Paper 7
`
`
`
`
`Trials@uspto.gov
`Entered: May 17, 2017
`
`
`
`
`571-272-7822
`
`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 IPR2017-00448
`Patent 6,895,449 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: May 17, 2017
`
`
`
`
`571-272-7822
`
`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 IPR2017-00448
`Patent 6,895,449 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2017000448
`Patent 6,895,449 B2
`
`
`
`INTRODUCTION
`I.
`Petitioner, listed above, filed a Petition requesting an inter partes
`review of claims 1–10, 12, 13, and 15–18 (“the challenged claims”) of
`U.S. Patent No. 6,895,449 B2 (Ex. 1101, “the ’449 patent”). Paper 1
`(“Pet.”). Patent Owner, Papst Licensing GmbH & Co., KG, filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”).
`For the reasons that follow, we decline to institute an inter partes
`review.
`
`A. Related Matters
`
`The parties indicate that the ’449 patent is involved in cases taking
`place in several district courts. Pet. 2–3; Paper 4, 4–5. This patent has also
`been challenged in several other petitions for inter partes review. Pet. 4;
`Paper 4, 4–5.
`
`B. The ’449 Patent
`
`The ’449 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. 1101, 1:13–17,
`1:49–55. According to the ’449 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 1:66–2:11. Several solutions to this problem were known in
`the art. Id. at 2:15–3:20. For example, IOtech introduced an interface
`device for laptops, using a plug-in card for converting the personal computer
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`memory card association (PCMCIA) interface into a known standard
`interface (IEEE 1284). Id. at 2:18–23. The plug-in card provided a printer
`interface for enhancing data transfer rates. Id. at 2:23–27. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:4–8. The interface appeared as floppy disk
`drive to the host, allowing a floppy disk drive and another peripheral device
`to be connected to the host device. Id. at 3:11–13.
`The ’449 patent indicates that the “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 3:27–31. Figure 1 of the ’449 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 4:46–62. Interface device 10 includes first connecting device 12,
`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
`a host device via a multi-purpose interface—e.g., a small computer system
`interface (SCSI) interface—which includes both an interface card and
`specific driver software for the interface card. Id. at 3:44–50, 8:30–34.
`According to the ’746 patent, SCSI interfaces were known to be present on
`most host devices or laptops. Id. at 8:30–34. By using a standard interface
`of a host device and by simulating an input/output device to the host device,
`the interface device “is automatically supported by all known host systems
`without any additional sophisticated driver software.” Id. at 11:28–32.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 17, and 18 are independent.
`Claims 2–10, 12, 13, 15, and 16 depend directly or indirectly from claim 1.
`Claim 1 is illustrative:
`1. An interface device for communication between a host device,
`which comprises drivers for input/output devices customary in a
`host device and a multi-purpose
`interface, and a data
`transmit/receive device comprising the following features:
`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,
`wherein the interface device is configured by the processor and
`the memory in such a way that the interface device, when
`receiving an inquiry from the host device as to the type of a
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`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 a storage device customary in a host device, whereupon the
`host device communicates with the interface device by means of
`the driver for the storage device customary in a host device, and
`wherein the interface device is arranged for simulating a virtual
`file system to the host, the virtual file system including a
`directory structure.
`Ex. 1101, 11:46–12:6.
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the prior art references listed below (Pet. 6–7).
`
`
`
`Reference
`
`Murata
`
`US 5,508,821, issued April 16, 1996
`
`Ard
`
`US 5,915,106, issued June 22, 1999
`
`Beretta
`
`US 5,850,484, issued Dec. 15, 1998
`
`THE MS-DOS ENCYCLOPEDIA, (Ray Duncan ed.,
`Microsoft Press, 1988)
`
`MS-DOS
`Encyclopedia
`
`
`
`
`Exhibit
`
`1105
`
`1106
`
`1107
`
`1110
`
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 6–7):1
`
`Challenged Claims Basis
`
`Reference(s)
`
`1–3, 6–10, 12, 13,
`and 15–18
`
`§ 103(a) Murata, Ard, and MS-DOS
`Encyclopedia
`
`4 and 5
`
`§ 103(a) Murata, Ard, MS-DOS Encyclopedia,
`and Beretta
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`We note that only those claim terms and elements which are in
`controversy need to be construed, and only to the extent necessary to resolve
`
`
`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.
`§§ 102 and 103 in this Decision.
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`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999). The parties propose constructions for several claim
`terms. Pet. 15–17; Prelim. Resp. 7–9. For purposes of this Decision, we
`find it necessary to address only the claim term “multi-purpose interface.”
`
`“multi-purpose interface”
`Independent claim 1 recites “a first connecting device for interfacing
`the host device with the interface device via the multi-purpose interface of
`the host device.” Ex. 1001, 11:54−56. The Specification of the ’449 patent
`describes “the interface device according to the present invention is to be
`attached to a host device by means of a multi-purpose interface of the host
`device which can be implemented, for example, as an SCSI interface or as
`an enhanced printer interface.” Id. at 3:44–48 (emphases added). The
`Specification also indicates that SCSI interfaces were known to be present
`on most host devices or laptops. Id. at 8:33–34. In light of the Specification,
`we construe the claim term “multi-purpose interface” to encompass a “SCSI
`interface.”
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). In that regard, Dr. Almeroth testifies that a person having
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`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 a related
`field of study,” and “either a Master’s degree, or at least two years of
`experience in one of the relevant fields, computer science, computer
`systems, or peripheral devices.” Pet. 7–8 (citing Ex. 1103 ¶ 54.)
`Patent Owner confirms that Petitioner’s statements regarding the level
`of ordinary skill in the art is at least partially consistent with Patent Owner’s
`view, but nonetheless contends that an ordinarily skilled artisan would have
`“a bachelor’s degree in a related field such as computer engineering or
`electrical engineering and at least three years of experience in the design,
`development, and/or testing of hardware and software components involved
`with data transfer or in embedded devices and their interfaces with host
`systems.” Prelim. Resp. 5–7. Alternatively, Patent Owner states that a
`person of ordinary skill “may have five or more years of experience in these
`technologies, without a bachelor’s degree.” Id. at 7.
`We do not observe any meaningful differences between the parties’
`definition of a person of ordinary skill in the art. Our analysis in this
`Decision is supported by either level of skill. We further find that the prior
`art in the instant proceeding reflects the level of ordinary skill in the art at
`the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001).
`
`C. Obviousness over Ard in Combination with Other References
`Each of Petitioner’s asserted grounds of unpatentability relies on Ard.
`Pet. 6–7. Ard has a filing date of March 20, 1997, which is after the ’449
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`patent’s foreign priority date of March 4, 1997. Ex. 1106 at [22]; Ex. 1101
`at [30]. Petitioner asserts that the challenged claims of the ’449 patent are
`not entitled to the benefit of the filing date of German Patent Application
`No. DE 197 08 775 A1 (Ex. 1119) (Ex. 1120, English translation, “the
`German Priority Application”)2 because the German Priority Application
`allegedly lacks adequate written description support for the subject matter
`recited in the challenged claims. Pet. 10–15. Patent Owner opposes.
`Prelim. Resp. 19–26.
`For the reasons that follow, we determine that Petitioner has not
`established sufficiently that the challenged claims are not entitled to the
`benefit of the German Priority Application’s filing date. Consequently,
`Petitioner fails to make a threshold demonstration that Ard is prior art to the
`challenged claims of the ’449 patent in this proceeding. 35 U.S.C. § 311(b);
`37 C.F.R. § 42.104(b)(2).
`Principles of Law
`
`Under 35 U.S.C. § 119, a patent claim is entitled to the benefit of a
`foreign priority date if the corresponding foreign application supports the
`claim in the manner required by 35 U.S.C. § 112. In re Gosteli, 872 F.2d
`1008, 1010 (Fed. Cir. 1989). The test for determining compliance with the
`written description requirement under 35 U.S.C. § 112, ¶ 1, is whether the
`original disclosure of the earlier-filed application reasonably would have
`
`
`2 In this Decision, we cite to the English translation of the German priority
`application (Ex. 1120).
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`conveyed to one with ordinary skill in the art that the inventor had
`possession of the claimed subject matter at the time of the earlier-filed
`application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010) (en banc); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
`1983).
`Multi-Purpose Interface
`
`Each of the challenged claims requires a multi-purpose interface of a
`computer. For instance, claim 1 recites “a first connecting device for
`interfacing the host device with the interface device via the multi-purpose
`interface of the host device” and “inquiry from the host device as to the type
`of a device attached to the multi-purpose interface.” Ex. 1101, 11:54–63.
`Petitioner argues that the German Priority Application does not
`explicitly or inherently disclose “using driver programs in connection with a
`‘multi-purpose interface,’ which would be necessary for such an interface to
`be used with a host computer.” Pet. 11–12. As support, Petitioner proffers a
`comparison chart between the ’449 patent and the German Priority
`Application to highlight that the concept of a multi-purpose interface was
`added as an alternative to “typical BIOS routines” after the filing of the
`German Priority Application. Id. at 12–13. According to Dr. Almeroth’s
`testimony, because it does not disclose “SCSI-specific drivers,” the German
`Priority Application “does not covey to a [person of ordinary skill in the art]
`that, as of the filing date sought, the inventor was in possession of the
`invention of at least the ‘inquiry from the host device as to the type of a
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`device attached at the multi-purpose interface of the host device.” Ex. 1003,
`¶ 48; Pet. 13–14.
`Patent Owner counters that a person with ordinary skill in the art
`would have recognized that the German Priority Application discloses the
`claimed “multi-purpose interface” because it describes SCSI interfaces,
`which were known by a person with ordinary skill in the art to be multi-
`purpose interfaces. Prelim. Resp. 19–26.
`Based on the evidence in this record, we are not persuaded by
`Petitioner’s arguments or supporting evidence. Pet. 10–15; Ex. 1003 ¶¶ 44–
`48. Rather, we agree with Patent Owner that Petitioner has not
`demonstrated sufficiently that the German Priority Application lacks
`adequate written description support for a “multi-purpose interface” of a
`host device. Prelim. Resp. 19–26.
`As discussed above in our claim construction analysis, in light of the
`Specification of the ’449 patent, we construe the claim term “multi-purpose
`interface” to encompass a SCSI interface. Significantly, the German Priority
`Application discloses a SCSI interface of a host computer. For example, the
`German Priority Application discloses the following:
`[T]he first connecting device 12 from Figure 1 comprises the
`following components [for the preferred embodiment of the
`interface device 10 shown Fig. 2]: an SCSI interface 1220 as well
`as a 50 pin SCSI connector 1240, in order to connect to an SCSI
`interface, which is present in most host devices or laptops.
`
`Ex. 1120, 6 (emphases added).
`
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`As our reviewing court has articulated, the written description “test
`requires an objective inquiry into the four corners of the specification from
`the perspective of a person of ordinary skill in the art.” Ariad, 598 F.3d at
`1351. Petitioner confirms, and Dr. Almeroth testifies that, as of March 4,
`1997, such an artisan would have been familiar with communication
`interfaces, including SCSI interfaces. Pet. 14–15; Ex. 1003 ¶¶ 46–47.
`Indeed, the evidence before us shows that SCSI interfaces were known
`multi-purpose interfaces at the time of the German Priority Application’s
`filing date. Ex. 1130 (“Schmidt”). For instance, Schmidt confirms that the
`SCSI bus was “designed not only for hard drives but also for tape drives,
`CD-ROM, scanners, and printers,” and almost all computers were “equipped
`with a SCSI interface.” Ex. 1130, Preface. In short, one of ordinary skill in
`the art would have recognized that SCSI interfaces were known
`multi-purpose interfaces.
`Conclusion
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated sufficiently that the German Priority Application lacks
`adequate written description support for a multi-purpose interface of a host
`computer or for using driver programs in connection with such a
`multi-purpose interface, as recited by the challenged claims. As a result,
`Petitioner has not shown sufficiently that Ard is prior art to the challenged
`claims of the ’449 patent in this proceeding. Each ground asserted by
`Petitioner is based on Ard in combination with other references. Pet. 6–7.
`Consequently, we conclude that Petitioner has not established a reasonable
`
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`likelihood of prevailing on its assertion that claims 1–10, 12, 13, and 15–18
`of the ’449 patent are unpatentable over Ard in combination with other
`references.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not
`established a reasonable likelihood of prevailing on its assertion that any of
`the claims 1–10, 12, 13, and 15–18 of the ’449 patent are unpatentable.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
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`For PETITIONER:
`David A. Garr
`Gregory S. Discher
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gdischer@cov.com
`
`Herbert H. Finn
`GREENBERG TRAURIG LLP
`finnh@gtlaw.com
`
`Darren Franklin
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`smiller@sheppardmullin.com
`
`
`
`For PATENT OWNER:
`Gregory S. Donahue
`Minghui Yang
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`myang@dpelaw.com
`
`Anthony L. Meola
`Jason A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`info@themeolafirm.com
`jmurphy@iplawusa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`14
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