PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`IN THE UNITED STATES PATENT AND TRADEMARK
`OFFICE
`In the Inter Partes Review of U.S. Patent No. 8,966,144
`Trial No.: Not Yet Assigned
`Issued:
`February 24, 2015
`Filed:
`August 24, 2006
`Inventor: Michael Tasler
`Assignee: Papst Licensing GmbH & Co., KG
`Title:
`ANALOG DATA GENERATING AND PROCESSING
`DEVICE HAVING A MULTI-USE AUTOMATIC
`PROCESSOR
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR INTER PARTES
`REVIEW UNDER 37 C.F.R. § 42.100
`Inter partes review is respectfully requested for claims 7, 9, 11-12, 17-21, 23-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`26, 41, 50-51, 56-58, 66-76, 78-79 (the “Challenged Claims”) of U.S. Patent No.
`
`8,966,144 (“the ’144 patent”), attached hereto as Exhibit 1201.
`
`The undersigned representative of Petitioner authorizes the Patent Office to
`
`charge the $23,000 Petition Fee, along with any additional fees, to Deposit
`
`Account 19-0036. A total of 32 claims are being reviewed, so $9,200 excess
`
`claim fees are due for the challenged claims. Additionally, excess claim fees are
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`being paid in the amount of $1,200 for claims 1 and 2. Claims 1 and 2 are not
`
`challenged by this petition, but some challenged claims depend from claims 1 and
`
`2. The undersigned representative further authorizes payment for any additional
`
`fees that may be due in connection with this Petition to be charged to the above-
`
`referenced Deposit Account.
`
`
`
`
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`TABLE OF CONTENTS
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a) ..................................... 3
`III. Background Information for ’144 Patent ............................................................. 3
`A. Overview of the ’144 Patent Family and Prosecution History ......................... 3
`IV. Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b) ............................ 6
`A. 37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes Review Is
`Requested ................................................................................................................ 6
`B. 37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds on Which the
`Challenge to the Claims Is Based ............................................................................ 6
`C. 37 C.F.R. § 42.104(b)(3): Claim Construction ................................................ 9
`D. 37 C.F.R. § 42.104(b)(4): How the Construed Claims are Unpatentable ......12
`E. 37 C.F.R. § 42.104(b)(5): Supporting Evidence ...........................................12
`V. There Is a Reasonable Likelihood That The Challenged Claims Are
`Unpatentable ............................................................................................................ 12
`A. Prior Art .........................................................................................................12
`1. Kawaguchi ..................................................................................................12
`2. Matsumoto ..................................................................................................14
`3. Kawaguchi and Matsumoto Are Properly Combinable .............................15
`4. Kawaguchi, Matsumoto, DASM-AD14, Takahashi, Saito, and Muramatsu
`are Properly Combinable ...................................................................................17
`5. Level of Skill of POSA ..............................................................................19
`B. Challenged Claims .........................................................................................19
`1.
`Independent Claim 1 ..................................................................................19
`(a) Preamble – “An analog data generating and processing device
`(ADGPD)” .....................................................................................................19
`(b) First element – “an input/output (i/o) port;” .........................................20
`(c) Second element – “a program memory;” ..............................................20
`(d) Third element – “a data storage memory;” ...........................................21
`(e) Fourth element – a sensor designed to transmit data; ...........................21
`
`
`
`
`- i -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`
`
`
`(f) Fifth element – a processor operatively interfaced with the i/o
`port, the program memory, the data storage memory and the sensor; ..........22
`(g) Sixth element – “wherein the processor is adapted to be involved in
`a data generation process by which the sensor generates analog data, the
`analog data is processed, and the processed analog data is stored in the data
`storage memory as at least one file of digitized analog data” ............24
`(h) Seventh element ....................................................................................27
`(i) First part – “wherein the processor also is adapted to be
`involved in an automatic recognition process in which, when the i/o port
`is operatively interfaced with a multi-purpose interface of a computer, the
`processor executes at least one instruction set stored in the
`program memory and thereby causes at least one parameter which
`provides identification information regarding the ADGPD to be
`automatically sent through the i/o port and to the multi-purpose
`interface of the computer” ..........................................................................27
`(ii) Second part:........................................................................................29
`“(a) without requiring any end user to load any software onto the
`computer at any time” ................................................................................29
`“(b) without requiring any end user to interact with the computer to set
`up a file system in the ADGPD at any time” ...........................................29
`(iii) Third part – “(c) before a time when the computer is able
`to receive the at least one file of digitized analog data from the data
`storage memory” ........................................................................................30
`(iv) Fourth part – “(d) regardless of the identity of a manufacturer of the
`computer” ...................................................................................................31
`(v) Fifth part – “wherein the at least one parameter is consistent with the
`ADGPD being responsive to commands issued from a customary driver”
` ....................................................................................................................31
`(i) Eighth element – “wherein the processor is further adapted to be
`involved in an automatic file transfer process in which, when the i/o port is
`operatively interfaced with the multi-purpose interface of the computer, and
`after the at least one parameter has been received by the multi-purpose
`interface of the computer, the processor executes at least one other
`instruction set stored in the program memory and thereby causes the at least
`one file of digitized analog data to be transferred to the computer regardless
`of the identity of the manufacturer of the computer and without requiring
`
`- ii -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`any user-loaded file transfer enabling software to be loaded on or installed in
`the computer at any time” ..............................................................................32
`2. Claim 2 – The ADGPD of claim 1, wherein the i/o port, the program
`memory, the data storage memory, and the processor form an interface device
`that is designed to have the analog data transferred to it from the sensor. .......36
`3. Claim 7 - The ADGPD of claim 2, wherein the interface device includes a
`parallel logic circuit ...........................................................................................36
`4. Claims 9, 11, 12, 21, 23, 24 ........................................................................37
`5. Claims 17-20, 71-74 ...................................................................................38
`6. Claim 25 - The ADGPD of claim 1, wherein the sensor comprises a
`multimeter. ........................................................................................................41
`7. Claim 26 - The ADGPD of claim 1, wherein the sensor includes at least
`first and second transducers both of which are designed to transmit data ........41
`8. Claim 41 - The ADGPD of claim 1, wherein the program memory
`comprises electronically programmable read only memory .............................43
`9. Claims 50 and 51 ........................................................................................44
`10. Claim 56 - The ADGPD of claim 1, wherein the processor and the
`program memory are adapted to be configured to initiate a process by which
`the at least one file of digitized analog data stored in the data storage memory
`are directly transferred to an input/output device by means of the i/o port. .....45
`11. Claims 57, 75 and 76 ................................................................................47
`12. Claim 58 - The ADGPD of claim 1, wherein the ADGPD comprises at
`least a portion of a medical device ....................................................................50
`13. Claim 66 - The ADGPD of claim 1, wherein the analog data is, when the
`analog data generation process takes place, processed by being subject to a fast
`Fourier transform. ..............................................................................................51
`14. Claim 67 - The ADGPD of claim 1, wherein the processed analog data is
`stored in the data storage memory as only one file of digitized analog data. ...53
`15. Claims 68 and 70 ......................................................................................54
`16. Claim 69 - The ADGPD of claim 1, wherein the analog data generation
`and automatic file transfer processes, when they occur, at least partially
`overlap in time. ..................................................................................................56
`17. Claims 78 and 79 ......................................................................................58
`VI. Mandatory Notices Pursuant to 37 C.F.R. § 42.8(a)(1) ...................................... 59
`
`
`
`
`- iii -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`A. C.F.R. § 42.8(b)(1): Real Party-In-Interest ....................................................59
`B. C.F.R. § 42.8(b)(2): Related Matters ............................................................59
`C. C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and Service
`Information ...........................................................................................................63
`VII. Conclusion ..................................................................................................... 64
`
`- iv -
`
`
`
`
`
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`I.
`
`
`
`Introduction
`
`The ’144 patent specification describes an interface device designed to
`
`facilitate the transfer of data between an input/output (“i/o”) device and a host
`
`computer that allegedly obviates the need for installation of driver software on the
`
`computer. Ex. 1201 at 1:35-38; 7:17-26.
`
`The ’144 patent is owned by Papst Licensing GMBH & Co., KG (“Papst” or
`
`“Patent Owner”). The District Court judge in a litigation involving an ancestor of
`
`the ’144 patent described Papst by stating:
`
`Papst is a German company that produces no products; it acquires
`patents on products or methods allegedly invented by others and then
`searches the world for [products] it might challenge for infringement.
`At one of the first status conferences of the MDL, when the Court
`queried whether this was old fashion ‘claim-jumping,’ counsel for
`Papst readily agreed that it had been called worse. Of course, this is a
`perfectly lawful and respectable business. But it underscores that the
`business of Papst is litigation, not invention or production.
`Ex. 1202 (Memorandum Order of Judge Collyer) at 6 (emphasis in original).
`
`Papst acquired the patent family including the three earlier applications and
`
`two issued patents related to application no. 11/467,073 (“the ’073 application”)
`
`from which the ’144 patent issued nine years after the filing date of the earliest
`
`application in the chain. See USPTO Assignment Record executed Mar. 8, 2006, at
`
`17314-114. The ’073 application was filed and prosecuted entirely under Papst’s
`
`
`
`- 1 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`control during the pendency of patent infringement litigation filed by Papst against
`
`the Petitioner and others based on the two earlier issued patents. During prosecution
`
`of the ’073 application, Papst presented fourteen amendments, ultimately achieving
`
`issuance in 2015 after a victory over the Examiner on appeal.
`
`During prosecution of the ’073 application, through a strategy including
`
`aggressive preliminary amendments prior to examination, Papst chose to bring
`
`only certain prior art to the Examiner’s attention, while burying other highly
`
`relevant prior art. Papst focused the Examiner on digital camera prior art, even
`
`though none of the claims is restricted to digital cameras. Papst presumably did
`
`this because it is targeting digital cameras in litigation, and despite the fact that the
`
`’144 patent specification does not contain a single reference to digital cameras.
`
`Papst’s focus on camera prior art over the course of eight interviews and
`
`well over 100 pages of arguments resulted in the Examiner citing digital camera
`
`prior art almost exclusively in his examination. Papst’s preoccupation with camera
`
`prior art is evidenced in the Examiner’s Answer on Appeal, where the Examiner
`
`characterized the “invention,” stating:
`
`[B]ased on the eight interviews preceding appellant’s instant appeal
`brief, appellant consistently discloses that the claimed ADGPD is
`functioning as a plug and play camera peripheral device that
`communicate [sic] with a connected host without any user loading
`
`
`
`- 2 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`of a driver, wherein the communication is to emulate a hard disk
`drive for transferring data with the connected host.
`Ex. 1203 – Examiner’s Answer of 9/8/2010 at 59 (emphasis in original).
`
`
`
`As a result, the Examiner did not focus on certain highly relevant prior art.1
`
`Based on the presented grounds, the Board should institute Inter Partes Review of
`
`the ’144 patent and cancel the challenged claims.
`
`II. Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’144 patent is available for inter partes review and
`
`that Petitioner is not barred or estopped from requesting an inter partes review on the
`
`grounds identified in the Petition because, pursuant to 37 C.F.R. § 42.122(b), this
`
`Petition is being filed, concurrently with a Motion for Joinder with instituted trial in
`
`IPR2016-01216, within one month of the institution date of IPR2016-01216.
`
`III. Background Information for ’144 Patent
`
`A. Overview of the ’144 Patent Family and Prosecution History
`
`The ’073 application was filed on August 24, 2006, and issued almost nine
`
`years later on February 24, 2015. The ’144 patent stems from the fourth application
`
`filed in a family of seven U.S. non-provisional applications. The ’144 patent’s
`
`written description describes a device designed to facilitate the transfer of data
`
`
`1 Some of this relevant art was buried in the more than 600 references
`
`submitted to the Examiner via IDSs.
`
`
`
`
`
`- 3 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`between a data transmit/receive device from which data is to be acquired and a
`
`host computer. Ex. 1201 at 1:18-22. The written description states that, while
`
`interface devices were known at the time of the invention, existing devices had
`
`limitations, including disadvantageous sacrifices of data-transfer speed or of
`
`flexibility as to which computers and data devices they were compatible. Id. at
`
`1:26-2:19. The ’144 patent purports to describe an interface device to overcome
`
`these limitations.
`
`When a computer detects that a new device has been connected to one of its
`
`input-output (i/o) ports, a normal course of action includes these steps: the host
`
`asks the new device what type of device it is; the connected device responds; the
`
`host determines whether it already possesses drivers for the identified type of
`
`device; and if it does not, an appropriate driver must be installed on the host and
`
`loaded into memory before proceeding. In the ’144 patent family, when the
`
`interface device is connected between a data transmit/receive device and a host, the
`
`interface device responds to the host’s request for identification by stating that it is
`
`a type of device, such as a hard drive, for which the computer already has a driver.
`
`By mis-identifying itself to the host as to the type of device the host is
`
`communicating with, the interface device induces the host to treat it like a device
`
`already familiar to the host. Thereafter, when the host communicates with the
`
`interface device to request data from or control the operation of the data device, the
`
`
`
`- 4 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`host uses its customary device driver, and the interface device translates the
`
`communications into a form understandable by the connected data device. Ex.
`
`1204, ¶¶32-34; Ex. 1201 at 3:29-4:41.
`
`
`
`
`
`
`
`FIG. 1 is a block diagram of the interface device that includes a first connecting
`
`device 12 for connecting to the host computer and a second connecting device 15 for
`
`connecting to the data transmit/receive device. A digital signal processor 13 and a
`
`memory 14 manage communications between the computer and the data
`
`transmit/receive device. Ex. 1201 at 4:62-5:10. See also, Ex. 1204, ¶¶21-38.
`
`The prosecution history of the ’144 patent was lengthy, with Papst cancelling
`
`all of the pending claims seven times, replacing them with new sets of claims. See
`
`Office Action Responses of 7/17/07; 8/8/07; 12/18/07; 5/2/08; 8/18/08; 9/12/08; and
`
`8/13/09. Eight interviews were held, and over the course of the 14 responses
`
`
`
`- 5 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`submitted by Papst, 131 pages of arguments were piled on the Examiner, mostly
`
`arguing why certain camera-based prior art did not render the claims obvious.
`
`Based on Papst’s focus on digital camera prior art and burying of relevant
`
`references in a pile of over 600, the Examiner was diverted from focusing on
`
`certain highly relevant prior art to the claims of the ’144 patent. The Board
`
`ultimately issued the patent because the cited references failed to show: “a
`
`peripheral processor which executes an instruction set causing identification
`
`information to be sent to a host processor, as set forth in independent claims 237,
`
`321, and 323.” Ex. 1203 at p 252.
`
`IV.
`
`Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b)
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes Review Is
`Requested
`
`A.
`
`Claims 7, 9, 11-12, 17-21, 23-26, 41, 50-51, 56-58, 66-76, 78-79 are
`
`challenged in this Petition.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds on
`Which the Challenge to the Claims Is Based
`Inter Partes review is requested in view of the following prior art references:
`
`•
`
`JP H4-15853 to Kawaguchi (“Kawaguchi”) (Exhibit 1206/1210).
`
`Kawaguchi discloses a SCSI device converter for connecting a PC
`
`peripheral device to a SCSI interface on an engineering workstation.
`
`
`
`- 6 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`Kawaguchi was filed on May 9, 1990 and published on January 21, 1992,
`
`and is prior art to the ’144 patent under 35 U.S.C. § 102(b).
`
`• U.S. Patent No. 5,684,607 to (“Matsumoto”) (Exhibit 1207).
`
`Matsumoto discloses a facsimile apparatus connected to a host
`
`computer via SCSI. Matsumoto was filed on November 4, 1994, and
`
`issued on November 4, 1997, and is prior art to the ’144 patent under 35
`
`U.S.C. §§ 102(a) and/or 102(e).
`
`• The DASM-AD14 product brochure (DASM-AD14) (Exhibit 1208).
`
`DASM-AD14 discloses an A/D converter that attaches to a host computer
`
`via SCSI and emulates a disk drive. DASM-AD14 is a data sheet for the
`
`DASM-AD14 product dated 1992. The DASM-AD14 product was
`
`available for purchase in 1992, as evidenced by the Digital Equipment
`
`Corporation Shippable Products Catalog, submitted as Exhibit 1214 at
`
`page 23. Because the DASM-AD14 Product Brochure was freely
`
`available to the public five years prior to the earliest possible priority data
`
`of the patent at issue, the DASM-AD14 Product Brochure is a publication
`
`under 35 U.S.C. §102(b). DASM-AD14 was published in March 1992
`
`and is prior art to the ’144 patent under 35 U.S.C. § 102(b).
`
`•
`
`JP H5-344283 to Takahashi (“Takahashi”) (Exhibit 1209/1211).
`
`Takahashi discloses a scanning device that attaches to a host computer via
`
`
`
`- 7 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`SCSI. Takahashi was filed on June 11, 1992 and published on December
`
`24, 1993, and is prior art to the ’144 patent under 35 U.S.C. § 102(b).
`
`• U.S. Patent No. 5,592,256 to Muramatsu (“Muramatsu”) (Exhibit 1212).
`
`Muramatsu discloses a camera photometric device that implements a fast
`
`Fourier transform during the analog data generation process. Muramatsu
`
`was filed on May 29, 1996, and issued on January 7, 1997, and is prior art
`
`to the ’144 patent under 35 U.S.C. § 102(b).
`
`• U.S. Patent No. 5,724,155 to Saito (“Saito”) (Exhibit 1213). Saito
`
`discloses an electronic imaging system for capturing image data and
`
`filing the image data over a personal computer network via SCSI. Saito
`
`was filed on December 30, 1994, and issued on March 3, 1998, and is
`
`prior art to the ’144 patent under 35 U.S.C. § 102(a) and/or 102(e).
`
`• AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American National
`
`Standard for Information Systems – Small Computer System Interface-2,
`
`ANSI X3.131-1994 (1994) (Exhibit 1204, Appendix A-4, “the SCSI
`
`Specification”). The SCSI Specification was published in 1991 and is
`
`prior art to the ’144 patent under 35 U.S.C. § 102(b). Citations to the
`
`SCSI Specification refer to the original page numbers.
`
`The specific statutory grounds on which the challenge to the claims is based
`
`and the prior art relied upon for each ground are as follows:
`
`
`
`- 8 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`
`
`a) Claims 7, 9, 11, 12, 17-21, 23-25, 41, 50, 51, 56-58, 66-76, 78, and 79 are
`
`unpatentable under 35 U.S.C. § 103(a) over Kawaguchi, Matsumoto, the SCSI
`
`Specification, and the Admitted Prior Art (AAPA);
`
`b) Claim 26 is unpatentable under 35 U.S.C. § 103(a) over Kawaguchi,
`
`Matsumoto, the SCSI Specification, and AAPA with or without Takahashi;
`
`
`
`c) Claims 57, 68-70, 75, and 76 are unpatentable under 35 U.S.C. § 103(a)
`
`over Kawaguchi, Matsumoto, DASM-AD14, the SCSI Specification, and AAPA.
`
`
`
`d) Claims 41, 50, 51, 56, 78, and 79 are unpatentable under 35 U.S.C. §
`
`103(a) over Kawaguchi, Matsumoto, Saito, the SCSI Specification, and AAPA.
`
`
`
`e) Claim 66 is unpatentable under 35 U.S.C. § 103(a) over Kawaguchi,
`
`Matsumoto, Muramatsu, the SCSI Specification, and AAPA.
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`C.
`Claims are to be given their “broadest reasonable construction in light of the
`
`specification.” 37 C.F.R. § 42.100(b). The constructions proposed below are
`
`intended to aid in this proceeding, and should not be understood as waiving any
`
`arguments that may be raised in any litigation. Further, because the standard for
`
`claim construction at the Patent Office is different from that used during a U.S.
`
`District Court litigation, see In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
`
`
`
`- 9 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`1364, 1369 (Fed. Cir. 2004); MPEP § 2111, Petitioner expressly reserves the right
`
`to argue a different claim construction in litigation for any term of the ’144 patent.
`
`For purposes of this proceeding only, and without conceding that these are
`
`the correct constructions under the standard that controls in the litigation, Petitioner
`
`proposes adopting the claim constructions presented by Papst in related litigation in
`
`the District of Columbia: Misc. Action No. 07-493 (RMC); MDL No. 1880 (Ex.
`
`Adopted BRI
`“process by which the computer
`
`recognizes the ADGPD upon connection
`
`with the computer without requiring any
`
`user intervention other than to start the
`
`
`
`
`
`process”
`
`1205), as follows:
`
`
`
`Claim Term
`“automatic recognition process”
`
`
`
`- 10 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`“without requiring the end user to install
`
`or load specific drivers or software for
`
`
`
`“without requiring any end user to load
`
`any software onto the [first/second]
`
`computer at any time”
`
`the
`
`[ADGPD/analog data acquisition
`
`device/analog data
`
`acquisition
`
`and
`
`“without requiring any user-loaded file
`
`interface device] beyond that included in
`
`transfer enabling software to be loaded
`
`the operating system or BIOS”
`
`
`
`
`
`
`
`
`
`on or installed in the computer at any
`
`“any kind of microprocessor, including a
`
`digital signal processor”
`
`
`
`time”
`
`“processor”
`
`
`
`In addition to the above terms, Petitioner proposes the following construction
`
`as the broadest reasonable interpretation:
`
`“customary driver”
`
`“driver normally part of
`
`commercially available computer
`
`systems at the time of
`
`the invention”
`
`In the related district court litigation, Petitioner and Papst disagree as to
`
`
`
`whether the phrase “at the time of the invention” should be included as part of the
`
`construction. It is a fundamental notion of patent law, however, that “[a] claim
`
`
`
`- 11 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`cannot have different meanings at different times; its meaning must be interpreted
`
`as of its effective filing date.” PC Connector Solutions. LLC v. SmartDisk Corp.,
`
`406 F.3d 1359, 1363 (Fed. Circ. 2005); see also Phillips v. AWH Corp., 415 F.3d
`
`1303, 1333 (Fed. Cir. 2005) (“the ordinary and customary meaning of a claim term
`
`is the meaning….at the time of the invention, i.e., as of the effective filing date of
`
`the patent application.”).
`
`D.
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable
`An explanation of how the Challenged Claims are unpatentable, including
`
`identification of how each claim feature is found in the prior art, is set forth below in
`
`Section V.
`
`E.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`An Appendix of Exhibits supporting this Petition is attached. Included at
`
`Exhibit 1204 is a Declaration of Dr. Paul F. Reynolds under 37 C.F.R. § 1.68. In
`
`addition, the relevance of the evidence to the challenged claims, including an
`
`identification of the specific portions of the evidence supporting the challenge,
`
`is included in Section V.
`
`V.
`
`There Is a Reasonable Likelihood That The Challenged Claims Are
`Unpatentable
`
`A.
`
`Prior Art
`
`1.
`
`Kawaguchi
`
`
`
`
`
`- 12 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`As illustrated in Fig. 1 shown below, Kawaguchi discloses a SCSI device
`
`converter (3) having a SCSI interface (7) for connecting a peripheral device (4, 5, 6)
`
`to a SCSI interface (2) on an engineering workstation (EWS (1)). The SCSI device
`
`converter (3) inputs and outputs data to the SCSI interface (2) of an EWS using the
`
`same standards as a SCSI interface for a hard disk. The SCSI device converter
`
`communicates with the EWS’s SCSI hard disk driver and emulates a hard disk. Data
`
`from peripheral devices is retrieved by the control unit (16) via the device interfaces
`
`(8, 9, 10), converted into SCSI standard data by a code converting unit (15), and
`
`stored in data reading units (12, 14) from which the EWS can retrieve the data. An
`
`A/D converter (19) may also be installed to receive analog data from an analog
`
`device (18) such as a sensor. Data from the EWS to peripheral devices is written to
`
`data writing units (11, 13) and transferred by the control unit to the peripheral
`
`devices via the device interfaces. See Ex. 1204, ¶¶41-51.
`
`
`
`- 13 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`
`
`
`2. Matsumoto
`
`
`
`Matsumoto discloses that a “facsimile apparatus having a scanner for reading
`
`original images, a memory for storing images, a printer for recording images, and a
`
`communication control section for controlling the transmission/reception of data
`
`with a receiving communication apparatus is connected to a host computer via a
`
`small computer system interface (SCSI).” Ex. 1208, Abstract. Matsumoto also
`
`discloses that a “file management section 10 manages documents created inside a
`
`facsimile apparatus . . . [wherein the] operation for entering and storing a file is
`
`
`
`- 14 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`performed by the file management section 10.” Ex. 1208, 3:20-22, 5:55-56. See
`
`also, Ex. 1204, ¶¶52-59.
`
`
`
`3.
`
`Kawaguchi and Matsumoto Are Properly Combinable
`
`Both Kawaguchi and Matsumoto provide teachings, suggestions, and
`
`
`
`motivations to combine their respective disclosures with one another because, inter
`
`alia, they both teach interfacing a peripheral device to a host computer using SCSI.
`
`Given the similarities of their subject matter and teachings, a person of ordinary skill
`
`in the art (POSA) at the time of the invention would have been motivated to
`
`
`
`- 15 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`combine features of each reference to provide the advantages achieved by those
`
`added features. Ex. 1204, ¶¶85-91,113-137,141,151-158,196-197,202,226-227,239.
`
`For example, combining file management features taught by Matsumoto to
`
`the Kawaguchi system to allow processed analog data to be stored in the data
`
`storage memory as at least one file, to allow the processor to automatically send file
`
`system information to the host to enable the host to retrieve the at least one file, to
`
`allow an indication of the type of a file system that is used to store the at least one
`
`file of digitized analog data in the data storage memory, and to allow file allocation
`
`table information containing a start location of a file allocation table to be sent to the
`
`i/o port along with a virtual boot sequence that includes at least information that is
`
`representative of a number of sectors of a storage disk, would have been obvious.
`
`Organization and naming benefits can be achieved using a file system. Id.
`
`Combining these features and others2 is proper because (a) it involves
`
`combining prior art elements according to known methods to yield predictable
`
`results, (b) the combination results in a simple substitution of one known element for
`
`another to obtain predictable results, (c) the combination involves the use of a
`
`
`2 It is also proper to combine the sensor (facsimile device) feature, stand-alone
`
`device feature and the use of a cable to connect SCSI interfaces feature taught
`
`by Matsumoto in the Kawaguchi system for these reasons as well.
`
`
`
`
`
`- 16 -
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,966,144
`
`
`known technique to improve similar devices, methods, or products in the same way,
`
`(d) the combination involves applying a known technique to a known device,
`
`method, or product ready for improvement to yield predictable results, (e) the
`
`combination is obvious to try – it involves choosing from a finite number of
`
`identified, predictable solutions, with a reasonab