`
`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 IPR2017-00713
`Patent 6,895,449 B2
`____________________
`
`PAPST LICENSING GMBH & CO. KG’S
`PRELIMINARY RESPONSE
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`TABLE OF CONTENTS
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`B.
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`Page
`INTRODUCTION ................................................................................ 1
`I.
`OVERVIEW OF THE ‘449 PATENT ................................................. 5
`II.
`III. OVERVIEW OF THE APPLIED ART ............................................... 8
`A. Aytac’s CaTbox Requires User-Loaded Specialized
`Software On The Host Computer To Function Properly ........... 8
`American National
`Standard
`For
`Information
`Systems – Small Computer System Interface-2 (“SCSI
`Specification”) .......................................................................... 13
`C. MS-DOS Encyclopedia ............................................................ 14
`D. Alleged Admitted Prior Art ...................................................... 14
`IV. LEVEL OF ORDINARY SKILL IN THE ART ................................ 15
`V.
`CLAIM CONSTRUCTION ............................................................... 16
`A. Data transmit/receive device .................................................... 18
`B.
`“Simulating a virtual file system to the host” .......................... 19
`C.
`“Interface device” ..................................................................... 21
`VI. THE PETITION FAILS TO MEET THE REQUIREMENTS
`FOR INSTITUTING AN INTER PARTES REVIEW ........................ 21
`A.
`The Board Should Not Institute Trial Based on The
`Petition’s Redundant Grounds ................................................. 21
`The Petition Fails To Provide A Proper Obviousness
`Analysis .................................................................................... 25
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`B.
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`ii.
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`C.
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`D.
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`Aytac Does Not Disclose “Whereupon The Host Device
`Communicates With The Interface Device By Means Of
`The Driver For The Storage Device Customary In A Host
`Device” As Required In Claim 1, Or “Whereupon The
`Host Device Communicates With The Interface Device By
`Means Of The Specific Driver For The Multi-Purpose
`Interface” As Required By Claim 17 ....................................... 29
`i.
`Aytac Intended CaTbox To Be A Multitasking
`Device To Solve The Problem Of Integrating
`Operation Of Multiple Devices With A PC ................... 32
`CaTbox Requires Specialized Software Installed
`On The Host PC To Be A Multitasking Device To
`Solve The Problem Of Integrating Operation Of
`Multiple Devices With A PC ......................................... 34
`Petitioner Fails To Show That Aytac Discloses “The
`Interface Device Is Arranged For Simulating A Virtual
`File System To The Host,” As Required In Claims 1 and
`17 .............................................................................................. 40
`VII. CONCLUSION .................................................................................. 42
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`EXHIBIT LIST
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`Ex. No. Description
`1001
`U.S. Patent No. 6,895,449 to Tasler
`1002
`File History for U.S. Patent No. 6,895,449
`1003
`Declaration of Kevin C. Almeroth
`1004
`Curriculum Vitae of Kevin C. Almeroth
`1005
`U.S. Patent No. 5,758,081 to Aytac
`1006
`Am. Nat’l Standard Inst., Inc., Am. Nat’l Standard for Info.
`Sys’s Small Computer System Interface (SCSI) (1994)
`Ray Duncan, The MS-DOS Encyclopedia (1988)
`In Re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255,
`1265 (Fed. Cir. 2015)
`Papst’s Opening Claim Constr. Brief and Appendix 8 of
`Papst’s Opening Claim Constr. Brief, Papst Licensing GmbH
`& Co., KG v. Apple, Inc., No. 6:15-cv-01095-RWS (E.D. Tex.
`Nov. 22, 2016)
`Papst’s Opening Claim Constr. Brief and Decl. of Robert
`Zeidman, In
`re Papst Licensing Dig. Camera Pat. Litig., MDL No. 1880,
`1:07- mc-00493 (D.D.C. June 3, 2016)
`As-Filed German priority document Patent Application 197 08
`755.8
`‘399 German Application Publication (DE 197 08 755)
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`1007
`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
`1016
`1017
`1018
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`1019
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`Certified Translation of Published ‘399 German
`Application (DE 197 08 755)
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`English Translation of PCT Application PCT/EP98/01187
`(published as PCT Pub. No. WO98/39710)
`U.S. Patent No. 4,589,063 to Shah
`U.S. Patent No. 5,038,320 to Heath
`U.S. Patent No. 5,787,246 to Lichtman
`Rufus P. Turner et al., The Illustrated Dictionary of Electronics
`(1991)
`Decision, Institution of Inter Partes Review, Canon Inc. v.
`Papst Licensing GmbH & Co., KG, Case IPR2016-01200,
`Paper 8 (PTAB Dec. 15, 2016).
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`File History for U.S. Pat. No. 5,758,081 to Aytac
`Papst’s Brief, In Re Papst Licensing Dig. Camera Pat. Litig.,
`No. 2014-1110 (Fed. Cir., February 20, 2014)
`Declaration of Thomas Gafford
`Petition in Fujifilm Corp. v. Papst Licensing GmbH & Co.,
`KG, IPR2016-0199, Paper 1 at 35 (PTAB June 14, 2016)
`Manual of Patent Examining Procedure § 608.05, 6th ed., rev.
`1 (Sept. 1, 1995)
`Claim Construction Opinion and Order, Papst Licensing
`GmbH & Co., KG v. Apple, Inc., 6:15-cv-01095, D.E. 275
`(E.D. Tex. March 7, 2017)
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`1020
`1021
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`2001
`2002
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`2003
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`2004
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`INTRODUCTION
`Patent Owner Papst Licensing GmbH & Co., KG (“Patent Owner”)
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`I.
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`respectfully submits this Patent Owner Preliminary Response under 35 U.S.C.
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`§ 313 and 37 C.F.R. § 42.107(a), responding to the Petition for Inter Partes
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`Review (the “Petition”) filed by the Petitioner ZTE (USA) Inc. regarding
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`claims 1, 16, and 17 of U.S. Patent No. 6,895,449 (“the ’449 patent”). This
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`Response is supported by the declaration of Papst’s retained qualified
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`technical expert, Thomas Gafford (Ex. 2001), as well as other accompanying
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`exhibits. Papst requests that the Board not institute inter partes review for
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`several reasons.
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`“The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition
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`filed under section 311 and any response filed under section 313 shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Further, the Board has discretion to “deny some or all grounds for
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`unpatentability for some or all of the challenged claims.” 37 C.F.R.
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`§ 42.108(b); see 35 U.S.C. § 314(a). While it is not required to file a
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`preliminary response (37 C.F.R. § 42.107(a)), Papst takes this limited
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`opportunity to point out the reasons the Board should not institute trial.
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`Here, institution should be denied because Petitioner has failed to
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`establish that there is a reasonable likelihood that it will prevail on its asserted
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`grounds of unpatentability.
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`First, the Board should reject the Petition because Petitioner fails to
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`sufficiently identify and explain its precise invalidity legal theories and
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`supporting evidence, in violation of the particularity required by the Board.
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`Petitioner obscures the source of the alleged teachings of the prior art and even
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`rely on non-prior art teachings of the challenged ’449 patent in support of its
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`ground of invalidity. (See, e.g., Pet. at 43-46.) Although the single ground of
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`invalidity is alleged to be based on Aytac (Ex. 1005) in view of the SCSI
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`Specification (Ex. 1006), the MS-DOS Encyclopedia (Ex. 1007), and alleged
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`admitted prior art, Petitioner fails to provide a proper obviousness analysis,
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`including considering each claimed invention as a whole, identification of the
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`limitations not disclosed by Aytac, identification of where those limitations
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`are taught by the SCSI Specification or the other asserted prior art, why and
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`how the particular combination would have been made, i.e., articulated
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`reasoning with some rational underpinning to support the conclusion of
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`obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); Graham
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`v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`Instead, the Petition treats the SCSI Specification and other asserted art
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`as a seamless part of the Aytac disclosure. The result is that Petitioner
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`effectively alleges anticipation instead of obviousness of the challenged
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`claims. Indeed, the word “obvious” does not even appear in the Petition.
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`Never once conceding which claim limitations are missing from Aytac,
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`Petitioner fails to clearly articulate any theory of obviousness premised on
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`combining the teachings of Aytac, the SCSI Specification, the MS-DOS
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`Encyclopedia, or the alleged admitted prior art.
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`Second, the Board should reject the Petition because Petitioner
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`proposes a ground that is horizontally redundant of grounds proposed in other
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`inter partes review petitions filed by Petitioner against the ’449 patent.
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`Petitioner’s three petitions against the ’449 patent collectively assert various
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`grounds based on the same two primary prior art references. Accordingly, the
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`Board should exercise its discretion and deny the Petition under 35 U.S.C.
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`§§ 315(d) and 325(d) and the redundancy principles established in Liberty
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`Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003, Paper 7
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`(PTAB Oct. 25, 2012).
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`Substantively, the Petition fails to demonstrate that Aytac in view of
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`the other asserted art suggests the arrangement of limitations recited in the
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`claims. In particular, claim 1 of the ‘449 patent requires that “whereupon the
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`host device communicates with the interface device by means of the driver for
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`the storage device customary in a host device,” and claim 17 requires,
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`“whereupon the host device communicates with the interface device by means
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`of the specific driver for the multi-purpose interface.” The specification of the
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`‘449 patent makes clear that the communication between the host computer
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`and the interface device is accomplished using a customary driver typically
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`found on a host computer, without needing a specialized, user-installed driver.
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`(Ex. 1001 at 3:20-4:36, 11:26-44.) However, contrary to the requirements of
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`the claims, Aytac teaches that specialized software is indeed required on the
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`host computer to enable communication with Aytac’s disclosed “CaTbox”
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`device, including the transfer of files to and from the CaTbox’s hard drive
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`(“Catdisc”) and communications with the disclosed modems located in the
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`CaTbox. (Ex. 1005 at 10:52-11:64.)
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`Petitioner also fails to show that Aytac in view of the other asserted
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`references discloses “wherein the interface device is arranged for simulating
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`a virtual file system to the host” as required by claims 1 and 17. Petitioner
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`alleges that Aytac’s specialized virtual device drivers meet this limitation, but
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`this argument fails because the virtual device drivers are installed on the host
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`computer and not the CaTbox device alleged to be the claimed interface
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`device. Petitioner provides no explanation how software installed on the host
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`computer arranges the CaTbox for simulating a virtual file system to the host,
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`and accordingly the Petition fails to show that this limitation is disclosed by
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`the asserted art.
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`Papst does not attempt to fully address the numerous other deficiencies
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`of the poorly articulated and underdeveloped ground asserted in the Petition.
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`See Travelocity.com L.P. v. Cronos Techs., LLC, CBM2014-00082, Paper 12
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`at 10 (PTAB Oct. 16, 2014) (“nothing may be gleaned from the Patent
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`Owner’s challenge or failure to challenge the grounds of unpatentability for
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`any particular reason.”) However, the deficiencies addressed herein are
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`dispositive and preclude trial on the ground asserted in the Petition.
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`II. OVERVIEW OF THE ‘449 PATENT
`The ’449 Patent involves a unique method for achieving high data
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`transfer rates for data acquisition systems (e.g., still pictures, videos, voice
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`recordings) to a general-purpose computer, without requiring a user to
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`purchase, install, and/or run specialized software for each system. (Ex. 1001
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`at 3:26-30.) At the time of the invention, there were an increasing number
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`and variety of data acquisition systems with the ability to capture high
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`volumes of information. (Id. at 1:35-55.) As such, there was an increasing
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`demand to transfer that information to commercially-available, general
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`purpose computers. (Id. at 1:21-34.) But at that time, performing that data
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`transfer operation required either loading specialized, sophisticated software
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`onto a general purpose computer, which increases the risk of error and the
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`level of complexity for the operator, or specifically matching interface devices
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`for a data acquisition system to a host system that may maximize data transfer
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`rates but lacks the flexibility to operate with different devices. (Id. at 1:12-
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`3:19.)
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`The ‘449 Patent recognizes that the existing options were wasteful and
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`inefficient and presents a solution that would achieve high data transfer rates,
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`without specialized software, while being sufficiently flexible to operate
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`independent of device or host manufacturers. (Id. at 3:26-30.) The resulting
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`invention would allow a data acquisition system to identify itself as a type of
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`common device so as to leverage the inherent capabilities of general-purpose,
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`commercially-available computers. (Id. at 5:2-22.) Accordingly, users could
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`avoid loading specific software; improve data transfer efficiency; save time,
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`processing power, and memory space; and avoid the waste associated with
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`purchasing specialized computers or loading specific software for each
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`device. (Id. at 3:26-30, 8:17-9:58, 10:9-15.) The ‘449 Patent claims variations
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`of this concept and provides a crucial, yet seemingly simple, method and
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`apparatus for a high data rate, device-independent information transfer. (Id.
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`at 3:26-30.)
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`The interface device disclosed in the ‘449 Patent can leverage
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`“drivers for input/output device[s] customary in a host device which reside
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`in the BIOS system of the host device . . .” (Id. at 10:11-12; see also id. at
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`4:17-20 (“The interface device according to the present invention therefore
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`no longer communicates with the host device or computer by means of a
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`specially designed driver but the means of a program which is present in the
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`BIOS system . . .”), 5:6-8 (describing the use of “usual BIOS routines” to
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`issue INQUIRY instructions to the interface), and 7:11-21 (describing use
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`of BIOS routines.)) Similarly, the written description describes also using
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`drivers included in the operating system. (Id. at 4:63-66 (“Communication
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`between the host system or host device and the interface device is based on
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`known standard access commands as supported by all known operating
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`systems (e.g., DOS®, Windows®, Unix®).”)) Alternatively, if the required
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`specific driver or drivers for a multi-purpose interface (such as a SCSI
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`interface) is already present in a host device, such drivers could be used with
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`the ‘449 Patent’s interface device instead of, or in addition to, customary
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`drivers which reside in the BIOS. (Id. at 10:9-25.) Accordingly, the ‘449
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`Patent contemplated a universal interface device that could operate
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`independent of the manufacturer of the computer. (Id. at 11:7-10.) Indeed,
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`the preferred embodiment discloses that the interface device includes three
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`different connectors, a 50 pin SCSI connector 1240, a 25 pin D-shell
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`connector 1280, and a 25 pin connector 1282, to allow the ‘449 Patent’s
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`interface device to connect to a variety of different standard interfaces that
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`could be present in a host computer. (Id. at 8:30-47 and FIG. 2.)
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`III. OVERVIEW OF THE APPLIED ART
`A. Aytac’s CaTbox Requires User-Loaded Specialized Software
`On The Host Computer To Function Properly
`Aytac discloses a specialized device to allow communication between
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`a computer and multiple peripheral devices. Aytac’s title is “Computing and
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`communications transmitting, receiving system, with a push button interface,
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`that is continuously on, that pairs up with a personal computer and carries out
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`mainly communications related routine tasks.” (Ex. 1005.) As the title
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`suggests, Aytac generally relates to a telecommunications apparatus or
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`“Personal Communicator” in the form of an embedded computer called
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`“CaTbox” (so named because the device “sits between a Computing and a
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`Telecommunications apparatus.”) (Id. at 4:8–20.) Given the complexity of
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`managing connections to many devices, Aytac discloses specialized software
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`needed for the device to function properly.
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`Notably, Aytac includes Source Code that was not printed with or
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`referenced in the Aytac patent. The Board found in another related IPR that
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`Aytac’s Source Code is not prior art that may be relied upon, except to show
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`the level of ordinary skill in the art at the time of the invention. (Ex. 1019,
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`Decision at 16–17.) Even when viewed from this limited perspective, the
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`Source Code supports Papst’s position that specialized software must be
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`installed on the host computer for Aytac’s CaTbox to work properly—why
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`else would the inventor feel compelled to include such software with Aytac’s
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`patent application? Because Mr. Aytac felt it was needed for the CaTbox to
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`work. If only regularly-available software were needed, none of this
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`specialized software would have been needed.
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`Petitioner in this proceeding acknowledges that the Board has already
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`determined that the Source Code is not prior art, but confusingly argues both
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`that “to the extent not considered part of the patent disclosure, should qualify
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`as prior art . . .”, and that “the Office should continue to conclude that the
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`Atyac [sic] source code is not part of the Atyac [sic] patent disclosure, but
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`also appreciate that the source code may continue to serve as evidence that
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`may be relied upon to show the level of ordinary skill in the art…” (Petition
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`at 21-22.) Petitioner argues that “reference to programming for the interface
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`device of the ‘081 patent, and manners of implementation of that interface
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`device [] would direct one of skill in the art to the attached source code filed
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`with the Atyac [sic] application.” (Id.) Petitioner does not explain how one of
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`ordinary skill would know to check file history of the Aytac application when
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`there is no reference to the source code found in the application. More
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`importantly, the file history would not have been publicly available until the
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`issuance of the Aytac patent, which is too late for the file history to become
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`prior art to the ‘449 patent.
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`Petitioner otherwise regurgitates the same unsuccessful argument
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`presented by the Petitioners in IPR2016-0199 and IPR2016-01200, which
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`fails for the same reasons as the Board previously decided in those
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`proceedings. (See Ex. 1019 at 15-17.) In particular, Petitioner states that
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`Aytac’s mode of filing the 450 pages of source code “followed the
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`requirements for computer listing filings in effect” at the time. (Petition at 21.)
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`A closer look at the rules in effect at the time show that Petitioner is incorrect.
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`The rules indeed require insertion of a reference to a code appendix at
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`the beginning of the application:
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`A statement must be included in the specification to the
`effect that a microfiche appendix is included in the application.
`The specification entry must appear at the beginning of the
`specification immediately following any cross-reference to
`related applications, 37 CFR 1. 77(c)(2). The patent front page
`and the Official Gazette entry will both contain information as to
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`the number of microfiche and frames of computer program
`listings appearing in the microfiche appendix.
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`(Ex. 2003 at 4 (Manual of Patent Examination Procedure § 608.05, 6th ed.,
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`rev. 1, (Sept. 1, 1995)) (emphasis added).)
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`37 C.F.R. § 1.96, which is reproduced in MPEP § 608.05, provides that
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`computer program listings, if 10 printed pages or less, must be submitted as
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`part of the specification or drawings, but if 11 pages or more, should be
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`submitted “[a]s an appendix which will not be printed.” (Ex. 2003 at 2–3
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`(quoting 37 C.F.R. § 1.96 (a), (b)).) Although 37 C.F.R. § 1.96(b) concludes
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`with the sentence that “[a]ll computer program listings submitted on paper
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`will be printed as part of the patent” (id. at 3), the 450-page program listing
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`submitted was not in fact printed as part of the Aytac patent. Thus, because
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`the owner of the Aytac patent failed to have the patent corrected to include
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`the program listing, the program listing is not a part of the Aytac written
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`description. This would be the case even if Aytac had included a reference to
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`the program listing in the specification, which he failed to do. See Southwest
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`Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1295 (Fed. Cir. 2000) (source
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`code not part of patent even though patent stated source code was incorporated
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`in appendix because source code was not printed with patent and was not part
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`of specification, even though filed with application); Solaia Tech. LLC v.
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`Arvinvmeritor, Inc., 2003 U.S. Dist. LEXIS 16482, at *22 (N.D. Ill. Sept. 17,
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`2003) (where source code was referenced in the patent, but did not append it
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`to certified copy or have required reference to appendix at the required
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`location after the title of the invention and before the summary of the
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`invention, source code was not considered part of the patent document).
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`Petitioner cites Intel Corp. v. MicroUnity Systems, Appeal No. 2010-
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`008981 at 7–8 (BPAI Dec. 9. 2010) to argue that the USPTO “has held that
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`such appendices are part of the written description.” (Pet. at 21.) However,
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`Intel is factually distinguishable because the patent at issue there actually
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`included a reference to the microfiche appendix at the appropriate location
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`(see U.S. Patent No. 6,295,599), and as noted by the Board, included at least
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`nine references in the specification to the appendix. Intel, Appeal No. 2010-
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`008981 at 8. Aytac includes no such source code references. Thus, the code
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`submitted by Aytac does not form part of the Aytac written description and
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`therefore is not prior art under § 102(e).
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`The Aytac code does not separately qualify as a “printed publication,”
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`particularly because Aytac fails to reference the existence of the source code
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`in the specification, and there is no evidence that the source code was
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`otherwise searchable or available to a POSITA. See In re Cronyn, 890 F.2d
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`1158 (Fed. Cir. 1989) (holding thesis not to be a printed publication despite
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`being available in a library and indexed by the author’s name because index
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`by name only did not make thesis reasonably accessible to the public).
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`Because the unpublished Aytac source code is not a printed publication, it is
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`not prior art for the purposes of an inter partes review. See 35 U.S.C. § 311(b).
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`Further, even if the source code were sufficiently publicly available to
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`be considered a printed publication as of May 26, 1998 when the Aytac patent
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`issued and published (and when the file wrapper became publicly available),
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`it still would not be prior art under 35 U.S.C. §§ 102(a) or (b) to the ’449
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`patent, which has a priority date of March 4, 1997 and an effective filing date
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`as of March 3, 1998. Thus, the unpublished Aytac source code is not prior art
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`for the purposes of this inter partes review. Accordingly, to the extent
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`Petitioner relies on the Aytac source code as prior art, the Board must
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`disregard this evidence.
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`Information
`For
`Standard
`National
`B. American
`Systems – Small Computer System Interface-2 (“SCSI
`Specification”)
`As stated in the 466-page SCSI specification, the “SCSI protocol is
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`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
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`including one or more hosts.” (Ex. 1006 at 26.) The Petition relies on this
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`document to show aspects of how a SCSI device works because Aytac
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`discloses that the CaTbox device uses a SCSI connection to a host computer.
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`Although the SCSI specification sets forth various functionalities for a SCSI
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`device, it does not describe how a standard SCSI driver can support the full
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`functionality of Aytac’s CaTbox.
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`C. MS-DOS Encyclopedia
`Petitioner cites to passages of the MS-DOS Encyclopedia relating to
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`the MS-DOS file system, File Allocation Table (FAT), directories, and boot
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`sector. (Petition at 27-28.) However, the MS-DOS encyclopedia contains no
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`mention of virtual file systems.
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`D. Alleged Admitted Prior Art
`The Petition relies in part on statements in the ‘449 patent regarding the
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`operation of the invention in an attempt to bolster the disclosure of Aytac by
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`analogizing the disclosures of the ‘449 patent with the disclosure of Aytac.
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`(See, e.g., Pet. at 34: (“The ‘449 discloses that ‘[g]enerally speaking, this
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`multi-purpose interface driver has the task of moving precisely specified SCSI
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`commands from the host system program to the host system SCSI adaptor.’
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`Ex. 1001, at 10:9-25. This is exactly what Aytac’s ASPI2DOS.SYS driver
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`does.”); Pet. at 40 (“The following discusses first the ’449 Patent’s description
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`of its recognition process, followed by the nearly identical description from
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`the Aytac Patent of its recognition process.”)) When one actually reviews the
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`portions of Aytac cited by Petitioner, however, Aytac’s disclosure is neither
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`“nearly identical” nor analogous to that of the ‘449 patent. Regardless, the
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`Petition does not demonstrate how the ’449 patent’s statements have any
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`bearing on whether Aytac’s CaTbox renders those claimed inventions
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`obvious.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner’s proposed definition of the level of ordinary skill in the art is
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`partially consistent with Papst’s view. Petitioner asserts that “[a] person of
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`ordinary skill in the art of the ‘449 Patent at the time of the alleged invention
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`(‘POSITA’) would have a four-year degree in electrical engineering, computer
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`science, or related field of study.” (Petition at 8-9.) According to Petitioner,
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`“[a] POSITA would also have either a Master’s degree, or at least two years of
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`experience in the relevant field, e.g., computer science, computer systems, or
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`peripheral devices.” (Id. at 9.)
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`Papst contends that the field of the invention relates to “the transfer of
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`data and in particular to interface devices for communication between a
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`computer or host device and a data transmit/receive device from which data is
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`to be acquired or with which two-way communication is to take place.” (Ex.
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`1001 at 1:13-17.) A POSITA would have at least a bachelor’s degree in a
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`related field such as computer engineering or electrical engineering and at least
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`three years of experience in the design, development, and/or testing of hardware
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`and software components involved with data transfer or in embedded devices
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`and their interfaces with host systems. Alternatively, a POSITA may have five
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`or more years of experience in these technologies, without a bachelor’s degree.
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`(Ex. 2001 ¶17.)
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`V. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board construes claim terms in
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`an unexpired patent using their broadest reasonable construction in light of
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`the specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
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`However, the ‘449 patent is set to expire on March 3, 2018, prior to the date
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`that a final written decision in this proceeding, if instituted, would be due.
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`Under this circumstance, the Board has applied the Phillips standard in its
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`decision on institution. HTC Corp. v. Parthenon Unified Memory
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`Architecture LLC, IPR2015-01502, Paper 14 at 8 (PTAB January 6, 2016);
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`see also Sony Corp. v. Cascades Projection LLC, IPR2015-01846, Paper 13
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`at 5 (PTAB February 26, 2016); Terremark North Am. LLC v. Joao Control
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`& Monitoring Systems LLC, IPR2015-01477, Paper 10 at 8 (PTAB Jan. 8,
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`2016). Accordingly, the correct standard for claim construction is the
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`ordinary meaning, as would be understood by a person of ordinary skill in
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`the art at the time of the invention in view of the specification. In re Rambus,
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`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Square, Inc. v. J. Carl Cooper,
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`IPR2014-00157, Paper 17 at 2 (PTAB June 23, 2014).
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`“In determining the meaning of the disputed claim limitation, [the
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`court] look[s] principally to the intrinsic evidence of record, examining the
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`claim language itself, the written description, and the prosecution history, if
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`in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
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`1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303,
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`1312–17 (Fed. Cir. 2005)). The words of a claim generally are given their
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`ordinary and customary meaning, and that is the meaning the term would
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`have to a person of ordinary skill at the time of the invention, in the context
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`of the entire patent including the specification. See Phillips, 415 F.3d at
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`1312–13. Although it is improper to read a limitation from the specification
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`into the claims, the claims still must be read in view of the specification of
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`which they are a part. See Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340,
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`1347 (Fed. Cir. 2004).
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`Since the filing of the Petition, the District Court for the Eastern
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`District of Texas issued an opinion regarding the construction of certain
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`claims of the ‘449 patent. (Ex. 2004, Papst Licensing GmbH & Co., KG v.
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`Apple, Inc., 6:15-cv-01095, D.E. 275 (E.D. Tex. March 3, 2017).)
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`A. Data transmit/receive device
`Petitioner proposes that a “data transmit/receive device” should be
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`construed as “a device capable of transmitting or receiving data.”1 (Petition at
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`12.) The District Court construed this limitation to mean “data transmit and/or
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`receive device.” (Ex. 2004 at 37.) In particular, the District Court found that
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`in the context of the claims and specification, the “/” in “data transmit/receive
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`device” can be readily understood as meaning “and/or”. (Id. at 36.) Papst
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`submits that a “data transmit/receive device,” as that term is used in the ‘449
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`Patent, is “a device that is capable of either (a) transmitting data or (b)
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`transmitting data and receiving data.”
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`This “data transmit/receive device” construction is appropriate in view
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`of the disclosure of the ‘449 Patent. For example, the very first paragraph of
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`1 Petitioner’s proposed construction for this term in this proceeding is
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`different from the proposed construction in the underlying District Court
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`liti