Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: July 17, 2017
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`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
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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`
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`
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` Paper 8
`
`
` Entered: July 17, 2017
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`
`
`
`
`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
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00713
`Patent 6,895,449 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, identified above, filed a corrected Petition requesting inter
`
`partes review of claims 1, 16, and 17 (“the challenged claims”) of
`
`U.S. Patent No. 6,895,449 B2 (Ex. 1001, “the ’449 patent”). Paper 3
`
`(“Pet.”). Papst Licensing GmbH & Co., KG (“Patent Owner”), filed a
`
`Preliminary Response. Paper 7 (“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 that follow,
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`we determine that, on this record, Petitioner has established a reasonable
`
`likelihood that it would prevail with respect to the challenged claims. We
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`hereby institute an inter partes review as to the challenged claims.
`
`A. Related Matters
`
`The parties indicate that the ’449 patent is involved in Papst Licensing
`
`GmbH & Co. KG v. Huawei Technologies Co., Ltd., Case No. 6:15-cv-
`
`01099 (E.D. Tex.) and other proceedings. Pet. 4–6; Paper 4, 2–4.
`
`B. The ’449 Patent
`
`The ’449 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, 1:13–17,
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`49–55. According to the ’449 patent, using a specific driver to match very
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`closely to an individual host system would achieve high data transfer rates
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`across the interface, but the specific driver cannot be used with other host
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`IPR2017-00713
`Patent 6,895,449 B2
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`systems. Id. at 1:66–2:11. Several solutions to this problem were known in
`
`the art. Id. at 2:15–3:20. For example, IOtech introduced an interface
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`device for laptops, using a plug-in card for converting the personal computer
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`memory card association (PCMCIA) interface into a known standard
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`interface (IEEE 1284). Id. at 2:18–23. The plug-in card provided a printer
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`interface for enhancing data transfer rates. Id. at 2:23–27. In another
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`example, a floppy disk drive interface was used for connecting a host device
`
`to a peripheral device. Id. at 3:4–8. The interface appeared as floppy disk
`
`drive to the host, allowing a floppy disk drive and another peripheral device
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`to be connected to the host device. Id. at 3:11–13.
`
`The ’449 patent indicates that the “invention is based on the finding
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`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
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`utilized. Id. at 3:27–31. Figure 1 of the ’449 patent, reproduced below,
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`illustrates a block diagram of an interface device.
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`IPR2017-00713
`Patent 6,895,449 B2
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`As shown in Figure 1 above, interface device 10 connects to a host device
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`via host line 11, and to a data transmit/receive device via output line 16. Id.
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`at 4:46–62. Interface device 10 includes first connecting device 12, second
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`connecting device 15, digital signal processor 13, and memory means 14.
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`Id. In a preferred embodiment, the interface device is attached to a host
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`device via a multi-purpose interface—e.g., a small computer systems
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`interface (SCSI) interface—which includes both an interface card and
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`specific driver software for the interface card. Id. at 3:44–50, 8:37–41.
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`According to the ’449 patent, SCSI interfaces were known to be present on
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`most host devices or laptops. Id. at 8:30–34. By using a standard interface
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`of a host device and by simulating an input/output device to the host device,
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`the interface device “is automatically supported by all known host systems
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`without any additional sophisticated driver software.” Id. at 11:28–32.
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`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 17 are independent. Claim 16
`
`depends directly from claim 1. Claim 1 is illustrative and is reproduced
`
`below with disputed limitations emphasized:
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`1. An interface device for communication between a host device,
`which comprises drivers for input/output devices customary in a
`host device and a multi-purpose
`interface, and a data
`transmit/receive device comprising the following features:
`
`a processor;
`
`a memory;
`
`a first connecting device for interfacing the host device with the
`interface device via the multi-purpose interface of the host
`device; and
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`IPR2017-00713
`Patent 6,895,449 B2
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`a second connecting device for interfacing the interface device
`with the data transmit/receive device,
`
`wherein the interface device is configured by the processor and
`the memory in such a way that the interface device, when
`receiving an inquiry from the host device as to the type of a
`device attached to the multi-purpose interface of the host device,
`sends a signal, regardless of the type of the data transmit/receive
`device attached to the second connecting device of the interface
`device, to the host device which signals to the host device that it
`is a storage device customary in a host device, whereupon the
`host device communicates with the interface device by means of
`the driver for the storage device customary in a host device, and
`
`wherein the interface device is arranged for simulating a virtual
`file system to the host, the virtual file system including a directory
`structure.
`
`Ex. 1001, 11:46–12:6 (emphasis added).
`
`D. Applied References
`
`
`
`Petitioner relies upon the prior art references listed below.
`
`
`
`Reference
`
`Aytac
`
`US 5,575,081, issued May 26, 1998
`
`SCSI
`Specification
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC.,
`American National Standard for Information Systems –
`Small Computer System Interface-2, ANSI X3.131-1994
`(1994) 1
`
`Exhibit
`
`1005
`
`1006
`
`MS-DOS
`Encyclopedia
`
`
`THE MS-DOS ENCYCLOPEDIA, (Ray Duncan ed.,
`Microsoft Press, 1988)
`
`1007
`
`
`
`1 Citations to the SCSI Specification refer to the original page numbers.
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`IPR2017-00713
`Patent 6,895,449 B2
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`
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`Reference
`
`Exhibit
`
`Admitted
`Prior Art
`
`see, e.g., Ex. 1001, 3:27–48, 4:63–5:55, 7:51–53, 8:20–
`42, 10:9–25
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`
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`
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`E. Asserted Ground of Unpatentability
`
`Petitioner asserts that claims 1, 16, and 17 are unpatentable under
`
`§ 103(a)2 as obvious over Aytac, the SCSI Specification, the MS-DOS
`
`Encyclopedia, and the Admitted Prior Art. Pet. 7.
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`II. DISCUSSION
`
`A. Claim Construction
`
`Patent Owner indicates that the ’449 patent will expire on March 3,
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`2018 (20 years from the PCT filing date, March 3, 1998, to which the ’449
`
`patent claims priority, Ex. 1001 at [30])—most likely prior to a final written
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`decision in this proceeding. PO Resp. 16. Claims of an expired patent are
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`given their ordinary and customary meaning similar to the claim
`
`construction standard applied by the U.S. district courts. See Phillips v.
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); In re Rambus Inc.,
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`694 F.3d 42, 46 (Fed. Cir. 2012); see also Black & Decker, Inc. v. Positec
`
`USA, Inc., 646 F. App’x. 1019, 1024 (non-precedential) (applying the U.S.
`
`
`
`2 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 and 103 in this Decision.
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`Patent 6,895,449 B2
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`district court standard to construe the claims of an expired patent in an inter
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`partes review).
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`In a related proceeding involving the ’449 patent, the U.S. District
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`Court for the Eastern District of Texas has construed certain terms of the
`
`challenged claims of the ’449 patent. Prelim. Resp. 17.
`
`Reproduced in the table below are the relevant claim constructions
`
`adopted by the District Court alongside those proposed by Petitioner and
`
`Patent Owner.
`
`Claim term
`
`District Court
`Construction
`
`“data
`transmit/
`receive
`device”
`
`“data transmit and/or
`receive device.” Ex.
`2004, 37.
`
`Petitioner’s
`Proposed
`Construction
`“a device capable of
`transmitting or
`receiving data”
`Pet. 12.
`
`Patent Owner’s
`Proposed
`Construction
`“a device that is
`capable of either
`(a) transmitting
`data or
`(b) transmitting
`data and
`receiving data.”
`Prelim. Resp.
`18.
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`IPR2017-00713
`Patent 6,895,449 B2
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`
`Claim term
`
`“simulating
`a virtual
`file system
`to the host”
`
`District Court
`Construction
`
`“presenting to the host
`device a file system
`that emulates the file
`system of the storage
`device customary in
`the host device, even
`though the emulated
`file system does not
`actually exist on the
`interface device” Ex.
`2004 at 38–39.
`
`Petitioner’s
`Proposed
`Construction
`“emulating a file
`system, including a
`directory structure,
`such that the host
`device use[s] its
`native driver to
`access data even if
`the data is not
`actually on a device
`for which the native
`driver was designed.”
`Pet. 12–13.
`
`Patent Owner’s
`Proposed
`Construction
`Agrees with
`Petitioner.
`Prelim. Resp.
`19–20.
`
`Prelim. Resp. 17 (citing Papst Licensing GmbH & Co. KG v. Apple, Inc.,
`
`6:15-cv-01095, D.E. 275 (E.D. Tex. March 3, 2017)).
`
`For the claim term “data transmit/receive device,” the three versions
`
`of the construction appear to be substantially equivalent in scope.3 Neither
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`party explains why we should adopt a different construction here than in the
`
`District Court, and because our analysis in this Decision is the same under
`
`any of the three constructions, we do not decide the issue here. The parties’
`
`may address, in their post-institution briefs, the proper construction of this
`
`term.
`
`
`
`3 We note that Patent Owner’s Proposed Construction of this term appears to
`exclude “receiving data” alone, which interpretation is included within the
`scope of the District Court Construction and Petitioner’s Proposed
`Construction.
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`IPR2017-00713
`Patent 6,895,449 B2
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`Patent Owner agrees with Petitioner’s proposed construction term
`
`“simulating a virtual file system to the host.” Prelim. Resp. 19–20 (citing
`
`Pet. 12–13). Although Petitioner’s proposed definition is not exactly the
`
`same as that adopted by the District Court, Patent Owner submits that the
`
`two definitions are consistent. Id. In addition, Patent Owner contends that
`
`Petitioner’s proposed construction is consistent with both the Federal
`
`Circuit’s decision in a case challenging a related patent and the specification
`
`of the ’449 patent. Id. (citing Ex. 1008). Neither party explains why we
`
`should adopt a different construction here than in the District Court, and
`
`because our analysis in this Decision is the same under any of the three
`
`constructions, we do not decide the issue here. The parties’ may address, in
`
`their post-institution briefs, the proper construction of this term.
`
`The parties agree that for purposes of this proceeding, the construction
`
`of the term “interface device” should not be limited to “a device that is
`
`physically separate and apart from, and not permanently attached to, a data
`
`device (or a host computer).” Pet. 13; Prelim. Resp. 21.
`
`B. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(internal quotation and citation omitted). In that regard, Petitioner’s
`
`Declarant, Kevin Almeroth, Ph.D., testifies that a person with ordinary skill
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`Patent 6,895,449 B2
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`in the art at the time of the invention “would have had a four-year degree in
`
`electrical engineering, computer science, or related field of study . . . and
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`would also have had either a master’s degree, or at least two years of
`
`experience in one of the relevant fields, computer science, computer
`
`systems, or peripheral devices.” Ex. 1003 ¶ 47. Patent Owner confirms that
`
`Petitioner’s statements regarding the level of ordinary skill in the art are
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`partially consistent with Patent Owner’s view, but, nonetheless, Patent
`
`Owner contends that an ordinarily skilled artisan would have at least three
`
`years of experience, or, alternatively, five or more years of experience
`
`without a bachelor’s degree, citing the Declaration of Mr. Thomas Gafford
`
`for support. Prelim. Resp. 15 (citing Ex. 2001 ¶ 17).
`
`On this record, we do not observe a meaningful differences between
`
`the parties’ assessments of a person of ordinary skill in the art. We further
`
`note that either assessment appears consistent with the level of ordinary skill
`
`in the art at the time of the invention as reflected in the prior art in the instant
`
`proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
`2001). Moreover, Dr. Almeroth’s qualifications appear to satisfy either
`
`assessment. Our analysis in this Decision is supported by either assessment,
`
`but, for purposes of this Decision, we adopt Petitioner’s assessment.
`
`C. Obviousness over Aytac, the SCSI Specification, the
`MS-DOS Encyclopedia, and the Admitted Prior Art
`
`Petitioner asserts that claims 1, 16, and 17 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over the combined teachings of Aytac, the
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`10
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`Patent 6,895,449 B2
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`SCSI Specification, the MS-DOS Encyclopedia, and the Admitted Prior Art.
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`Pet. 29–54. Patent Owner opposes. Prelim. Resp. 25–42.
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`Based on the evidence in this record, we determine that Petitioner has
`
`established that there is reasonable likelihood that Petitioner would prevail
`
`with respect to this ground of unpatentability. In our discussion below, we
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`address the parties’ contentions in turn.
`
`Overview of Aytac
`
`Aytac discloses an interface device (CaTbox) that is connected to a
`
`host PC and a plurality of peripheral devices. Ex. 1005, Abstract. Figure 1
`
`of Aytac is reproduced below.
`
`
`
`As illustrated in Figure 1, CaTbox 102 connects to host PC 101 via
`
`SCSI bus 113 and telephone network 123 via phone lines 116, 118, 120,
`
`122. Id. at 8:63–9:4. CaTBox 102 is an interface device between host PC
`
`101 and peripheral devices, including printer 103, scanner 104, telephone
`
`handset 105, receiver 107, speaker 124, and microphone 125. Id. According
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`Patent 6,895,449 B2
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`to Aytac, CaTbox runs an operating system, CaTOS, and contains a hard
`
`disk accessible to the PC, as a SCSI disk called CaTdisc. Id. at Abstract.
`
`CaTbox receives faxes, voice mails, emails, and stored them on CaTdisc. Id.
`
`Aytac’s Source Code
`
`Petitioner asserts that source code (Ex. 1020, 77–527) was submitted
`
`with the Aytac application in 1995. Pet. 20. Petitioner acknowledges that,
`
`in the institution decision of another IPR challenging a patent related to the
`
`’449 patent, the Aytac source code was determined to not be part of the
`
`Aytac patent disclosure for 35 U.S.C. § 102 purposes, but that the source
`
`code “may be relied upon to show the level of ordinary skill in the art at or
`
`around the time of the invention of the ’449 [p]atent.” Id. at 21 (citing
`
`IPR2016-01200, Paper 8, 15–17 (PTAB Dec. 15, 2016) (Ex. 1019)).
`
`Petitioner requests
`
`that the Office continue to conclude that the [Aytac] source code
`is not part of the [Aytac] patent disclosure, but also appreciate
`that the source code may continue to serve as evidence that may
`be relied upon to show the level of ordinary skill in the art at or
`around the time of the invention of the ’449 [p]atent.
`
`Id. at 22.
`
`Patent Owner argues that the Aytac Source code does not qualify as a
`
`prior art reference, but does not appear to dispute relying upon the Aytac
`
`Source Code to show the level of ordinary skill in the art at or around the
`
`time of the invention of the ’449 patent. Prelim. Rep. 8–13.
`
`Based on the apparent agreement of the parties, we are persuaded that,
`
`for purposes of this Decision, Aytac’s source code may be relied upon to
`
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`IPR2017-00713
`Patent 6,895,449 B2
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`show the level of ordinary skill in the art at or before the time the invention
`
`was made.
`
`Overview of the SCSI Specification
`
`
`
`The SCSI Specification is a technical specification published by the
`
`American National Standard for Information Systems to set forth the SCSI
`
`standards. According to the SCSI Specification, the SCSI protocol “is
`
`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
`
`including one or more hosts.” Ex. 1006, Abstract. The primary objective of
`
`the SCSI interface is “to provide host computers with device independence
`
`within a class of devices.” Id. at 6. The SCSI-2 “standard defines an
`
`input/output bus for interconnecting computers and peripheral devices.” Id.
`
`at 1. “It includes the necessary specification of the mechanical, electrical,
`
`and functional characteristics of the interface to allow interoperability of
`
`conforming devices.” Id. “SCSI-2 includes command sets for magnetic and
`
`optical disks, tapes, printers, processors, CD-ROMs, scanners, medium
`
`changers, and communications devices.” Id. at Abstract. “The command set
`
`definitions allow a sophisticated operating system to obtain all required
`
`initialization information from the attached SCSI-2 devices.” Id. at 6.
`
`Overview of MS-DOS Encyclopedia
`
`
`
` The MS-DOS Encyclopedia is a book describing both the
`
`development and programming of MS-DOS. Ex. 1007, Preface. It describes
`
`MS-DOS and Microsoft Windows 95 as “the most widely used computer
`
`operating system in the world.” Id. According to MS-DOS Encyclopedia,
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`Patent 6,895,449 B2
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`MS-DOS supported a large number of different peripherals. Id. at 59.
`
`Overview of the Admitted Prior Art
`
`
`
`According to the ’449 patent, “[d]rivers for input/output devices
`
`customary in a host device which are found in practically all host devices
`
`are, for example, drivers for hard disks.” Ex. 1001, 3:31–34. The
`
`’449 patent indicates that SCSI interfaces and SCSI drivers were known in
`
`the art at the time of the invention. Id. at 8:32–38, 10:13–15. According to
`
`the ’449 patent, SCSI interfaces were present on most host devices or
`
`laptops, and SCSI drivers were “normally included by the manufacturer of
`
`the multi-purpose interface.” Id. at 3:44–50, 10:15–19. Moreover, certain
`
`standard access commands, including the SCSI INQUIRY command, were
`
`“supported by all known operating systems (e.g., [DOS®, Windows®, and
`
`Unix®]).” Id. at 4:63–67, 5:6–18, 5:19–32. The ’449 patent further
`
`discloses that it was known to those skilled in the art that a virtual boot
`
`sequence includes “the drive type, the starting position and the length of the
`
`file allocation table (FAT), the number of sectors.” Id. at 5:30–32.
`
`Analysis
`
`Petitioner provides explanations to account for all of the claim
`
`limitations required by claims 1, 16, and 17, and a reason to combine the
`
`teachings of Aytac, the SCSI Specification, and the MS-DOS Encyclopedia,
`
`citing Dr. Almeroth’s Declaration for support. Pet. 29–54; Ex. 1003.
`
`Petitioner takes the position that: (1) Aytac’s CaTbox discloses the
`
`claimed interface device (Pet. 32); (2) PC 101 discloses a host device (id.);
`
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`(3) printer 103, scanner 104, handset 105, receiver 107, speaker, and
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`microphone 125 disclose data transmit/receive devices (id.); (4) X86
`
`processor 201 and associated chipset 221 disclose a processor (id. at 34);
`
`(5) RAM memories 203, BIOS EPROM 222, various cache and buffers, and
`
`CaTdisc 301 disclose a memory (id. at 37); (6) SCSI connector 213 discloses
`
`a first connecting device (id. at 39); and (7) SCSI connector of PC 101
`
`discloses a multipurpose interface (id.); and (8) connector 214 connecting
`
`printer 103 to CaTbox 102, data/fax/voice modem daughterboard connectors
`
`for transmitting a fax machine to CaTbox, and SCSI connector 213 (and its
`
`associated SCSI chip 202) disclose a second connecting device (id. at 41–
`
`42).
`
`“driver” limitations
`
`Petitioner contends that the combined teachings of Aytac, the SCSI
`
`Specification, the MS-DOS Encyclopedia, and the Admitted Prior Art
`
`disclose the limitations “the host device communicates with the interface
`
`device by means of the driver for the storage device customary in a host
`
`device,” as required by claim 1, and the “the host device communicates with
`
`the interface device by means of the specific driver for the multi-purpose
`
`interface,” as required by claim 17. Pet. 33–34; 42–50. As support,
`
`Petitioner explains that Aytac discloses an advanced SCSI programming
`
`interface (“ASPI”) driver, such as the hard disk (storage device) driver
`
`“ASPIDISK.SYS.” Pet. 33, 49–50 (citing Ex. 1005, 10:53–58; Ex. 1001,
`
`10:9–25; Ex. 1003 ¶¶ 135–37). Petitioner also points to Aytac’s disclosure
`
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`of “ASPI2DOS.SYS” as an example of a “specific driver” for use with the
`
`SCSI interface. Id. at 33 (citing Ex. 1005, 10:52–58).
`
`In its Preliminary Response, Patent Owner counters that Aytac does
`
`not disclose those “driver” limitations recited in claims 1 and 17. Prelim.
`
`Resp. 29–40. Citing to the Declaration of Mr. Gafford, Patent Owner argues
`
`that Aytac discloses “numerous additional, non-customary and non-multi-
`
`purpose interface drivers that are required for the host device to
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`communicate with Aytac’s CaTbox.” Id. at 30 (emphasis added); Ex. 2001
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`¶¶ 51–58. According to Patent Owner, “Aytac neither discloses nor suggests
`
`that the host computer can communicate with the CaTbox solely by means
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`of the driver for a storage device customary in a host device or by means of
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`the specific driver for the multi-purpose interface.” Id. at 31 (emphasis
`
`added). Patent Owner also argues that “Aytac’s CaTbox does not merely
`
`appear to the host computer as a SCSI disk, but also a print server, a remote
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`modem or modems, and a remote fax device.” Id. at 33. In Patent Owner’s
`
`view, “Aytac does not purport to achieve the numerous stated functions of
`
`the CaTbox without requiring specialized software on the host device
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`beyond the ASPIDISK.SYS and ASPI2DOS.SYS drivers.” Id. at 32–40;
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`Ex. 2001 ¶¶ 35–46.
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`Upon review of the parties’ contentions and supporting evidence, we
`
`determine that Petitioner has shown sufficiently for purposes of this
`
`Decision that the combined teachings of Aytac, the SCSI Specification, the
`
`MS-DOS Encyclopedia, and the Admitted Prior Art at least suggest the
`
`aforementioned “driver” limitations. Based on the present record, we are not
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`16
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`Patent 6,895,449 B2
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`persuaded by Patent Owner’s arguments.
`
`Notably, Patent Owner’s arguments and Mr. Gafford’s supporting
`
`testimony rest on the premise that the host device cannot have programs
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`other than the claimed drivers, and the interface device cannot include
`
`additional functionalities, other than facilitating communications between
`
`the CaTbox and the host computer, appearing as a SCSI disk—improperly
`
`importing negative limitations into the claims. Prelim. Resp. 32–40;
`
`Ex. 2001 ¶¶ 35–46. More importantly, Patent Owner does not dispute that
`
`Aytac discloses using an ASPI driver for the host PC to communicate with
`
`the CaTbox. Prelim. Resp. 31–40. In fact, Patent Owner acknowledges that
`
`Aytac’s CaTbox appears to the host as a SCSI disk. Id. at 33 (“Aytac’s
`
`CaTbox . . . appear[s] to the host computer as a SCSI disk”); see also
`
`Ex. 1005, 10:28–29 (“CaTbox 102 is seen by the PC 101 as a SCSI disk . . .
`
`.”). Aytac discloses that an “ASPI driver such as ASPI2DOS.SYS 521 from
`
`Adaptec [Corporation] provides the SCSI interface layer to all LUNs on
`
`CaTbox 102 SCSI node, as well as other SCSI nodes.” Ex. 1005, 10:53–56
`
`(emphasis added). Aytac further discloses that “[a]nother driver from
`
`Adaptec Corporation, such as ASPIDISK.SYS 522 provides the disk driver.”
`
`Id. at 10:56–68 (emphasis added). According to the ’449 patent, SCSI
`
`interfaces were present on most host devices or laptops, and SCSI drivers
`
`were “normally included by the manufacturer of the multi-purpose
`
`interface,” and drivers for hard disks are “[d]rivers for input/output devices
`
`customary in a host device which are found in practically all host devices.”
`
`Ex. 1001, 3:31–33, 10:15–19. Moreover, the ’449 patent clearly describes
`
`
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`17
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`IPR2017-00713
`Patent 6,895,449 B2
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`that “multi-purpose interface ASPI (advanced SCSI programming interface)
`
`drivers” are specific drivers for SCSI interfaces, which are “normally
`
`included by the manufacturer of the multi-purpose interface.” Id. at 10:9–
`
`19.
`
`In light of the foregoing, we are persuaded that Petitioner has shown
`
`adequately for the purposes of this Decision that the combined prior art
`
`teachings at least suggest the aforementioned “driver” limitations recited by
`
`claims 1 and 17.
`
`“interface device is arranged for simulating a virtual file system to the
`
`host”
`
`Petitioner contends that the combined teachings of Aytac, the SCSI
`
`Specification, the MS-DOS Encyclopedia, and the Admitted Prior Art
`
`disclose the limitations “the interface device is arranged for simulating a
`
`virtual file system to the host” as required by claims 1 and 17. Pet. 50–52.
`
`As support, Petitioner explains that the “CaTbox (interface device) is
`
`simulated as a SCSI disk to the PC (host device)” and CaTdisc includes a
`
`file system with “a special directory (e.g., DOS directories and
`
`subdirectories).” Id. at 49. According to Petitioner, given this disclosure, a
`
`person of ordinary skill would have recognized that “Aytac’s CaTbox
`
`simulates a virtual file system to the host, and includes a directory
`
`structure.” Id. (citing Ex. 1003 ¶¶ 137–44).
`
`In its Preliminary Response, Patent Owner counters that “the virtual
`
`device drivers discussed by Petitioner, CATSER.VXD and
`
`CATSYNC.VXD, are located on the host computer and not the CaTbox”
`
`
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`18
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`IPR2017-00713
`Patent 6,895,449 B2
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`and the description of these drivers “say nothing about simulating a virtual
`
`file system.” Prelim. Resp. 40–41 (citing Ex. 1005, Fig. 5, 10:52–11:5,
`
`11:38–64). However, as Petitioner explains, because the CaTdisc of the
`
`CaTbox has a file system with a special directory and is simulated as a SCSI
`
`disk to the PC, a person of ordinary skill would understand that CaTbox
`
`simulates a virtual file system to the host. See Pet. 52.
`
`We are persuaded that, for purposes of this Decision, Petitioner has
`
`shown sufficiently that Aytac discloses this limitation. In particular,
`
`Dr. Almeroth states that “[b]ecause the CaTbox is a DOS system, the files
`
`and the directory structure represented to the host by the CaTbox do not
`
`actually exist on the Aytac CaTdisc 301 in that form.” Ex. 1003 ¶ 140; see
`
`also Ex. 1003 ¶ 143 (“Moreover, because the CaTbox (interface device)
`
`is simulated as a SCSI disk to the PC (host device), and the file
`
`system on the CaTdisc of the CaTbox includes a special directory
`
`(e.g., DOS directories and subdirectories), a POSA would understand
`
`that Aytac’s CaTbox simulates a virtual file system to the host, and
`
`includes a directory structure.”). Dr. Almeroth adds that “[t]he Aytac
`
`CaTbox 102 emulates a file system, including a directory structure, such that
`
`the host device use[s] its native driver to access data even if the data is not
`
`actually on a device for which the native driver was designed.” Id. ¶ 140.
`
`On this present record, Dr. Almeroth’s testimony is unrebutted.
`
`Upon review of the parties’ contentions and supporting evidence, we
`
`determine that Petitioner has shown sufficiently for purposes of this
`
`Decision that the combined teachings of Aytac, the SCSI Specification, the
`
`
`
`19
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`Patent 6,895,449 B2
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`MS-DOS Encyclopedia, and the Admitted Prior Art at least suggest “the
`
`interface device is arranged for simulating a virtual file system to the host,
`
`the virtual file system including a directory structure.” Based on the present
`
`record, we are not persuaded by Patent Owner’s arguments.
`
`rationale to combine
`
`Patent Owner further argues that Petitioner does not sufficiently
`
`explain why an ordinarily skilled artisan would have combined the teachings
`
`of Aytac, the SCSI Specification, the MS-DOS Encyclopedia, and Admitted
`
`Prior Art. Prelim. Resp. 28. According to Patent Owner, “without
`
`identification of the limitations missing from Aytac, Petitioner’s rationale is
`
`conclusory and grounded in hindsight.” Id.
`
`On this record, however, we find that Petitioner explains that a person
`
`of ordinary skill in the art would have known the information set forth in the
`
`SCSI Specification, the MS-DOS Encyclopedia, and Admitted Prior Art, and
`
`why they would have been motivated to apply that knowledge to the
`
`invention described by Aytac. Pet. 29–30; Ex. 1003 ¶¶ 84–92. Petitioner’s
`
`articulated reasons are supported by adequate evidence for purposes of this
`
`Decision. For instance, Dr. Almeroth testifies that Aytac expressly describes
`
`CaTbox as including and operating in accordance with the SCSI
`
`Specification. Ex. 1003 ¶ 84 (citing Ex. 1005, 4:49–53). According to
`
`Dr. Almeroth, such an artisan “would have been motivated to combine the
`
`teachings of the SCSI Specification with the Aytac patent and the CaTbox
`
`device described therein,” because such an artisan “would have viewed as
`
`
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`20
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`IPR2017-00713
`Patent 6,895,449 B2
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`important to the CaTbox functioning as a SCSI hard disk.” Id. In addition,
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`Dr. Almeroth states that the Aytac’s repeated references to DOS “would
`
`have motivated a POSITA to look for more information about DOS,
`
`including by reviewing reference material such as the MS-DOS
`
`Encyclopedia.” Id. at 85. Dr. Almeroth explains that “[i]mplementing those
`
`standards would be a logical exercise and would not have involved any
`
`modification of Aytac, of the SCSI or MS-DOS standards,” but instead “the
`
`SCSI Standard and the MS-DOS Encyclopedia represent the underlying
`
`knowledge that a POSA would have known at the time of the ’449 patent.”
`
`Id.
`
`Based on the record before us, we are persuaded that Petitioner’s
`
`articulated reasons to combine the prior art teachings is sufficient for
`
`purposes of institution.
`
`Conclusion
`
`In view of the foregoing, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertions that
`
`claims 1, 16, and 17 are unpatentable as obvious under § 103(a) over the
`
`combined teachings of Aytac, the SCSI Specification, the MS-DOS
`
`Encyclopedia, and the Admitted Prior Art.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail in challenging the patentability of claims 1, 16, and
`
`
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`21
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`Patent 6,895,449 B2
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`17 of the ’449 patent. At this juncture, we have not made a final
`
`determination with respect to the patentability of the challenged claims, or
`
`with respect to the construction of any claim term.
`
`For the foregoing reasons, it is
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`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted for the sole ground that claims 1, 16, and 17 of
`
`the ’449 patent are unpatentable under § 103(a) as obvious over the
`
`combined teachings of Aytac, the SCSI Specification, the MS-DOS
`
`Encyclopedia, and the Admitted Prior Art;
`
`FURTHER ORDERED that no other ground
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