IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Huawei Technologies Co., Ltd,
`Petitioner,
`
`v.
`
`
`
`
`
`Papst Licensing Gmbh & Co. KG
`Patent Owner.
`
`
`
`Case No. To Be Assigned
`Patent No. 8,504,746 B2
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`8,504,746 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`

`
`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 1001
`
`U.S. Patent No. 8,504,746 B2 to Tasler
`
`Ex. 1002
`
`File History for U.S. Patent No. 8,504,746
`
`Ex. 1003
`
`File History for Application Serial No. 11/078,778
`
`Ex. 1004
`
`Certified English Translation of PCT No. WO 98/39710
`
`Ex. 1005
`
`Ex. 1006
`
`Patent Owner’s Petition for Delayed Claim of Priority, November
`10, 2016
`U.S. Patent Application Publication 2005/0160199 A1 to Tasler.
`
`Ex. 1007
`
`U.S. Patent No. 6,470,399 to Tasler
`
`Ex. 1008
`
`PCT No. WO 98/39710
`
`Ex. 1009
`
`U. S. Patent No. 6,305,963 to Felps
`
`Ex. 1010
`
`to Revive Unintentionally Abandoned Application
`Petition
`Pursuant to 37 C.F.R. § 1.137(b) and (c), and
`Renewed Petition
`to Revive Unintentionally Abandoned
`Application Pursuant to 37 C.F.R. § 1.137(b) and (c)
`
`- i -
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`

`
`TABLE OF CONTENTS
`
`I. Mandatory Notices (37 C.F.R. § 42.8(a)(1)) .................................................... 2
`
`A.
`
`B.
`
`C.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) .................................. 2
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 2
`
`1.
`
`2.
`
`Related Litigation ........................................................................ 2
`
`Related Inter Partes Review Petitions ......................................... 2
`
`Counsel and Service Information (37 C.F.R. § 42.8(b)(3) and
`(b)(4)) .................................................................................................... 3
`
`II.
`
`Fees (37 C.F.R. § 42.103) ................................................................................ 4
`
`III. Requirements for Inter Partes Review Under 37 C.F.R. § 42.104 .................. 4
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 4
`
`B.
`
`C.
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2)) .................................................................................................... 4
`
`Supporting Evidence (37 C.F.R. §42.104(b)(5)) .................................. 5
`
`IV. Summary of the ’746 Patent ............................................................................ 5
`
`V.
`
`Claim Construction (37 C.F.R. §42.104(b)(3)) ............................................... 6
`
`VI. The PCT Publication is Prior Art to the ’746 Patent ....................................... 7
`
`VII. The PCT Publication Anticipates the ’746 Patent Claims Either
`expressly or Inherently ..................................................................................15
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1 ......................................................................................17
`
`Claim 4 ......................................................................................26
`
`Claim 6 ......................................................................................28
`
`Claim 7 ......................................................................................29
`
`Claim 8 ......................................................................................30
`
`- ii -
`
`

`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 10 ....................................................................................30
`
`Claim 11 ....................................................................................32
`
`Claim 14 ....................................................................................33
`
`Claim 15 ....................................................................................34
`
`10. Claim 17 ....................................................................................36
`
`11. Claim 18 ....................................................................................38
`
`12. Claim 20 ....................................................................................39
`
`13. Claim 21 ....................................................................................39
`
`14. Claim 23 ....................................................................................40
`
`15. Claim 30 ....................................................................................41
`
`16. Claim 31 ....................................................................................44
`
`17. Claim 34 ....................................................................................51
`
`18. Claim 35 ....................................................................................58
`
`VIII. Conclusion .....................................................................................................60
`
`- iii -
`
`

`
`Huawei Technologies Co., Ltd. petitions for inter partes review seeking
`
`cancellation of claims 1, 4, 6-8, 10, 11, 14, 15, 17, 18, 20, 21, 23, 30, 31, 34, and
`
`35 (“challenged claims”) of U.S. Patent No. 8,504,746 B2 (Ex. 1001, “’746
`
`Patent”), assigned to Patent Owner Papst Licensing Gmbh & Co. KG.
`
`The ’746 Patent seeks to claim priority, through a long string of continuing
`
`applications, to a 1998 PCT application. But there is a critical break in the priority
`
`chain. An intervening U.S. patent application (on which the ’746 Patent seeks to
`
`rely, as a bridge to the PCT) failed to identify each of the earlier applications in the
`
`chain, as is required to perfect such a priority claim. Indeed, the Patent Owner has
`
`recently acknowledged this failure, in a recent petition “for a delayed claim of
`
`priority.” (Ex. 1005.) But the Patent Owner’s petition cannot remedy the issue, as
`
`the intervening application was abandoned expressly (nearly a decade ago), and
`
`cannot now be revived to retroactively fix this “administrative error.”
`
`Thus, under 35 U.S.C. § 120, the ’746 Patent cannot claim priority back to
`
`the PCT. To the contrary, the PCT Publication (Exs. 1004, 1008) is prior art to the
`
`’746 Patent, under the statutory bar of pre-AIA 35 U.S.C. § 102(b)—and it plainly
`
`anticipates the challenged claims. Accordingly, Petitioner respectfully requests
`
`that the Patent Trial and Appeal Board (“Board”) institute trial for inter partes
`
`review and cancel these claims.
`
`- 1 -
`
`

`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real-parties-in interest are: Huawei Device USA Inc., Huawei Device
`
`Co., Ltd., Huawei Device (Dongguan) Co., Ltd., Huawei Technologies Co., Ltd.,
`
`and Huawei Technologies USA, Inc..
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`Related Litigation
`1.
`Petitioner is aware of the following litigation involving the ’746 Patent in
`
`the Eastern District of Texas: 6-15-cv-01095, 6-15-cv-01099, 6-15-cv-01100, 6-
`
`15-cv-01102, 6-15-cv-01111, and 6-15-cv-01115.
`
`Petitioner is aware of the following litigation involving the ’746 Patent in
`
`the United States District Court for the District of Columbia: MDL 1880, 1-07-mc-
`
`00493.
`
`Petitioner is aware of the following litigation involving the ’746 Patent in
`
`the Northern District of California: 3-15-cv-02101.
`
`Petitioner is aware of the following litigation involving the ’746 Patent in
`
`the District of Delaware: 1-15-cv-00495, 1-15-cv-00498, 1-15-cv-00499, 1-15-cv-
`
`00500, and 1-15-cv-00501.
`
`Related Inter Partes Review Petitions
`2.
`Petitioner is aware of the following inter partes review Petitions filed for
`
`U.S. Patent No. 8,504,746: IPR2016-01200, IPR2016-01206, IPR2016-01211,
`
`- 2 -
`
`

`
`IPR2016-01213, IPR2016-01223, IPR2016-01224, IPR2016-01862, IPR2016-
`
`01863, and IPR2017-00158.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 6,470,399: IPR2016-01839, IPR2016-01843, IPR2016-
`
`01864, and IPR2017-00443.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 6,895,449: IPR2017-00415 and IPR2017-0448.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 8,966,144: IPR2016-01199, IPR2016-01202, IPR2016-
`
`01212,
`
`IPR2016-01214,
`
`IPR2016-01216,
`
`IPR2016-01222,
`
`IPR2016-01225,
`
`IPR2016-01849, IPR2016-01860, and IPR2017-00154.
`
`Petitioner is aware of the following inter partes review Petition filed for
`
`related U.S. Patent No. 9,189,437: IPR2016-01733, IPR2016-01840, IPR2016-
`
`01841, IPR2016-01842, IPR2016-01844, and IPR2017-00156.
`
`C. Counsel and Service Information (37 C.F.R. § 42.8(b)(3) and
`(b)(4))
`
`Counsel
`
`Service Information
`
`Lead Counsel:
`
`David A. Garr (Reg. No. 74,932)
`
`dgarr@cov.com
`
`
`Postal and hand delivery:
`
`Covington & Burling LLP
`
`One CityCenter
`
`850 Tenth Street, NW
`- 3 -
`
`

`
`Counsel
`
`Service Information
`
`Backup Counsel:
`
`Gregory S. Discher (Reg. No. 42,488)
`
`gdischer@cov.com
`
`
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`
`Washington, DC 20001
`
`
`T: 202-662-6000
`
`F: 202-662-6291
`
`The PTO is authorized to charge $24,200 ($9,000 request fee and $15,200
`
`post-institution fees) to Deposit Account No. 50-0740. The PTO is also authorized
`
`to charge all fees due at any time during this proceeding to Deposit Account No.
`
`50-0740.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’746 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ’746 Patent on the ground
`
`identified in the present petition.
`
`B. Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2))
`Ground 1: Petitioner requests review of claims 1, 4, 6-8, 10, 11, 14, 15, 17,
`
`18, 20, 21, 23, 30, 31, 34, and 35 of the ’746 Patent (“challenged claims”), and
`
`cancellation of these claims, as anticipated under 35 U.S.C. § 102 by PCT No. WO
`- 4 -
`
`

`
`98/39710 (“the PCT Publication”), attached hereto as Exhibits 1004 (German
`
`original) and 1008 (Certified English translation).
`
`As discussed below, the ’746 Patent is entitled to a priority date no earlier
`
`than August 15, 2002. Therefore, the PCT Publication, which was published on
`
`September 11, 1998, is prior art under U.S.C. § 102(b).
`
`Supporting Evidence (37 C.F.R. §42.104(b)(5))
`
`C.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided below in the form of explanatory text. An Exhibit List with the exhibit
`
`numbers and a brief description of each exhibit is set forth above.
`
`IV. SUMMARY OF THE ’746 PATENT
`The ’746 Patent describes an “interface device” intended to eliminate the
`
`need for specialized device drivers. When the interface device of the alleged
`
`invention is connected to a host, it responds to the host’s request for identification
`
`by “simulat[ing] both in terms of hardware and software, the way in which a
`
`conventional input/output device functions, preferably that of a hard disk drive,”
`
`for which the host system already has a working driver. Id. at 4:14-17 (emphasis
`
`added). When the host communicates with the interface device to request data
`
`from or control the operation of the data device, the host uses its own familiar
`
`- 5 -
`
`

`
`native device driver, and the interface device translates the communications into a
`
`form understandable by the connected data device. Id. at 3:28-4:38. The interface
`
`device of the ’746 Patent thus does not require a “specially designed driver” for the
`
`interface device in a host computer. Id. at 4:22-23.
`
`V. CLAIM CONSTRUCTION (37 C.F.R. §42.104(B)(3))
`In an inter partes review, the Board construes claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016). Consistent with the
`
`broadest reasonable construction, claim terms are presumed to have their ordinary
`
`and customary meaning as understood by a person of ordinary skill in the art in the
`
`context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`For purposes of this proceeding, Petitioner does not believe that it is
`
`necessary to construe any terms in the ’746 Patent. The only ground asserted in
`
`this petition is that the challenged claims are anticipated by the PCT Publication.
`
`The specification of the PCT Publication is substantially identical to the ’746
`
`Patent—which of course serves as the patentee’s written description for the
`
`challenged claims. Accordingly, the PCT Publication renders the challenged
`
`claims unpatentable under any reasonable interpretation of the claims.
`
`- 6 -
`
`

`
`VI. THE PCT PUBLICATION IS PRIOR ART TO THE ’746 PATENT
`The ’746 Patent is part of a long chain of continuing applications, which
`
`purport to claim priority back to PCT/EP98/01187 (filed March 3, 1998) and
`
`German application DE 197 08 755 (filed March 4, 1997). But the patentee failed
`
`to perfect its claim of priority though all of the intervening applications. In
`
`particular, while U.S. application 11/078,778 was filed as a continuation of U.S.
`
`application 10/219,105, it failed to claim priority to the earlier-filed U.S.
`
`application 09/331,002.
`
`For example, in the Patent Application Utility Transmittal (“Transmittal”)
`
`filed on March 11, 2005, Applicant claimed priority to only application
`
`10/219,105. The Transmittal states: “If a CONTINUING APPLICATION, check
`
`appropriate box, and supply the requisite information below and in the first
`
`sentence of the specification following the title, or in an Application Data Sheet
`
`under 37 CFR 1.76: See Ex. 1003, at 1 (File History for the ’778 Application)
`
`(emphasis added). However, Applicant did not supply the requisite information in
`
`the first sentence of the specification following the title during the course of
`
`prosecution of application 11/078,778 to claim priority to application 09/331,002.
`
`See Ex. 1003, at 7, 45-66, 150-68, 171-87, 190-213, 232-262, 282-304, 318-340,
`
`345-64, and 378-95. Nor did Applicant file an Application Data Sheet during the
`
`course of prosecution of application 11/078,778 to claim priority to application
`
`- 7 -
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`

`
`09/331,002. See id. As explained further below, Applicant’s failure to comply
`
`with at least 35 U.S.C. § 120, and 37 C.F.R. §§ 1.78(a)(2)(i), 1.78(a)(2)(iii) and
`
`1.76 severed the chain of priority for the ’778 Application and all the later
`
`applications in the chain.
`
`As a consequence, the earliest effective filing date of the ’746 Patent, and
`
`claims thereof, is August 15, 2002 (the filing date of the ’105 Application). In
`
`particular, the ’746 Patent does not and cannot claim priority back to: either (i)
`
`U.S. application 09/331,002 (filed June 14, 1999); (ii) the corresponding PCT
`
`Application EP98/01187; or (iii) the earlier German application DE 197 08 755.
`
`A claim to benefit of priority under 35 U.S.C. § 120 to the earliest of a chain
`
`of patent applications must make specific reference to “each application in the
`
`chain of priority to refer to the prior applications.” Encyclopaedia Britannica, Inc.
`
`v. Alpine Elecs. of America, Inc, 609 F.3d 1345, 1352 (Fed. Cir. 2010) (emphasis
`
`added). Such a “specific reference” to an application in a priority claim requires
`
`precise details, including those details recited in the implementing regulation for
`
`§ 120, that is, 37 C.F.R. § 1.78(a)(2)(i). Medtronic Corevalue, LLC v. Edwards
`
`Lifesciences Corp., 741 F.3d 1359, 1366 (Fed. Cir. 2014). “The patentee is the
`
`person best suited to understand the genealogy and relationship of her applications;
`
`a requirement for her to clearly disclose this information should present no
`
`hardship. Id. at 1366.
`
`- 8 -
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`

`
`Pre-AIA § 120 states, in relevant part:
`
`An application for patent for an invention disclosed in the manner
`provided by section 112(a) (other than the requirement to disclose the
`best mode) in an application previously filed in the United States, or
`as provided by section 363, which is filed by an inventor or inventors
`named in the previously filed application shall have the same effect,
`as to such invention, as though filed on the date of the prior
`application, if filed before the patenting or abandonment of or
`termination of proceedings on the first application or on an application
`similarly entitled to the benefit of the filing date of the first
`application and if it contains or is amended to contain a specific
`reference to the earlier filed application. No application shall be
`entitled to the benefit of an earlier filed application under this
`section unless an amendment containing the specific reference to
`the earlier filed application is submitted at such time during the
`pendency of the application as required by the Director.
`
`(emphasis added).
`
`Because the ’778 Application failed to claim priority to “each application in
`
`the chain of priority” that the patentee now seeks to exploit, it broke the chain of
`
`priority for all the subsequent applications. Moreover, because the ’778
`
`Application was then expressly abandoned, Patent Owner cannot seek to
`
`retrospectively cure this critical omission.
`
`- 9 -
`
`

`
`The ’746 Patent describes its lineage as follows:
`
`This application is a continuation of application Ser. No. 11/928,283
`filed Oct. 30, 2007 which is a continuation of application Ser. No.
`11/467,073, filed Aug. 24, 2006, now currently pending, which is a
`continuation of application Ser. No. 11/078,778, filed Mar. 11, 2005,
`expressly abandoned, which is a continuation of application Ser. No.
`10/219,105, filed Aug. 15, 2002, now U.S. Pat. No. 6,895,449, which
`is a divisional of application Ser. No. 09/331,002, filed Jun. 14, 1999,
`now U.S. Pat. No. 6,470,399.
`
`’746 Patent, at 1:8-16 and face page. The ’002 Application—the earliest U.S.
`
`application in this string, which issued as the ’399 Patent—was filed as the U.S.
`
`national stage application of PCT Application EP98/01187. See Ex. 1007 (’399
`
`Patent), cover page.
`
`However, as Patent Owner has now confirmed in a recent petition “for a
`
`delayed claim of priority,” the ’778 Application claimed domestic priority only to
`
`application no. 10/219,105, and not to the ’002 Application. See Ex. 1005, at
`
`24/54 (Bibliographic Data Sheet, stating: “This application is a CON of 10/219,105
`
`08/15/2002 PAT 6,895,449.”). Importantly, the Bibliographic Data Sheet does not
`
`indicate that the ’778 Application also claimed domestic priority to application
`
`serial no. 09/331,002.
`
`The ’778 Application’s failure to claim priority to the ’002 Application is
`
`confirmed by US 2005/0160199 (Ex. 1006), the published version of the ’778
`
`- 10 -
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`

`
`Application. The “Related U.S. Application Data” section on the face page
`
`confirms that the ’778 Application is a “[c]ontinuation of application No.
`
`10/219,105, filed on Aug. 15, 2002, now Pat. No. 6,895,449.” The patentee was
`
`thus on notice at least since at least July 21, 2005 (when the application published)
`
`that the ’778 Application claimed priority only to application no. 10/219,105, and
`
`not to application no. 09/331,002.
`
`In a “Petition Under 37 C.F.R. § 1.55 and § 1.78 for Delayed Claim of
`
`Priority,” filed on November 10, 2016 (Ex. 1005), the Patent Owner stated that
`
`“[i]t has recently come to Applicant’s attention that the filing documents
`
`accompanying the ’778 Application mistakenly omit a specific reference to U.S.
`
`Application No. 09/331,002, the National Stage of PCT Application No.
`
`PCT/EP98/01187 . . . .” Ex. 1005, at 5/54. The petition claims that “Applicant
`
`intended to claim priority . . . and take advantage of the earliest effective filing
`
`date,” id. at 7, and asserts that its failure to do so was “simply an administrative
`
`error that has gone unnoticed for over eleven years,” id. at 8/54. While the petition
`
`portrays the issue as an unintentional error that Patent Owner is attempting to fix
`
`with “swift action,” id. at 10/54, this overlooks that the Patent Owner expressly
`
`abandoned the ’778 Application back in August 2007, nearly a decade before its
`
`- 11 -
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`

`
`belated attempt to remedy the “administrative error.”
`
`37 C.F.R. § 1.78(a)(2)(i), 1 the rule in effect as of the filing of the ’778
`
`Application, provides:
`
`Except for a continued prosecution application filed under § 1.53(d),
`any nonprovisional
`application or
`international
`application
`designating the United States of America claiming the benefit of one
`or more prior-filed copending nonprovisional applications or
`international applications designating the United States of America
`must contain or be amended to contain a reference to each such prior-
`filed application, identifying it by application number (consisting of
`the series code and serial number) or international application number
`and international filing date and indicating the relationship of the
`applications. Cross references to other related applications may be
`made when appropriate (see § 1.14).
`
`(emphasis added). Further, “the reference required by this paragraph must be
`
`included in an application data sheet (§ 1.76), or the specification must contain or
`
`be amended to contain such reference in the first sentence(s) following the title.”
`
`
`1 MPEP Eighth edition Rev. 2 was in effect from May 2004 - July 2005.
`
`See https://www.uspto.gov/web/offices/pac/mpep/old/index.htm; see also
`
`https://www.uspto.gov/web/offices/pac/mpep/old/E8R2_R.pdf.
`
`
`
`- 12 -
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`

`
`37 C.F.R. § 1.78(a)(2)(iii).
`
`As acknowledged by Patent Owner’s recent petition (Ex. 1005), an
`
`application data sheet was not filed during prosecution of the ’778 Application.
`
`See also Ex. 1003 (File History for the ’778 Application). And as also
`
`acknowledged by Applicant’s petition, the specification of the ’778 Application
`
`was never amended to refer to application no. 09/331,002. Ex. 1005, at 43/54
`
`(Patent Owner’s present attempt to retroactively amend the specification of the
`
`now-abandoned ’778 Application); see also Ex. 1003.
`
`Thus, the ’778 Application does not satisfy the requirements of 35 U.S.C. §
`
`120 (or 37 C.F.R. §§ 1.78(a)(2)(i) or 1.78(a)(2)(iii)) because Applicant did not file
`
`“an amendment containing the specific reference to the earlier filed application . . .
`
`during the pendency of the application.” 35 U.S.C. § 120. Because the ’778
`
`Application does not comply with 35 U.S.C. § 120, and claims priority only to
`
`application serial no. 10/219,005, the effective filing date that the ’778 Application
`
`is August 15, 2002 (the filing date of application serial no. 10/219,005), as
`
`confirmed on the face page of the published application (Ex. 1006).
`
`The Patent Owner’s petition to correct the priority claim in the ’778
`
`Application should not be able to retroactively plug the gap in the priority chain.
`
`- 13 -
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`

`
`In order for the Office of Petitions to take action with regard to an abandoned
`
`application, it would first need to be revived.2 The Patent Owner’s petition does
`
`not seek to do this. Moreover, because the ’778 Application was expressly (i.e.,
`
`
`
`2 “Sometimes a pending application is one of a series of applications
`
`wherein the pending application is not copending with the first filed application
`
`but is copending with an intermediate application entitled to the benefit of the
`
`filing date of the first application. If applicant wishes that the pending application
`
`have the benefit of the filing date of the first filed application, applicant must,
`
`besides making reference to the intermediate application, also make reference to
`
`the first application. See Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d
`
`90, 160 USPQ 177 (7th Cir. 1968) and Hovlid v. Asari, 305 F.2d 747, 134 USPQ
`
`162 (9th Cir. 1962). The reference to the prior applications must identify all of the
`
`prior applications and indicate the relationship (i.e., continuation, divisional, or
`
`continuation-in-part) between each nonprovisional application in order to establish
`
`copendency throughout the entire chain of prior applications. Appropriate
`
`references must be made in each intermediate application in the chain of prior
`
`applications.” MPEP 211.01 (b)II.
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`intentionally) abandoned,3 any petition to revive under the unintentional standard
`
`should be rejected. See, e.g., Ex. 1010 (decisions by the Office of Petitions
`
`dismissing a Petition to Revive “Unintentionally Abandoned Application” and then
`
`denying a Renewed Petition to Revive “Unintentionally Abandoned Application”
`
`where the application, in fact, had been expressly abandoned).
`
`Accordingly, the PCT Publication (Exs. 1004, 1008), published on
`
`September 11, 1998, is prior art with respect to the ’746 Patent under at least 35
`
`U.S.C. § 102(b).
`
`VII. THE PCT PUBLICATION ANTICIPATES THE ’746 PATENT
`CLAIMS EITHER EXPRESSLY OR INHERENTLY
`
`The ’746 Patent and the PCT Publication have substantially identical
`
`specifications, as is confirmed by the attached certified translation (Ex. 1004) of
`
`the original German PCT Publication (Ex. 1008). So it is not surprising that each
`
`claim term is expressly or (at a minimum) inherently disclosed in the PCT
`
`Publication. Indeed, this is essentially the same disclosure that the Patentee
`
`
`3 The Patent Owner expressly abandoned the ’778 Application by filing a
`
`letter of Express Abandonment on August 14, 2007. Ex. 1003, at 444-45. The
`
`Office issued Notices of Abandonment on August 31, 2007 and September 7,
`
`2007. Id. at 447-50.
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`submitted as its written-description support for the challenged claims. Moreover,
`
`the Patent Owner is now seeking (in its petition for “delayed claim of priority,” Ex.
`
`1005) to claim priority to the PCT itself.
`
`Thus, as a matter of substance, there should be no dispute that the PCT
`
`Publication would anticipate the claims, provided that it is available as prior art.
`
`The following discussion identifies exemplary excerpts from the PCT Publication
`
`(Ex. 1008), as translated in English (Ex. 1004) that disclose each limitation of the
`
`challenged claims of the ’746 Patent.
`
`The claims of the PCT Publication identify the following claim elements as
`
`they correspond to the numbered items in the specification.
`
`PCT Publication Disclosure (Ex.
`1004)
`processor device
`memory
`a first connection device
`second connection device
`storage device
`buffer
`SCSI-interface
`second
`connection
`comprises an analog input
`A/D-converter
`digital signal processor
`
`
`device
`
`Corresponding Number in PCT Publication
`Disclosure (Ex. 1004)
`13, 1300, 1320
`14, 1400, 1420, 1440
`12, 1220, 1240, 1260, 1280
`15,1505-1535
`14, 1400, 1420, 1440
`1420
`1220
`1505
`
`1530
`1300
`
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`Claim 1
`
`1.
`[1 preamble]: An analog data acquisition device operatively connectable to a
`computer through a multipurpose interface of the computer, the computer
`having an operating system programmed so that, when the computer receives
`a signal from the device through said multipurpose interface of the computer
`indicative of a class of devices, the computer automatically activates a device
`driver corresponding to the class of devices for allowing the transfer of data
`between the device and the operating system of the computer, the analog data
`acquisition device comprising:
`
`The PCT Publication discloses that the invention is “an analog data
`
`acquisition device.” As disclosed by the PCT Publication, “[t]he connection of the
`
`interface device 10, symbolized by the line 16, to an arbitrary transceiver
`
`implements with the blocks 1505 - 1535 an analog input with a sampling rate of
`
`1.25 MHz and a quantification of 12 bit.” Ex. 1004, at 18. Regarding operatively
`
`connecting the analog data acquisition device “to a computer through a
`
`multipurpose interface of the computer,” the PCT Publication discloses that the
`
`“interface device according to the invention shall be connected to a multipurpose
`
`interface of the host device.” Id. at 6.
`
`Regarding the computer having an “operating system,” the PCT Publication
`
`discloses that the interface device can communicate with computers running “all
`
`known operating systems.” Ex. 1004, at 8 (“The communication between the host
`
`system or host device and the interface device is based on the standard access
`
`commands of prior art, as supported by all known operating systems (e.g., DOS,
`
`Windows, Unix).”).
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`Regarding whether the computer receives a signal from the device through
`
`said multipurpose interface of the computer indicative of a class of devices, the
`
`PCT Publication discloses that the computer received such a signal in response to
`
`an “INQUIRY” command:
`
`When the host device system, to which the interface device according
`to the present invention is connected, with the interface device 10
`further being connected to a transceiver, is booted up, common BIOS
`routines or multipurpose interface programs issue a command to the
`input/output interfaces provided in the host device, which in
`professional circles is known as the command “INQUIRY”. The
`digital signal processor 13 receives this inquiry via the first
`connection device and a signal is generated, which in turn is
`transmitted via the first connection device 12 and the host line 11 to
`the host device (not shown). This signal indicates to the host device
`that at the respective interface, to which the command INQUIRY was
`sent, e.g., a hard drive is connected.
`
`Ex. 1004, at 9. The PCT Publication further discloses that the computer
`
`automatically activates a device driver corresponding to the class of devices:
`
`therefore
`invention
`the
`to
`interface device according
`The
`communicates with the host device or computer no longer via a
`specially designed driver but via a program provided in the BIOS
`system . . . , which usually is adjusted precisely to the special
`computer system on which it is installed and/or via a program specific
`for the multipurpose interface.”
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`Id. at 7. The PCT Publication further discloses that this program “could be
`
`considered a ‘device-specific driver.’” Id.
`
`The PCT Publication further discloses that “[t]he user no longer needs to
`
`focus on the installation of the interface device 10 on the host device by drivers to
`
`be especially loaded, but the interface device 10 is automatically ready for
`
`operation upon booting the host system.” Id. at 13 (emphasis added).
`
`Regarding whether the device driver is “for allowing the transfer of data
`
`between the device and the operating system of the computer,” the PCT
`
`Application discloses:
`
`As already mentioned, the communication between the host device
`and the multipurpose interface cannot occur only via drivers for
`input/output devices common for host devices and provided in the
`BIOS-system of the host device, but also via specific interface drivers,
`which in case of a SCSI-interface are called multipurpose interface
`ASPI-drivers (ASPI = Advanced SCSI Programming Interface). This
`ASPI-driver, which can also be called ASPI-manager, is specific for a
`special SCSI-host adapter, i.e. for a special multi-purpose interface,
`and is commonly provided by the manufacturer of this multipurpose
`interface. Stated in general, this multipurpose interface driver has the
`purpose to bring the precisely specified SCSI-commands from the
`host system - program to the host system - SCSI adapter.
`
`Id. at 20.
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`

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`a) a program memory;
`The PCT Publication discloses memory 14, 1400, 1420, 1440. Id. at 8, 11,
`
`12, 14, 15, 18, 24, 25, 27, Figures 1-2.
`
`
`
`
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`b) an analog signal acquisition channel for receiving a signal from an analog
`source;
`
`The “analog acquisition channel” encompasses BNC inputs 1505 and
`
`amplifiers 1510. The PCT Publication discloses that “[t]he second connection
`
`device comprises preferably 8 BNC-inputs with calibration relay 1505, a block
`
`1510 with 8 device amplifiers with surcharge protection of ± 75 V, w