PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In the Inter Partes Review of U.S. Patent No. 8,504,746
`
`Trial No.: Not Yet Assigned
`
`Issued:
`
`August 6, 2013
`
`Filed:
`
`September 27, 2010
`
`Inventor: Michael Tasler
`
`Assignee: Papst Licensing GmbH & Co., KG
`
`Title:
`
`ANALOG DATA GENERATING AND PROCESSING DEVICE
`FOR USE WITH A PERSONAL COMPUTER
`
`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 1-12, 14-15, 17-21,
`
`23-31, 34-35 (the “Challenged Claims”) of U.S. Patent No. 8,504,746 (“the ’746
`
`patent”), attached hereto as Exhibit 1201.
`
`The undersigned representative of Petitioner authorizes the Patent Office to
`
`charge the $23,000 Petition Fee to Deposit Account 50-2428, ref: 111116.016200.
`
`30 claims are being reviewed, so $8,000 excess claim fees are due. The
`
`undersigned representative further authorizes payment for any additional fees that
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`may be due in connection with this Petition to be charged to the above-referenced
`
`Deposit Account.
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`I. 
`
`II. 
`
`Introduction ...................................................................................................... 1 
`
`Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a) ............................... 2 
`
`III.  Background Information for ’746 Patent ........................................................ 2 
`
`A.  Overview of the ’746 Patent Family and Prosecution History ............. 2 
`
`IV. 
`
`Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b) ...................... 5 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes
`Review Is Requested ............................................................................. 5 
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds
`on Which the Challenge to the Claims Is Based ................................... 5 
`
`37 C.F.R. § 42.104(b)(3): Claim Construction .................................... 8 
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable ........................................................................................ 10 
`
`E. 
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ................................ 10 
`
`V. 
`
`There Is a Reasonable Likelihood That The Challenged Claims of the
`’746 Patent Are Unpatentable ........................................................................ 10 
`
`A. 
`
`Prior Art ............................................................................................... 10 
`
`1. 
`
`Kawaguchi ................................................................................ 10 
`
`2.  Matsumoto ................................................................................ 12 
`
`3. 
`
`4. 
`
`Kawaguchi, Matsumoto, DASM-AD14, Takahashi,
`Saito, and Muramatsu are Properly Combinable ...................... 13 
`
`Level of Skill ............................................................................. 16 
`
`B. 
`
`Challenged Claims .............................................................................. 16 
`
`1. 
`
`2. 
`
`3. 
`
`Independent Claim 1 ................................................................. 16 
`
`Dependent Claim 2 ................................................................... 28 
`
`Dependent Claim 3 ................................................................... 28 
`
`-i-
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`Dependent Claim 4 ................................................................... 29 
`
`Dependent Claim 5 ................................................................... 30 
`
`Dependent Claim 6 ................................................................... 30 
`
`Dependent Claims 7, 8, 26 ........................................................ 32 
`
`Dependent Claim 9 ................................................................... 33 
`
`Dependent Claim 10 ................................................................. 35 
`
`10.  Dependent Claims 11, 12 .......................................................... 36 
`
`11.  Dependent Claim 14 ................................................................. 37 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`Dependent Claim 15 ................................................................. 38 
`
`Dependent Claims 17, 18 .......................................................... 39 
`
`Dependent Claim 19 ................................................................. 42 
`
`Dependent Claim 20 ................................................................. 44 
`
`Dependent Claims 21, 27 and 28 .............................................. 46 
`
`Dependent Claim 23 ................................................................. 49 
`
`Dependent Claim 24 ................................................................. 51 
`
`Dependent Claim 25 ................................................................. 53 
`
`Dependent Claim 29 ................................................................. 54 
`
`10.  Dependent Claim 30 ................................................................. 55 
`
`11. 
`
`12. 
`
`Independent Claim 31 ............................................................... 55 
`
`Independent Claim 34 ............................................................... 60 
`
`13.  Dependent Claim 35 ................................................................. 63 
`
`VI.  Mandatory Notices Pursuant to 37 C.F.R. § 42.8(a)(1) ................................ 64 
`
`-ii-
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`A. 
`
`B. 
`
`C. 
`
`C.F.R. § 42.8(b)(1): Real Party-In-Interest ........................................ 64 
`
`C.F.R. § 42.8(b)(2): Related Matters ................................................. 64 
`
`C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................. 71 
`
`VII.  Conclusion ..................................................................................................... 72 
`
`
`
`-iii-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`I.
`
`Introduction
`
`The ’746 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 1:37-40; 7:11-20.
`
`The ’746 patent is owned by Papst Licensing GmbH & Co., KG (“Papst” or
`
`the “Patent Owner”). The District Court judge in a litigation involving an ancestor
`
`of the ’746 patent described Papst by stating 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 five earlier applications and two issued patents related to application
`
`no. 12/891,443 (“the ’443 application”) from which the ’746 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 ’443 application
`
`was filed and prosecuted entirely under Papst’s control during the pendency of
`
`patent infringement litigation filed by Papst, in which litigation Papst now asserts
`
`the resulting ’746 patent.
`
`Filed in 2010, the ’443 application, issued in 2013. During prosecution of
`
`the ’443 application, Papst presented nearly 600 references for the Examiner to
`
`consider via Information Disclosure Statements — a near impossible task for a
`
`-1-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`tightly time constrained examination. 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 ’746 patent and cancel the challenged
`
`claims.
`
`II. Grounds for Standing Pursuant to 37 C.F.R. § 42.104(a)
`Petitioner certifies under 37 C.F.R. § 42.104(a) that the ’746 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, together with a
`
`Motion for Joinder, within one month of the institution date of inter partes review
`
`in IPR2016-01211, to which joinder is requested.
`
`III. Background Information for ’746 Patent
`A. Overview of the ’746 Patent Family and Prosecution History
`The ’443 application was filed on September 27, 2010, and issued almost
`
`three years later on August 6, 2013 as the ’746 patent. The ’746 patent stems from
`
`the last application filed in a family of seven U.S. non-provisional applications.
`
`The ’746 patent’s written description describes a device alleged to facilitate the
`
`transfer of data between a data transmit/receive device from which data is to be
`
`
`1 Some of this relevant art was buried in the nearly 600 references submitted to the
`
`Examiner via IDSs.
`
`-2-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`acquired and a host computer. Ex. 1201 at 1:20-24. 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 a lack of flexibility as to the computers and data devices with which they were
`
`compatible. Id. at 1:28-2:21. The ’746 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 ’746 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 misidentifying 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
`
`host uses its customary driver, and the interface device translates the
`
`-3-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`communications into a form understandable by the connected data device.
`
`Ex. 1004, ¶¶37-38, 64-84; Ex. 1201 at 3:28-4:38.
`
`
`
`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 4:59-5:7. See also, Ex. 1204, ¶¶21-
`
`36.
`
`The prosecution history of the ’746 patent spanned three Office Actions and
`
`corresponding responses. The final response before allowance included thirteen
`
`pages of arguments presenting a number of alleged reasons why the claims were
`
`allowable over the cited references. No amendments were made. A Notice of
`
`-4-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`Allowance was issued on June 7, 2013. The reasons for allowance stated: “The
`
`reasons for allowance of claims 2, 32, 33 and 35... in the instant application is that
`
`the examiner finds applicant’s arguments filed on 05/28/2013 are persuasive and
`
`that the combination of all the claimed limitations is neither anticipate[d] or
`
`render[ed] obvious by the prior art of record.” Thus, it is difficult to ascertain
`
`exactly which argument or claim limitation(s) were considered important to the
`
`Examiner’s decision.
`
`IV.
`
`Identification of Challenge Pursuant to 37 C.F.R. § 42.104(b)
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes Review Is
`Requested
`Inter partes review is requested for claims 1-12, 14-15, 17-21, 23-31, and
`
`34-35 of the ’746 patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds on
`Which the Challenge to the Claims Is Based
`
`The one-year time bar under pre-AIA 35 U.S.C. §102(b) is measured from
`
`the effective U.S. filing date of the ’746 patent, which is March 3, 1998, the date of
`
`the PCT application to which the ’746 patent claims priority (PCT/EP98/01187).
`
`Inter partes review is requested in view of the following prior art references:
`
`
`
`JP H4-15853 to Kawaguchi (“Kawaguchi”) (Exhibit 1006).
`
`Kawaguchi was filed on May 9, 1990 and published on January 21,
`
`1992, and is prior art to the ’746 patent under 35 U.S.C. § 102(b).
`
`-5-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`
`
`U.S. Patent No. 5,684,607 to (“Matsumoto”) (Exhibit 1007).
`
`Matsumoto was filed on November 4, 1994, and issued on
`
`November 4, 1997, and is prior art to the ’746 patent under 35 U.S.C.
`
`§§ 102(a) and/or 102(e).
`
`
`
`The DASM-AD14 product brochure (DASM-AD14) (Exhibit 1008).
`
`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 ’746 patent under 35 U.S.C. § 102(b).
`
`
`
`JP H5-344283 to Takahashi (“Takahashi”) (Exhibit 1009). Takahashi
`
`was filed on June 11, 1992 and published on December 24, 1993, and
`
`is prior art to the ’746 patent under 35 U.S.C. § 102(b).
`
`
`
`U.S. Patent No. 5,592,256 to Muramatsu (“Muramatsu”)
`
`(Exhibit 1012). Muramatsu was filed on May 29, 1996, and issued on
`
`-6-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`January 7, 1997, and is prior art to the ’746 patent under 35 U.S.C.
`
`§ 102(b).
`
`
`
`U.S. Patent No. 5,724,155 to Saito (“Saito”) (Exhibit 1013). Saito
`
`was filed on December 30, 1994, and issued on March 3, 1998, and is
`
`prior art to the ’746 patent under 35 U.S.C. § 102(a) and/or 102(e).
`
`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:
`
`a)
`
`Claims 1-12, 14-15, 17-19, 26, 29-31, 34-35 are anticipated by
`
`Kawaguchi;
`
`b)
`
`Claims 1-12, 14-15, 17-19, 26, 29-31, 34-35 are unpatentable under
`
`35 U.S.C. § 103(a) over Kawaguchi in view of Matsumoto;
`
`c)
`
`Claim 14 is unpatentable under 35 U.S.C. § 103(a) over Kawaguchi in
`
`view of Matsumoto and Takahashi;
`
`d)
`
`Claims 21, 24-25, 27-28 are unpatentable under 35 U.S.C. § 103(a)
`
`over Kawaguchi in view of Matsumoto and DASM-AD14;
`
`e)
`
`Claim 20 is unpatentable under 35 U.S.C. § 103(a) over Kawaguchi in
`
`view of Matsumoto and Saito; and
`
`f)
`
`Claim 23 is unpatentable under 35 U.S.C. § 103(a) over Kawaguchi in
`
`view of Matsumoto, Saito, and Muramatsu.
`
`
`
`-7-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`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,
`
`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 ’746 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. 1005), as follows:2
`
`Claim Term
`
`Adopted BRI
`
`“without requiring any end user to load
`
`“without requiring the end user to install
`
`any software onto the [first/second]
`
`or load specific drivers or software for
`
`The [ADGPD/analog data acquisition
`
`
`2 Petitioner has proposed separate constructions in the district court proceeding.
`
`-8-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`computer at any time”
`
`device/analog data acquisition and
`
`“without requiring any user-loaded file
`
`transfer enabling software to be loaded
`
`on or installed in the [computer/host
`
`device] [at any time]”
`
`“whereby there is no requirement for
`
`any user-loaded file transfer enabling
`
`software to be loaded on or installed in
`
`the computer in addition to the
`
`operating system”
`
`“processor”
`
`interface device] beyond that included
`
`in the operating system or BIOS”
`
`“any kind of microprocessor, including
`
`a digital signal processor”
`
`In addition, in the Decision Instituting Inter Partes Review in IPR 2016-
`
`01211, to which joinder is requested, the Board introduced the following
`
`construction:
`
`Claim Term
`
`Construction in IPR 2016-01211
`
`“analog signal acquisition channel”
`
`“part of the analog acquisition device,
`
`and its processor implements the
`
`-9-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`process by which analog data is
`
`received through the analog signal
`
`acquisition channel from the claimed
`
`analog source”
`
`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.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`E.
`An Appendix of Exhibits supporting this Petition is attached. Included at
`
`Exhibit 1004 is a Declaration of Dr. Paul F. Reynolds (“Reynolds Decl.”) 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 of the
`’746 Patent Are Unpatentable
`A.
`
`Prior Art
`1. Kawaguchi
`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,
`
`-10-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`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.
`
`-11-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`
`
`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 performed by the file management section 10.”
`
`Ex. 1208, 3:20-22, 5:55-56. See also, Ex. 1204, ¶¶52-59.
`
`-12-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`
`3. Kawaguchi, Matsumoto, DASM-AD14, Takahashi, Saito,
`and Muramatsu 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) would be motivated to combine features of each reference
`
`to provide the advantages achieved by those added features.
`
`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
`
`-13-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`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.
`
`DASM-AD14 discloses an A/D converter that attaches to a host computer
`
`via SCSI and emulates a disk drive. Takahashi discloses a scanning device that
`
`attaches to a host computer via SCSI. Saito discloses an electronic imaging system
`
`for capturing image data and filing the image data over a personal computer
`
`network via SCSI. Each of the references provides teachings, suggestions and
`
`motivations to combine their respective disclosures with Kawaguchi and
`
`Matsumoto and with one another.
`
`Combining the features of Matsumoto discussed above and others3, as well
`
`as combining the teachings of DASM-AD14, Takahashi, and Saito with
`
`3 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.
`
`-14-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`Kawaguchi and each other 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 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 reasonable expectation of success, and
`
`(f) the combination is proper because known work in one field of endeavor may
`
`prompt variations of it for use in either the same field or a different one based on
`
`design incentives or other market forces because the variations are predictable to
`
`one of ordinary skill in the art. Id.
`
`In summary, each of the references disclose using standard SCSI commands
`
`and/or drivers for the host to communicate with the relevant target device. Given
`
`the similarities of their subject matter and teachings, it would have been readily
`
`apparent and obvious to one skilled in the art to combine the teachings of each of
`
`the references. Id., ¶¶85-91.
`
`-15-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`Level of Skill
`
`4.
`A person of ordinary skill in the field, at the time the ’144 patent was
`
`effectively filed, possessed a working knowledge of devices such as
`
`microprocessors, hard disks, and computer interfaces such as SCSI. Ex. 1204, ¶39.
`
`He or she would also be familiar with associated software, including MS-DOS, MS
`
`Windows 95, UNIX and SCSI software modules and drivers, associated file
`
`systems (e.g., FAT), and device drivers. Ex. 1204, ¶39. A person of ordinary skill
`
`at the relevant time (1996-1998) would have had at least a four-year degree in
`
`electrical engineering, computer science, or related field of study, or equivalent
`
`experience, and at least two years’ experience in studying or developing computer
`
`interfaces or peripherals. Ex. 1204, ¶¶39-40.
`
`
`
`B. Challenged Claims
`1.
`Independent Claim 1
`(a) Preamble
`(i)
`First part — “An analog data acquisition device
`operatively connectable to a computer through
`a multipurpose interface of the computer”
`
`Kawaguchi discloses “a SCSI device converter comprising: a SCSI
`
`interface connected to a SCSI interface in an engineering workstation (EWS) ... a
`
`device interface for connecting a peripheral device ... [and] a control unit for
`
`controlling the transmission/reception of data between the EWS and the peripheral
`
`-16-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`device ...” Ex. 1207, claim 1. Kawaguchi further discloses that the “EWS
`
`includes, as a standard interface, a SCSI interface used to connect hard disks and
`
`magnetic disk drives.” Id. at 3. The Kawaguchi SCSI device converter in
`
`cooperation with the connected peripheral devices forms an analog data acquisition
`
`device that is operatively connectable to a computer (i.e., EWS) through a
`
`multipurpose interface (i.e., SCSI interface) of the computer. Ex. 1204, ¶¶92-99.
`
`(ii) Second part — “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:”
`
`As recited in Kawaguchi: “The following is an explanation of the operations
`
`performed by a SCSI driver (software) of the EWS (1) ... The SCSI driver of the
`
`EWS has been developed as a driver for connecting a hard disk. Therefore, the
`
`apparatus in the present invention [i.e., the SCSI device converter] operates in a
`
`manner emulating the hard disk. This processing procedure is performed
`
`according to a flowchart shown in FIG. 2. In this flowchart, steps from ‘Start’ to
`
`‘Mode Sense’ represent an initialization process for a hard disk, ‘Inquiry’
`
`represents reporting of attribute information of a target and logical units
`
`(identification code of a device type), ... In this way, the writing units and reading
`
`-17-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`units (11) (12) (13) (14) can be activated for the EWS (1). After the initialization
`
`process, the EWS (1) performs writing to or reading from the writing units and
`
`reading units (11) (12) (13) (14).” Ex. 1207, p. 7. Kawaguchi discloses that the
`
`EWS has an operating system that is programmed to automatically activate its hard
`
`disk driver to allow data transfer with the SCSI device converter’s writing and
`
`reading units after receiving a response to the inquiry command through the
`
`EWS’s SCSI interface indicating that hard disks are attached. Ex. 1204, ¶¶64-72,
`
`85-91.
`
`(b) First element — a program memory;
`Kawaguchi recites that “the SCSI device converter (3) also implements a
`
`data writing unit (11), a data reading unit (12), a control data writing unit (13), an
`
`interrupt data reading unit (14), a code converting unit (15), a control unit (16) and
`
`an interrupt control unit (17) by using a microcomputer, ROM and RAM.”
`
`Ex. 1207, p. 5. The ROM and RAM provide program memory for the
`
`microcomputer. Ex. 1204, ¶¶100-102.
`
`(c)
`
`Second element — an analog signal acquisition
`channel for receiving a signal from an analog source;
`
`As illustrated in Fig. 1, Kawaguchi discloses a plurality of analog signal
`
`acquisition channels: an I/O interface (9) for receiving a signal from Input device
`
`5 and a channel that includes A/D converter (19) for “receiv[ing] analog data from
`
`an analog device (18) such as a sensor.” Ex. 1207, p. 5 and Fig. 1. The Sensor 18
`
`-18-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`connected to A/D 19 and the Input device 5 connected to Device interface 9 are all
`
`analog sources — they all generate analog data that is then digitized. Ex. 1204,
`
`¶¶103-104.
`
`(d) Third element — “a processor operatively interfaced
`with the multipurpose interface of the computer, the
`program memory, and a data storage memory when
`the analog data acquisition device is operational;”
`
`Kawaguchi discloses a microcomputer, program memory, and data storage
`
`memory within the SCSI device controller 3: “the SCSI device converter (3) also
`
`implements a data writing unit (11), a data reading unit (12), a control data writing
`
`unit (13), an interrupt data reading unit (14), a code converting unit (15), a control
`
`unit (16) and an interrupt control unit (17) by using a microcomputer, ROM and
`
`RAM.” Ex. 1207, p. 5. A microcomputer is a processor. Ex. 1204, ¶106.
`
`Kawaguchi discloses a processor (microcomputer), program memory (ROM and
`
`RAM), and data storage memory (RAM).
`
`Because a microcomputer inherently and implicitly executes program
`
`instructions which are stored in program memory such as ROM and/or RAM and
`
`inherently and implicitly stores data in data storage memory such as RAM,
`
`Kawaguchi discloses that when the analog data acquisition device (SCSI device
`
`converter) is operational, the processor is operatively interfaced with the program
`
`memory and a data storage memory. Ex. 1204, ¶¶105-107.
`
`-19-
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,504,746
`
`Kawaguchi discloses that “the control unit (16) controls the data
`
`transmission/reception between the EWS and the peripheral devices.” Ex. 1207,
`
`p. 5. Because the control unit (16) is implemented using a processor
`
`(microcomputer), Kawaguchi also discloses that when the analog data acquisition
`
`device (SCSI device converter) is operational the processor is operatively
`
`interfaced with the multipurpose interface of the computer (SCSI interface 2 of the
`
`EWS). Ex. 1204, ¶¶105-107.
`
`(e) Fourth element — “wherein
`is
`the processor
`configured and programmed to implement a data
`generation process by which analog data is acquired
`from the analog signal acquisition channel, the analog
`data is processed and digitized, and the processed and
`digitized analog data is stored in a file system of the
`data storage memory as at least one file of digitized
`analog data”
`
`Kawaguchi discloses that sensor 18 generates analog data that are received
`
`and processed by the A/D 19: “For example, an A/D converter (19) may be
`
`installed to receive analog data from an analog device (18) such as a sensor.”
`