
`
`district courts. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`
`(en banc); In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); see also
`
`Black & Decker, Inc. v. Positec USA, Inc., 646 F. App’x. 1019, 1024 (non-
`
`
`
`1 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103(a) in this Decision.
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`precedential) (applying the U.S. district court standard to construe the claims
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`of an expired patent in an inter partes review).
`
`The U.S. Court of Appeals for the Federal Circuit has construed
`
`certain terms of the challenged claims of the ’399 patent under the U.S.
`
`district court standard in connection with a related district court proceeding
`
`involving the ’399 patent. In re Papst Licensing GmbH & Co. KG Litig. v.
`
`Fujifilm corp., 778 F.3d 1255 (Fed. Cir. 2015) (Ex. 2002).
`
`Therefore, for purposes of this Decision, we apply those claim
`
`constructions set forth in the Federal Circuit decision in Papst (reproduced
`
`in the table below), and, on this record, we decline to apply the broadest
`
`reasonable interpretation standard or make any modification to those
`
`constructions, as urged by Petitioner (Pet. 11–14); see Power Integrations,
`
`Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015).
`
`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.
`
`7
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`Patent 6,470,399 B1
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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”
`
`“input/output
`device
`customary in a
`host device”
`
`“a device that is capable of
`either (a) transmitting data to
`or (b) transmitting data to
`and receiving data from the
`host device when connected
`to the host device by the
`interface device.” Id. at
`1265.
`
`“files that appear to be but
`are not physically stored;
`rather they are constructed
`or derived from existing data
`when their contents are
`requested by an application
`program so that they appear
`to exist as files from the
`point of view of the host
`device.” Id. at 1267.
`
`“data input/output device
`that was normally present
`within the chassis of most
`commercially available
`computers at the time of the
`invention.” Id. at 1270.
`
`8
`
`“need not be capable of
`communicating ‘when
`connected to the host
`device by the interface
`device.’” Id. at 1266.
`
`not limited to a file
`“whose content is stored
`off the interface device,
`though it includes such
`files.” Id. at 1268.
`
`not limited to a device
`“‘normally present within
`the chassis’ of a
`computer.” Id. (emphasis
`in original).
`
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`IPR2017-00443
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`
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`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. 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, Kevin Almeroth, Ph.D., testifies that a person with ordinary skill
`
`in the art at the time of the invention “would have had at least a four-year
`
`degree in electrical engineering, computer science, or related field of study
`
`
`
`2 Patent Owner does not present arguments regarding objective evidence of
`nonobviousness in the Preliminary Response.
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`. . . and would also have either a masters degree, or at least two years of
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`experience in one of the relevant fields: computer science, computer
`
`systems, or peripheral devices.” Ex. 1003 ¶ 47. 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, Patent
`
`Owner contends that an ordinarily skilled artisan would have at least three
`
`years of experience, or, alternatively, five or more years of experience
`
`without a bachelor’s degree. Prelim. Resp. 6–7.
`
`On this record, 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. Almeroth appears to satisfy either assessment. Our
`
`analysis in this Decision is supported by either assessment, but, for purposes
`
`of this Decision, we adopt Petitioner’s assessment.
`
`D. Obviousness over Murata, Schmidt, and Lin
`
`Petitioner asserts that claims 1–4, 6–8, 11, and 13–15 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over the combined teachings of Murata,
`
`Schmidt, and Lin. Pet. 17–59. Patent Owner opposes. Prelim. Resp. 10–23.
`
`Based on the evidence in this record, we determine that Petitioner has
`
`established that there is reasonable likelihood that Petitioner would prevail
`
`with respect to this ground of unpatentability. In our discussion below, we
`
`address the parties’ contentions in turn.
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`10
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`Overview of Murata
`
`Murata discloses an image scanner used with an external host
`
`computer. Ex. 1005, Abs. According to Murata, the image scanner includes
`
`an optical system and charged coupled device (“CCD”) image sensor for
`
`reading an image of a document, a SCSI interface for connecting the image
`
`scanner to the external host, a CPU, a nonvolatile memory, and a “SCSI
`
`controller etc. for emulating a file system contained in the external host
`
`computer.” Id. An object of Murata is “to provide an improved image
`
`handling apparatus . . . which requires no preparation of any new device
`
`driver.” Id. at 1:58–61.
`
`Figure 3 of Murata is reproduced below.
`
`
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`11
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`IPR2017-00443
`Patent 6,470,399 B1
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`Figure 3 is a block diagram of an image scanner. Id. at 2:40. It includes
`
`CCD image sensor 31, which “carries out main-scanning” by reading
`
`reflected light from a document and converting it to analog electric signal
`
`32. Id. at 3:12–27. Analog image signal 32 then is amplified by amplifier
`
`33 and converted to digital signal 35 by A/D converter 34. Id. at 3:27–29.
`
`After the signal has traversed the rest of the scanner elements, SCSI
`
`controller 64, controlled by CPU 50, transfers data to and from the external
`
`host computer. Id. at 3:29–4:11.
`
`Murata explains that, “[b]ecause an operating system of a computer
`
`constructs a file system in a hard disc, there invariably exists a device driver
`
`for the hard disc.” Id. at 2:5–7. Moreover, because Murata’s image scanner
`
`includes a file system emulation means, control of the image scanner or
`
`transfer of image data “can be carried out using the device driver for existing
`
`hard discs” meaning “it is not necessary to prepare the device driver for each
`
`type of computer if the file system of the computer is the same.” Id. at 2:12–
`
`22. In short, the image scanner “can be connected to any one of various
`
`types of computers having the same file system, e.g. any one of all
`
`computers having software called the ‘UNIX’ as an operating system.” Id.
`
`at 2:18–26.
`
`Overview of Schmidt
`
`
`
`Schmidt describes the SCSI bus and IDE (Integrated Drive
`
`Electronics) interface, which both are ANSI (American Nation Standards
`
`Institute) standards. Ex. 1006, Preface. According to Schmidt, these
`
`interfaces are two of the most important interfaces for computer peripherals
`
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`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.
`
`Overview of Lin
`
`
`
`Lin describes an image scanner with automatic signal compensation.
`
`Ex. 1008, Abstract. Figure 2 of Lin is reproduced below.
`
`
`
`Figure 2 of Lin illustrates a block diagram of signal compensation circuit 24
`
`attached to CCD image sensor 22. Id. at 2:56–58. Signal compensation
`
`circuit 24 comprises signal amplifier 30 for amplifying the image signal and
`
`brightness signal from image sensor 22 to an appropriate voltage level,
`
`analog-to-digital (“A/D”) converter 32, sampling circuit 34 for sampling the
`
`brightness signal and generating a sample voltage Vs, and brightness
`
`compensation circuit 36. Id. at 3:14–24.
`
`Analysis
`
`Petitioner relies on Murata as disclosing the majority of limitations
`
`required by claims 1–4, 6–8, 11, and 13–15. To demonstrate its mapping of
`
`13
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`Murata to the challenged claims, Petitioner creates an annotated version of
`
`Murata’s Figure 3. Pet. 22. Petitioner’s annotated Figure 3 is reproduced
`
`below.
`
`
`
`Id. Petitioner explains that elements 33–65 of scanner 20, as shown in
`
`Murata’s Figure 3, comprise the claimed “interface device.” Id. at 23.
`
`According to Petitioner, SCSI controller 64 is the claimed “first connecting
`
`device” for interfacing with workstation 21, the claimed “host device.” Id.
`
`Petitioner relies on both amplifier 33 and A/D converter 34 in Murata, as the
`
`claimed “second connecting device” for interfacing with CCD 31, the
`
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`claimed “data transmit/receive device.” Id. (citing Ex. 1005, 3:24–29,
`
`Fig. 3).
`
`Petitioner also relies on Lin to disclose the use of a sampling circuit
`
`with an image scanner, explaining that a person with ordinary skill in the art
`
`would have understood that the A/D converter of the second connecting
`
`device “would have included or utilized a sampling circuit for sampling the
`
`analog data provided by the data transmit/receive device (CCD 31),” to hold
`
`the voltage at a single value for a short period of time to allow conversion to
`
`complete before converting the next value. Id. at 23–25 (citing Ex. 1003
`
`¶¶ 75–78).
`
`Petitioner relies on Schmidt to provide a detailed discussion of a SCSI
`
`device recognition process because “Murata does not disclose the details of
`
`the recognition as a hard disk.” Id. at 17. According to Petitioner, a person
`
`of ordinary skill, understanding that Murata discloses a scanner that connects
`
`to a workstation via a SCSI bus, would have looked to “a reference, like
`
`Schmidt, to provide details of the SCSI communications between a host
`
`computer and a peripheral device that involve the peripheral device
`
`identifying its device class and type to the host computer.” Pet. 17–18
`
`(citing Ex. 1003 ¶¶ 55–56). “Schmidt provides the foundation for what a
`
`skilled artisan would have known regarding SCSI.” Ex. 1003 ¶ 56.
`
`Dr. Almeroth testifies that combining the teachings of Murata, Schmidt, and
`
`Lin “merely applies known techniques (SCSI signaling as disclosed in
`
`Schmidt and use of a sampling circuit for use with an image scanner as
`
`disclosed in Lin) to a known device (Murata’s scanner) to produce expected
`
`results (the scanner identifies as and acts as a SCSI hard disk and uses a
`
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`sampling circuit in performing the [analog-to-digital] conversion).” Id. at
`
`¶ 78.
`
`Petitioner then explains how Murata discloses the remaining
`
`limitations of the challenged claims. Pet. 25–59. For example, claim 2
`
`depends from claim 1, and further recites “wherein the drivers for
`
`input/output drivers customary in a host device comprise a hard disk driver,
`
`and the signal indicates to the host device that the host device is
`
`communicating with a hard disk.” Ex. 1001, 13:13–17 (emphases added).
`
`Petitioner explains that Murata discloses the host device (workstation 21)
`
`comprises a hard disk driver. Pet. 37; Ex. 1005, 2:5–17, 4:30–36, 11:11–16.
`
`Dr. Almeroth further explains that, “[w]hile Murata’s host device recognizes
`
`the scanner of Murata as a hard disc (Ex. 1005, Figure 3, at 4:21–23),
`
`Murata does not expressly disclose the manner by which the host recognizes
`
`the scanner as a hard disc.” Ex. 1003 ¶ 101. Nevertheless, Petitioner points
`
`out that Schmidt describes the device recognition process, and, thus, the
`
`combined teachings of Murata and Schmidt disclose how the interface
`
`device signal indicates to the host device that the host device is
`
`communicating with a hard disk. Pet. 37. As support, Dr. Almeroth testifies
`
`that, “[i]n response to the SCSI INQUIRY command, the image scanner 20
`
`identifies itself as a hard disc to workstation 21 as a part of the automatic
`
`recognition process.” Ex. 1003 ¶ 104 (citing Ex. 1005, 1:65–67, 2:9–17,
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`4:21–23 (“the image scanner 20 looks like the hard disc from the
`
`workstation 21 and can be handled as the hard disc”); Ex. 1006, 247).
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`As another example, claim 7 depends from claim 2, and further recites
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`“a root directory and virtual files which are present on the signaled hard
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`16
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`disk drive and which can be accessed from the host device.” Ex. 1001,
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`13:33–36 (emphases added). Petitioner submits that Murata discloses the
`
`interface device has a root directory. Pet. 40–41 (citing Ex. 1005, 7:6–12
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`(“The CPU 50 creates a root directory and i-node data of the parameter file
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`‘scan.para’ and transfers them to the workstation 21.”); Ex. 1003 ¶ 111).
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`Petitioner avers “Murata also discloses virtual files which are present on the
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`signaled hard drive and which can be accessed from the host device.” Id. at
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`41–42 (citing Ex. 1005, 5:52–63 6:17–20, 7:6–12, 7:31–37, 7:53–54;
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`Ex. 1003 ¶¶ 112–116). Indeed, Murata discloses that, “[i]n order for the
`
`image scanner 20 to pretend to contain the image data file therein, as viewed
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`from the workstation 21, the CPU 50 of the image scanner 20 creates i-node
`
`data having information required for the workstation 21 to access to the
`
`image data file and transfers them to the workstation 21.” Ex. 1005, 5:52–
`
`57.
`
`Based on the evidence in this current record, we determine that
`
`Petitioner provides sufficient evidence to show a reasonable likelihood of
`
`prevailing on its contention that the combined teachings of Murata, Schmidt,
`
`and Lin disclose all of the limitations of claims 1–4, 6–8, 11, and 13–15. On
`
`this record, Petitioner also provides a reasonable rationale for how and why
`
`an ordinarily skilled artisan would combine the teachings. See, e.g., Pet. 17–
`
`19; Ex. 1003 ¶¶ 55–59.
`
`Patent Owner argues that the asserted prior art does not disclose the
`
`claimed data transmit/receive device. Prelim. Resp. 20–22. Patent Owner
`
`argues that a charge coupled device (CCD) is, by definition, “an electronic
`
`device operated by charge, especially one which converts photons of light
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`17
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`into a digital signal, converting an optical image into a digital image.” Id. at
`
`21 (quoting Ex. 2003). According to Patent Owner, a CCD is not required to
`
`allow for the transmission of data to a host device. Id.
`
`Petitioner, however, points out that Murata states that CCD 31 “reads
`
`an image of a document placed on a document platform, converts the read
`
`image to an electric signal, and outputs an analog image signal 32.” Pet. 20–
`
`21 (citing Ex. 1005, 3:24–27, Fig. 3; Ex. 1003 ¶ 66). Moreover, Murata
`
`discloses that after some more processing, that image is transferred
`
`subsequently to an external host computer via SCSI controller 64. Id. (citing
`
`Ex. 1005, 4:12–16; Ex. 1003, ¶¶ 63, 68–69). We are persuaded, on this
`
`record, that Petitioner has shown sufficiently for purposes of this Decision
`
`that Murata discloses CCD 31 is capable of transmitting data to a host device
`
`and, thus, qualifies as the claimed “data transmit/receive device,” as we have
`
`construed that term. Ex. 1005, 3:24–27; 4:12–16.
`
`Patent Owner also argues that Petitioner does not sufficiently explain
`
`why the teachings of Murata, Schmidt, and Lin would have been combined
`
`by a person of ordinary skill. Prelim. Resp. 16–20. According to Patent
`
`Owner, Petitioner’s explanation “is merely conclusory analysis without any
`
`evidence that a SCSI bus, such as described in Murata, would necessitate the
`
`use of the Schmidt interface adaptor.” Id. at 20. We, however, are
`
`persuaded that Petitioner’s rationale is sufficient for purposes of institution.
`
`Petitioner explains, in some detail, that a person of ordinary skill would have
`
`known the information set forth in Schmidt and Lin and why they would
`
`have been motivated to apply that knowledge to the invention described by
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`Murata. Pet. 17–19; Ex. 1003 ¶¶ 55–59, 75–78, 82–83.
`
`18
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`Conclusion
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`In view of the foregoing, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertions that
`
`claims 1–4, 6–8, 11, and 13–15 are unpatentable as obvious under § 103(a)
`
`over the teachings of Murata, in combination with those of Schmidt and Lin.
`
`E. Obviousness over Murata, Schmidt, Lin, and Microsoft Dictionary
`
`Petitioner asserts that claim 5 is unpatentable under § 103(a) as
`
`obvious over the combined teachings of Murata, Schmidt, Lin and Microsoft
`
`Dictionary. Pet. 60–62. Claim 5 depends directly from claim 1, and further
`
`recites “wherein the processor is a digital signal processor.” Ex. 1001,
`
`13:26–27 (emphasis added). Petitioner directs our attention to the Microsoft
`
`Dictionary which defines “digital signal processor” as “[a]n integrated
`
`circuit designed for high-speed data manipulation, used in audio
`
`communications, image manipulation, and other data-acquisition and data-
`
`control applications.” Pet. 60; Ex. 1013, 121–122.3 Petitioner further
`
`explains that an ordinarily skilled artisan “would have understood that the
`
`personal computer revolution of the 1980s and 1990s caused digital signal
`
`processors (DSPs) to explode with new applications, including in areas of
`
`image processing and compression.” Pet. 60. Dr. Almeroth testifies that
`
`“[i]t would have been obvious to utilize a DSP in lieu of Murata’s CPU 50
`
`and one or more of the processing circuits 36, 38, 40, 44, 46 and 48 to obtain
`
`
`
`3 Citations to the Microsoft Dictionary are to the original page numbers on
`the bottom center of the page.
`
`19
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`the predictable result of faster and optimized image processing
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`performance.” Ex. 1003 ¶ 159. According to Dr. Almeroth, “[s]uch use of a
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`DSP does not require any changes to the SCSI standard, or the type of A/D
`
`converter and sampling circuit as disclosed in Lin.” Id.
`
`Based on this record, we determine that Petitioner provides sufficient
`
`evidence for purposes of this Decision to show that the combined teachings
`
`of the asserted prior art disclose an interface device comprising a digital
`
`signal processor, as recited in claim 5, and articulates an adequate reason to
`
`combine the prior art teachings. In its Preliminary Response, Patent Owner
`
`does not raise any separate arguments with regard to claim 5. In light of the
`
`foregoing, we conclude that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing on its assertion that claim 5 is unpatentable as
`
`obvious under § 103(a) over the teachings of Murata, in combination with
`
`those Schmidt, Lin, and the Microsoft Dictionary.
`
`F. Obviousness over Murata, Schmidt, Lin, and Beretta
`
`Petitioner asserts that claim 10 is unpatentable under § 103(a) as
`
`obvious over Murata, Schmidt, Lin, and Beretta. Pet. 62–65. Claim 10
`
`depends from claim 7, which depends from claim 2, which depends from
`
`claim 1. Ex. 1001, 13:47–50. As discussed above, we determine that
`
`Petitioner has shown sufficiently for purposes of this Decision that the
`
`combined teachings of Murata, Schmidt, and Lin render claims 1, 2, and 7
`
`obvious. For instance, Petitioner has established adequately that the
`
`combined teachings of Murata, Schmidt, and Lin teach an interface device
`
`that has a root directory and virtual files, as required by claim 7. Pet. 40–42.
`
`20
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`Claim 10 further recites “the virtual files comprise batch files or
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`executable files for the host device which are stored in the interface device.”
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`Id. In this regard, Petitioner explains that Beretta discloses that its image
`
`compression technique could be implemented in software as an executable
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`files. Pet. 64–65 (citing Ex. 1014, 4:56–61, 10:1–18; Ex. 1003 ¶¶ 168–173).
`
`As support, Dr. Almeroth testifies that an ordinarily skilled artisan would
`
`have enhanced Murata’s scanner to utilize an executable file that implements
`
`a compression routine as disclosed in Beretta in the directory structure of
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`Murata’s interface device. Ex. 1003 ¶¶ 170–172.
`
`Based on the evidence presently before us, we are persuaded that
`
`Petitioner has demonstrated sufficiently for purposes of this Decision to
`
`show that the combined teachings of the prior art disclose the additional
`
`limitation recited in claim 10, and has articulated a sufficient rationale to
`
`combine the teachings of Murata, Schmidt, Lin, and Beretta. In its
`
`Preliminary Response, Patent Owner does not raise any separate argument
`
`with regard to claim 10. In light of the foregoing, we conclude that
`
`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`
`assertion that claim 10 is unpatentable as obvious under § 103(a) over the
`
`teachings of Murata, in combination with those of Schmidt, Lin, and Beretta.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail in challenging the patentability of claims 1–8, 10,
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`11, and 13–15 of the ’399 patent. At this juncture, we have not made a final
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`21
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`determination with respect to the patentability of the challenged claims, or
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`with respect to the construction of any claim term.
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`For the foregoing reasons, it is
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`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted for the following grounds of unpatentability:
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1–4, 6–8, 11, and 13–15
`
`§ 103(a) Murata, Schmidt, and Lin
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`5
`
`10
`
`
`
`§ 103(a)
`
`Murata, Schmidt, Lin, and
`Microsoft Dictionary
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`§ 103(a) Murata, Schmidt, Lin, and Beretta
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`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is author
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