Trials@uspto.gov
`Tel: 571-272-7822
`
`
` Paper 7
`
` Entered: July 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00711
`Patent 8,966,144 B2
`_______________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`IPR2017-00711
`Patent 8,966,144 B2
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`I.
`
`INTRODUCTION
`
`ZTE (USA) Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 2, 16, 26, 28, 31, 41, 72, 80, 83, 86, and 87 (“the
`challenged claims”) of U.S. Patent No. 8,966,144 B2 (Ex. 1001, “the ’144
`patent”). Paper 1 (“Pet.”). Papst Licensing GmbH & Co., KG (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons set forth
`below, we determine that, on this record, Petitioner has not established a
`reasonable likelihood that it would prevail with respect to any of the
`challenged claims. We hereby decline to institute an inter partes review in
`this proceeding.
`
`A. Related Matters
`The parties indicate that the ’144 patent is involved in Papst Licensing
`GmbH & Co. KG v. ZTE Corp. et al., No. 6:15-cv-1100 (E.D. Tex.) and
`other proceedings. Pet. 2–3, 5 n.1; Paper 4, 2–5.
`
`B. The ’144 Patent
`
`The ’144 patent describes interface devices for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1001, 1:18–22,
`1:54–57. According to the ’144 patent, using a specific driver to match very
`closely to an individual host system would achieve high data transfer rates
`across the interface, but the specific driver cannot be used with other host
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`IPR2017-00711
`Patent 8,966,144 B2
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`systems. Id. at 2:4–19. Several solutions to this problem were known in the
`art. Id. at 2:20–3:25. For example, IOtech introduced an interface device
`for laptops, using a plug-in card for converting the personal computer
`memory card association (“PCMCIA”) interface into a known standard
`interface (IEEE 1284). Id. at 2:23–29. The plug-in card provided a printer
`interface for enhancing data transfer rates. Id. at 2:29–33. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:10–14. The interface appeared as a floppy
`disk drive to the host, allowing a floppy disk drive and another peripheral
`device to be connected to the host device. Id. at 3:17–19. The ’144 patent
`indicates that its “invention is based on the finding that both a high data
`transfer rate and host device-independent use can be achieved if a driver for
`an input/output device customary in a host device” is utilized. Id. at 3:33–
`37. Figure 1 of the ’144 patent, reproduced below, illustrates a block
`diagram of an interface device.
`
`As shown in Figure 1 above, interface device 10 connects to a host
`device via host line 11, and to a data transmit/receive device via output line
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`IPR2017-00711
`Patent 8,966,144 B2
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`16. Id. at 4:62–5:10. Interface device 10 includes first connecting device
`12, second connecting device 15, digital signal processor 13, and memory
`means 14. Id. In a preferred embodiment, the interface device is attached to
`a host device via a multi-purpose interface—e.g., a small computer systems
`interface (“SCSI”) interface—which includes both an interface card and the
`driver for the interface card. Id. at 3:51–57, 8:42–46. According to the ’144
`patent, SCSI interfaces were known to be present on most host devices or
`laptops. Id. at 8:42–46. By using a standard interface of a host device and
`by simulating an input/output device to the host device, the interface device
`“is automatically supported by all known host systems without any
`additional sophisticated driver software.” Id. at 11:38–44.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 86 are independent. Claims 2,
`16, 26, 28, 31, 41, 72, 80, and 83 depend directly or indirectly from claim 1;
`and claim 87 depends from claim 86. Claim 1 is illustrative and is
`reproduced below:
`1. An analog data generating and processing device (ADGPD),
`comprising:
`an input/output (i/o) port;
`a program memory;
`a data storage memory;
`a sensor designed to transmit data;
`a processor operatively interfaced with the i/o port, the
`program memory, the data storage memory and the sensor;
`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
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`analog data; 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 (a) without requiring
`any end user to load any software onto the computer at any time,
`(b) without requiring any end user to interact with the computer
`to set up a file system in the ADGPD at any time, (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, and
`(d) regardless of the identity of a manufacturer of the computer,
`wherein the at least one parameter is consistent with the ADGPD
`being responsive to commands issued from a customary driver;
`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 any user-loaded file transfer enabling software to be
`loaded on or installed in the computer at any time.
`Ex. 1001, 11:56–12:36.
`
`
`Asserted Ground of Unpatentability
`D.
`Petitioner asserts the single ground that the challenged claims are
`unpatentable, as anticipated under 35 U.S.C. 102(b)1 by Patent Cooperation
`
`
`1 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
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`Patent 8,966,144 B2
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`Treaty (“PCT”) Application Publication No. WO 98/39710 (“the PCT
`Publication,” Ex. 1008).2
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this
`Decision, we do not find it necessary to construe any claim term.
`
`B. Whether Tasler’s PCT Publication is Prior Art
`On its face, the ’144 patent claims under 35 U.S.C. §§ 120 and 365(c),
`through a series of continuation applications, the benefit of at least the filing
`date—March 3, 1998—of International Application No. PCT/EP98/01187
`(“the PCT ’187 application”) that entered the national stage on June 14,
`1999, U.S. Patent Application No. 09/331,002 (“the ’002 application”), after
`compliance with 35 U.S.C. § 371. Ex. 1001, [30], [60]; see Ex. 3001, [21],
`
`
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 102(b) in this Decision. See Pet. 5.
`2 Citations to the PCT Publication are to its English translation (Ex. 1004).
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`[22], [86]. The PCT ’187 application was published on September 11, 1998,
`as International Patent Publication No. WO 98/39710 (Ex. 1004), which is
`the PCT Publication upon which Petitioner relies in its single asserted
`ground of unpatentability (Pet. 1, 5). The ’144 patent lists the following
`benefit claims:
`Continuation of application No. 11/078,778, filed on Mar. 11,
`2005, now abandoned, and a continuation of application No.
`10/219,105, filed on Aug. 15, 2002, now Pat. No. 6,895,449,
`which is a division of application No. 09/331,002, [which is the
`national stage of PCT/EP98/01187, filed on Mar. 3, 1998,] filed
`on Jun. 14, 1999, now Pat. No. 6,470,399.
`Ex. 1001, [60] (emphases added); see Ex. 3001, [21], [22], [86].
`In its Petition, Petitioner argues that “the patentee failed to perfect its
`claim of priority [through] all of the intervening applications.” Pet. 7–8. In
`particular, Petitioner contends that, in U.S. Patent Application No.
`11/078,778 (“the ’778 application”), Applicant “failed to claim priority to
`the earlier-filed U.S. Patent Application No. 09/331,002” because Applicant
`did not submit a specific reference to the earlier-filed application in the
`Patent Application Utility Transmittal, the first sentence of the specification
`following the title, or an Application Data Sheet, during the course of
`prosecution of the ’778 application, as required by 35 U.S.C. § 120. Id. at 8
`(citing Ex. 1003, 1). Although Petitioner confirms that, on November 10,
`2016, Patent Owner filed a Petition under 37 C.F.R. §§ 1.55 and 1.78
`(Ex. 1005) to accept an unintentionally delayed benefit claim; Petitioner
`argues that the earliest effective filing date of the ’144 patent is August 15,
`2002, the filing date of U.S. Patent Application No. 10/219,105, because, by
`its omission, Patentee expressly abandoned the ’778 application. Id. at 10–
`16. According to Petitioner, the PCT Publication published on September
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`11, 1998, is prior art under 35 U.S.C. § 102(b) with respect to the claims of
`the ’144 patent. Id. at 16.
`Patent Owner counters that Petitioner has not shown that the PCT
`Publication, to which the ’144 patent claims priority, is prior art. Prelim.
`Resp. 8–16. Patent Owner notes that, on February 9, 2017, the Office issued
`a Decision (Ex. 2001) granting Patent Owner’s Petition (Ex. 1005) to accept
`the unintentionally delayed benefit claim. Prelim. Resp. 12–13. In Patent
`Owner’s view, the ’144 patent now contains a proper benefit claim to the
`’002 application, which is the national stage of the PCT ’187 application
`filed on March 3, 1998. Id. at 13–14. We agree with Patent Owner.
`Notably, 37 C.F.R. § 1.78(e) sets forth the following requirements for
`submitting an unintentionally delayed benefit claim under 35 U.S.C. §§ 120
`and 365(c):
`(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c)
`for the benefit of a prior-filed nonprovisional application,
`international application, or international design application.
`If the reference required by 35 U.S.C. 120 and paragraph (d)(2)
`of this section is presented after the time period provided by
`paragraph (d)(3) of this section, the claim under 35 U.S.C. 120,
`121, 365(c),or 386(c) for the benefit of a prior-filed copending
`nonprovisional application, international application designating
`the United States, or international design application designating
`the United States may be accepted if the reference required by
`paragraph(d)(2) of this section was unintentionally delayed.
`A petition to accept an unintentionally delayed claim under 35
`U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed
`application must be accompanied by:
`(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2)
`of this section to the prior-filed application, unless previously
`submitted;
`(2) The petition fee as set forth in § 1.17(m); and
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`(3) A statement that the entire delay between the date the benefit
`claim was due under paragraph (d)(3) of this section and the date
`the benefit claim was filed was unintentional. The Director may
`require additional information where there is a question whether
`the delay was unintentional.3
`(Emphases added.)
`The Decision (Ex. 2001) granting Patent Owner’s Petition (Ex. 1005)
`to accept an unintentionally delayed claim for the benefit of the ’002
`application clearly states that these requirements set forth in 37 C.F.R.
`§ 1.78(e) have been satisfied, including “a proper reference to the prior-filed
`application(s) has been included in an application data sheet (or in an
`amendment to the first sentence of the specification) as required by 37 CFR
`1.78(d)(2).” Ex. 2001, 2. Therefore, we decline to revisit the Office’s
`Decision (Ex. 2001) on Patent Owner’s Petition (Ex. 1005), and we find that
`the record before us does not support Petitioner’s argument that Patent
`Owner failed to submit a proper specific reference under 35 U.S.C. § 120 to
`the ’002 application in the ’778 application or that Patent Owner expressly
`abandoned the ’778 application. As a result, Petitioner does not establish a
`reasonable likelihood of showing that the PCT Publication is prior art under
`35 U.S.C. § 102(b) against the challenged claims of the ’144 patent.
`For the foregoing reasons, we determine that Petitioner fails to
`establish sufficiently that the challenged claims are not entitled to the benefit
`of the ’002 application’s filing date. Consequently, Petitioner fails to make
`a threshold demonstration that the PCT Publication, to which the ’144 patent
`claims priority, is prior art against the challenged claims of the ’144 patent
`in this proceeding. 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2).
`
`
`3 We note that, here, the Director required no such additional information.
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`Accordingly, we conclude that Petitioner has not established a
`reasonable likelihood of prevailing on its assertion that claims 1, 2, 16, 26,
`28, 31, 41, 72, 80, 83, 86, and 87 of the ’144 patent are unpatentable, as
`anticipated by the PCT Publication.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not
`establish a reasonable likelihood of prevailing on its assertion that any of
`claims 1, 2, 16, 26, 28, 31, 41, 72, 80, 83, 86, and 87 of the ’144 patent are
`unpatentable.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied, and no trial is instituted.
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`IPR2017-00711
`Patent 8,966,144 B2
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`For PETITIONER:
`
`Scott R. Miller
`Darren M. Franklin
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`
`For PATENT OWNER:
`
`Gregory S. Donahue
`Minghui Yang
`DINOVO PRICE ELIWANGER & HARDY LLP
`gdonahue@dpelaw.com
`myang@dpelaw.com
`
`Anthony L. Meola
`Jason A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`info@themeolafirm.com
`jmurphy@iplawusa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`
`
`
`
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