Trials@uspto.gov
`Tel: 571-272-7822
`
`
` Paper 9
`
` 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 IPR2017-00712
`Patent 9,189,437 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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`IPR2017-00712
`Patent 9,189,437 B2
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`I.
`
`INTRODUCTION
`
`ZTE (USA) Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 12, 15, 16, 18, 30, 43 and 45 (“the challenged claims”)
`of U.S. Patent No. 9,189,437 B2 (Ex. 1001, “the ’437 patent”). Paper 1
`(“Pet.”). Papst Licensing GmbH & Co., KG (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“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 ’437 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, 4 n.1; Paper 4, 2–5.
`
`B. The ’437 Patent
`
`The ’437 patent describes an interface device 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 ’437 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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`IPR2017-00712
`Patent 9,189,437 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 offered 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 (i.e.,
`IEEE 1284). Id. at 2:20–29. 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 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 ’437 patent indicates that the purported “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 ’437 patent, reproduced
`below, illustrates a block diagram of an interface device.
`
`As shown in Figure 1, interface device 10 connects to a host device
`via host line 11, and to a data transmit/receive device via output line 16. Id.
`at 4:62–5:10. Interface device 10 includes first connecting device 12,
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`IPR2017-00712
`Patent 9,189,437 B2
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`second connecting device 15, digital signal processor 13, and memory
`means 14. Id. Output line 16 connects interface 10 to a data
`transmit/receive device and implements an analog input, for example, with a
`sampling rate of 1.25 MHz and quantization of 12 bits, such as by means of
`the blocks 1505-1535, as depicted in Figure 2. Id. at 9:41–44. By means of
`programmable amplifier 1525, depicted in Figure 2 of the ’437 patent,
`multiple channels can be programmed independently of each other, for
`example, in voltage ranges up to a maximum of ±10 V. Id. at 9:45–48. 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 ’437 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 the 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 43 are independent. Claims 12,
`15, 16, 18, and 30 depend directly from claim 1; and claim 45 depends
`directly from claim 43. 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;
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`a processor operatively interfaced with the i/o port, the
`program memory and the data storage memory;
`wherein the processor is adapted to implement a data
`generation process by which analog data is acquired from each
`respective analog acquisition channel of a plurality of
`independent analog acquisition channels, the analog data from
`each respective channel is digitized, coupled into the processor,
`and is processed by the processor, and the processed and
`digitized analog data is stored in the data storage memory as at
`least one file of digitized analog data;
`wherein the processor also is adapted to be involved in an
`automatic recognition process of a host computer in which, when
`the i/o port is operatively interfaced with a multipurpose
`interface of the host computer, the processor executes at least one
`instruction set stored in the program memory and thereby causes
`at least one parameter identifying the analog data generating and
`processing device, independent of analog data source, as a digital
`storage device instead of as an analog data generating and
`processing device 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 and (b) without requiring any end user to interact with
`the computer to set up a file system in the ADGPD at any time,
`wherein the at least one parameter is consistent with the ADGPD
`being responsive to commands issued from a customary device
`driver;
`wherein the at least one parameter provides information to
`the computer about file transfer characteristics of the ADGPD;
`and
`
`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 sent from
`the i/o port to the multi-purpose interface of the computer, the
`processor executes at least one other instruction set stored in the
`program memory to thereby cause the at least one file of digitized
`analog data acquired from at least one of the plurality of analog
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`acquisition channels to be transferred to the computer using the
`customary device driver for the digital storage device while
`causing the analog data generating and processing device to
`appear to the computer as if it were the digital storage device
`without requiring any user-loaded file transfer enabling software
`to be loaded on or installed in the computer at any time.
`Ex. 1001, 11:57–12:42.
`
`
`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
`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
`
`
`1 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 102(b) in this Decision. See Pet. 4.
`2 Citations to the PCT Publication are to its English translation (Ex. 1004).
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`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 ’437 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],
`[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 ’437 patent lists the following
`benefit claims:
`Continuation of application No. 11/078,778, filed on Mar. 11,
`2005, now abandoned, which is 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. 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
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`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 7
`(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 ’437 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 9–15.
`According to Petitioner, the PCT Publication published on September 11,
`1998, is prior art under 35 U.S.C. § 102(b) with respect to the claims of the
`’437 patent. Id. at 15.
`Patent Owner counters that Petitioner has not shown that the PCT
`Publication, to which the ’437 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 ’437 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.
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`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
`(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
`
`
`3 We note that, here, the Director required no such additional information.
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`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 ’437 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 ’437 patent
`claims priority, is prior art against the challenged claims of the ’437 patent
`in this proceeding. 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2).
`Accordingly, we conclude that Petitioner has not established a
`reasonable likelihood of prevailing on its assertion that claims 1, 12, 15, 16,
`18, 30, 43 and 45 of the ’437 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, 12, 15, 16, 18, 30, 43 and 45 of the ’437 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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`IPR2017-00712
`Patent 9,189,437 B2
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`For PETITIONER:
`
`Scott R. Miller
`Darren M. Franklin
`SHEPPARD, MULLIN, RICHTER & HAMPTON
`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
`info@themeolafirm.com
`
`Jason A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`jmurphy@iplawusa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
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