`
`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
`
`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
`PATENT OWNER RESPONSE
`
`
`
`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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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ................................................................................ 1 
`I. 
`II.  OVERVIEW OF THE ’449 PATENT ................................................. 5 
`III.  OVERVIEW OF THE APPLIED ART ............................................... 8 
`CaTbox
`Requires
`User-Loaded
`A.  Aytac’s
`Specialized Software On The Host Computer To
`Communicate And Function Properly ....................................... 8 
`B.  American National Standard For Information
`Systems – Small Computer System Interface-2
`(“SCSI Specification”) ............................................................. 14 
`C.  MS-DOS Encyclopedia ............................................................ 14 
`D.  Alleged Admitted Prior Art ...................................................... 15 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ................................ 15 
`V. 
`CLAIM CONSTRUCTION ............................................................... 16 
`“whereupon the host device communicates with
`A. 
`the interface device by means of the [driver for the
`storage device customary in a host device/specific
`driver for the multi-purpose interface]” ................................... 19 
`B.  Data transmit/receive device .................................................... 23 
`C. 
`“Simulating a virtual file system to the host” .......................... 25 
`D. 
`“Interface device” ..................................................................... 27 
`VI.  PETITIONERS DID NOT MEET THEIR BURDEN TO
`SHOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ............................................................................. 27 
`The Petition Fails To Provide A Proper
`A. 
`Obviousness Analysis .............................................................. 27 
`B.  Aytac Does Not Disclose That A Host Computer
`Communicates with Aytac’s CaTbox Without
`
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`2. 
`
`Using Specialized Software On The Host
`Computer .................................................................................. 31 
`Aytac
`Intended CaTbox To Be A
`1. 
`Multitasking Device To Solve The Problem
`Of
`Integrating Operation Of Multiple
`Devices With A PC ........................................................ 33 
`CaTbox Uses And 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 And To Enable
`Communications Therebetween .................................... 35 
`Petitioner Admits That Aytac’s Specialized
`Software Facilitates Communications Between the
`CaTbox and the Host Computer ............................................... 38 
`D.  Aytac And The Other Relied Upon Art Do Not
`Teach Or Suggest To A POSITA That Aytac’s
`Specialized Software Is Optional Or Should Be
`Removed ................................................................................... 42 
`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 ................................................................... 46 
`VII.  CONCLUSION .................................................................................. 50 
`
`
`C. 
`
`E. 
`
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`ii
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Activevideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................. 29
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ................................................................. 29
`Canon Inc. v. Papst Licensing GMBH & Co., KG,
`IPR2016-01200, Paper 8 (PTAB Dec. 15, 2016) ........................................ 9
`David Netzer Consulting Engineer LLC v. Shell Oil Co.,
`824 F.3d 989 (Fed. Cir. 2016) ............................................................. 18, 23
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`469 F.3d 1005 (Fed. Cir. 2006) ................................................................. 17
`Fujifilm Corp. v. Papst Licensing GmbH & Co., KG,
`IPR2016-01199, Paper 1 (PTAB June 14, 2016) ...................................... 40
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................. 4, 27
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006) ................................................................. 18
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ................................................................. 13
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ................................................................. 30
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................... 46
`In re Magnum Oil Tools Int’l,
`829 F.3d 1364 (Fed. Cir. 2016) ................................................................... 5
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ................................................................. 28
`In Re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015) ................................................................. 22
`In re Zurko,
`258 F.3d 1379 (Fed. Cir. 2001) ................................................................. 30
`
`
`
`iii
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`

`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`
`Intel Corp. v. MicroUnity Systems,
`Appeal No. 2010-008981 (BPAI Dec. 9. 2010) .................................. 12, 13
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`IPR2014-00309, Paper 83 (PTAB Mar. 23, 2014) .................................... 28
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .......................................................... passim
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................ 4, 27, 28
`Microsoft Corp. v. Multi-Tech Sys.,
`357 F.3d 1340 (Fed. Cir. 2004) ................................................................. 18
`Papst Licensing GmbH & Co., KG v. Apple, Inc.,
`6:15-cv-01095, ECF No. 275 (E.D. Tex. March 3, 2017) ........................ 17
`Personal Web Technologies, LLC v. Apple, Inc.,
`2016–1174, slip op. (Fed. Cir. Feb. 14, 2017) .......................................... 28
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................. 17
`Plas-Pak Indus. v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) ........................................................ 46
`SciMed Life Systems v. Advanced Cardiovascular,
`242 F.3d 1337 (Fed. Cir. 2001) ................................................................. 18
`Solaia Tech. LLC v. Arvinvmeritor Inc.,
`2003 U.S. Dist. LEXIS 16482 (N.D. Ill. Sept. 17, 2003) ......................... 12
`Southwest Software, Inc. v. Harlequin, Inc.,
`226 F.3d 1280 (Fed. Cir. 2000) ................................................................. 12
`TRW Auto. US LLC v. Magna Elecs. Inc.,
`IPR2014-00258, Paper 16 (PTAB June 26, 2014) .................................... 41
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ................................................................. 18
`Wowza Media Sys., LLC v. Adobe Sys., Inc.,
`IPR2013-00054, Paper 12 (PTAB Apr. 8, 2013) ...................................... 41
`Statutes
`35 U.S.C. § 103 ............................................................................................. 27
`35 U.S.C. § 311 ............................................................................................. 13
`35 U.S.C. § 314(a) .......................................................................................... 1
`35 U.S.C. § 316(e) ........................................................................................ 27
`iv
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`
`Other Authorities
`Manual of Patent Examination Procedure
`§ 608.05, 6th ed., rev. 1, (Sept. 1, 1995) ................................................... 11
`Regulations
`37 C.F.R. § 1.96 ............................................................................................ 11
`37 C.F.R. § 42.120 .......................................................................................... 1
`37 C.F.R. § 42.24 .......................................................................................... 52
`37 C.F.R. § 42.65 .......................................................................................... 41
`37 C.F.R. § 42.8 ............................................................................................ 52
`
`
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`
`
`LIST OF EXHIBITS
`
`1006
`
`1007
`
`1008
`
`1009
`
`EXHIBIT NO. TITLE
`U.S. Patent No. 6,895,449 to Tasler (“Tasler” or “the ’449
`1001
`Patent”)
`1002
`File History for U.S. Patent No. 6,895,449
`1003
`Declaration of Kevin C. Almeroth
`1004
`Curriculum Vitae of Kevin C. Almeroth
`U.S. Patent No. 5,758,081 to Haluk M. Aytac (“Aytac” or
`1005
`“the ’081 Patent”)
`American National Standards Institute, American National
`Standard for Info. Systems Small Computer System
`Interface, Approved by the ANSI Board of Directors
`(1994).
`Ray Duncan, ed., “The MS-DOS Encyclopedia,”
`Microsoft Press (1988).
`In Re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255, 1265 (Federal Circuit 2015)
`Papst’s Opening Claim Construction Brief and Appendix 8
`of Papst’s Opening Claim Construction Brief, Papst
`Licensing GmbH & Co., KG v. Apple, Inc., et al., No.
`6:15-cv-01095-RWS (E.D. Tex. Nov. 22, 2016)
`Papst’s Opening Claim Construction Brief and Declaration
`of Robert Zeidman, In re. Papst Licensing Digital Camera
`Patent Litigation, MDL No. 1880, No. 1:07-mc-00493
`(D.D.C. June 3, 2016)
`As-Filed Filed German priority document Patent
`Application 197 08 755.8
`‘399 German Application Publication (DE 197 08 755)
`Certified Translation of Published
`‘399 German
`Application (DE 197 08 755)
`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
`vi
`
`1010
`
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
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`

`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
`
`Rufus P. Turner et al., The Illustrated Dictionary of
`Electronics (1991)
`Decision, Institution of Inter Partes Review, Paper No. 8,
`IPR2016-01200
`File History for U.S. Patent No. 5,758,081
`Papst’s Brief, In re. Papst Licensing Digital Camera Patent
`Litigation, No. 2014-1110 (Fed. Cir., February 20, 2014)
`U.S. Patent No. 6,470,399 to Tasler
`File History for U.S. Patent No. 6,470,399
`Declaration of Thomas Gafford
`Petition in Fujifilm Corp. V. Papst Licensing GmbH &
`Co., KG IPR2016-01199, Paper 1 at 35 (PTAB June 14,
`2016)
`MPEP 6th ed., Rev. 1, Sept. 1, 1995, § 608.05.
`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)
`Declaration of Thomas Gafford In Support Of Patent
`Owner Response
`Transcript of Deposition of Kevin Almeroth Taken on
`August 24, 2017
`
`1018
`
`1019
`1020
`1021
`1022
`1023
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
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`vii
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`I.
`
`INTRODUCTION
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
`
`This proceeding commenced when Petitioners filed a Petition for Inter
`
`Partes review of claims of U.S. Patent No. 6,895,449 (“the ’449 patent”)
`
`(Ex. 1001). Patent Owner Papst Licensing GmbH & Co. KG (“Papst”)
`
`timely filed a Preliminary Response (Paper 7). The Patent Trial and Appeal
`
`Board (“Board”) entered its Decision on Institution on July 17, 2017
`
`(“Decision”) (Paper 8), by which it ordered the institution of trial on claims
`
`1, 16, and 17 of the ’449 patent pursuant to 35 U.S.C. § 314(a) on the single
`
`ground of obviousness over U.S. Patent No. 5,758,081 to Aytac (“Aytac”)
`
`(Ex. 1005) in combination with the SCSI Specification (Ex. 1006), the MS-
`
`DOS Encyclopedia (Ex. 1007), and alleged Admitted Prior Art. (Paper 8 at
`
`22.)
`
`Papst respectfully submits this Response in accordance with 37 C.F.R.
`
`§ 42.120, opposing the Petition and responding to the Decision as to the
`
`single instituted ground. This Response is supported by the declaration of
`
`Papst’s retained qualified technical expert, Thomas Gafford (Ex. 2005), as
`
`well as other accompanying exhibits.
`
`The ground of unpatentability asserted in the Petition must be denied
`
`because it fails to establish that the asserted prior art discloses each
`
`limitation of the challenged claims. In particular, the Petition and the
`1
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`Decision rely on an incorrect interpretation of “whereupon the host device
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`communicates with the interface device by means of the driver for the
`
`storage device customary in a host device” as required in claim 1 and
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`“whereupon the host device communicates with the interface device by
`
`means of the specific driver for the multi-purpose interface” as required in
`
`claim 17. As properly construed in view of the clear and consistent teachings
`
`of ’449 specification, each of these claim terms requires that communication
`
`between the host device and the interface device be accomplished by the
`
`particular claimed driver, without resort to specialized, user-loaded software.
`
`The ’449 patent makes abundantly clear that communication between the
`
`host computer and the inventive interface device is accomplished using a
`
`customary driver typically found on a host computer, to the exclusion of
`
`specialized, user-installed drivers. (Ex. 1001 at 3:20–4:36, 11:26–44.)
`
`Contrary to these requirements of the claims, however, Aytac requires
`
`specialized software is implemented on the host computer to enable
`
`communication with Aytac’s disclosed “CaTbox” device, including the
`
`transfer of data to and from the CaTbox’s hard drive (“CaTdisc”) and the
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`disclosed modems located in the CaTbox. (Ex. 1005 at 10:52–11:64.)
`
`To construe the claims otherwise ignores explicit teachings of the
`
`’449 patent and defeats a primary object of the disclosed invention: host
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`device independence. (Ex. 1001 at 3:20–23, 4:10–36, 11:26–44.) Aytac does
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`not teach or suggest a system that communicates with a host computer
`
`without resort to specialized, user-loaded drivers, and therefore does not
`
`teach a host device independent interface device. Further, the relied upon
`
`references contain no teachings that suggest that such specialized drivers
`
`taught in Aytac are optional, or should be removed. Further, such
`
`modification to remove the specialized drivers would render the disclosed
`
`CaTbox inoperable, which weighs strongly against a finding that a POSITA
`
`would make such a modification to the CaTbox. Accordingly, the Petition
`
`fails to show that each challenged claim is unpatentable, and should be
`
`denied.
`
`Petitioner also fails to show that Aytac in view of the other asserted
`
`references discloses “wherein the interface device is arranged for simulating
`
`a virtual file system to the host” as required by claims 1 and 17. Lacking any
`
`teaching or suggestion of simulation of a file system in Aytac, Petitioner
`
`relies solely on conclusory, unsupported expert testimony. Petitioners also
`
`make a puzzling allegation that Aytac’s specialized virtual device drivers
`
`meet this limitation, but this argument fails because the virtual device
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`drivers are installed on the host computer and not the CaTbox device alleged
`
`to be the claimed interface device. Petitioner provides no explanation how
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`software installed on the host computer arranges the CaTbox for simulating
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`a virtual file system to the host, and accordingly the Petition fails to show
`
`that this limitation is disclosed by the asserted art.
`
`The Board should also reject the asserted ground because Petitioner
`
`fails to sufficiently identify and explain its precise invalidity legal theories
`
`and supporting evidence, in violation of the particularity required by the
`
`Board. Petitioner obscures the source of the alleged teachings of the prior art
`
`and even rely on non-prior art teachings of the challenged ’449 patent in
`
`support of its ground of invalidity. (See, e.g., Pet. at 43–46.) Although the
`
`single ground of invalidity is alleged to be based on Aytac (Ex. 1005) in
`
`view of the SCSI Specification (Ex. 1006), the MS-DOS Encyclopedia (Ex.
`
`1007), and alleged admitted prior art, Petitioner fails to provide a proper
`
`obviousness analysis, including considering each claimed invention as a
`
`whole, identification of the limitations not disclosed by Aytac, identification
`
`of where those limitations are taught by the SCSI Specification or the other
`
`asserted prior art, why and how the particular combination would have been
`
`made, i.e., “articulated reasoning with some rational underpinning to support
`
`the conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`418 (2007); Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Instead, the Petition treats the SCSI Specification and other asserted
`4
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`art as a seamless part of the Aytac disclosure. The result is that Petitioner
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`effectively alleges anticipation instead of obviousness of the challenged
`
`claims. Indeed, the word “obvious” does not even appear in the Petition.
`
`Never once conceding which claim limitations are missing from Aytac,
`
`Petitioner fails to clearly articulate any theory of obviousness premised on
`
`combining the teachings of Aytac, the SCSI Specification, the MS-DOS
`
`Encyclopedia, or the alleged admitted prior art.
`
`Papst notes that although it does not address every claim limitation in
`
`its response, this should not be interpreted that it does not dispute
`
`Petitioner’s contentions with respect to each claim limitation, nor the
`
`ultimate allegation that each challenged claim is obvious over the asserted
`
`ground of unpatentability. See In re Magnum Oil Tools Int’l, 829 F.3d 1364,
`
`1376-–77 (Fed. Cir. 2016) (holding that the burden of proof remains on
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`Petitioner throughout an IPR proceeding and does not shift to patent owner).
`
`Because Petitioners have failed to meet their burden to establish that the
`
`challenged claims are unpatentable by a preponderance of the evidence, the
`
`Petition must be denied.
`
`II. OVERVIEW OF THE ’449 PATENT
`
`The ’449 Patent involves a unique method for achieving high data
`
`transfer rates for data acquisition systems (e.g., still pictures, videos, voice
`5
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`recordings) to a general-purpose computer, without requiring a user to
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`purchase, install, and/or run specialized software for each system. (Ex. 1001
`
`at 3:26–30.) At the time of the invention, there were an increasing number
`
`and variety of data acquisition systems with the ability to capture high
`
`volumes of information. (Id. at 1:35–55.) As such, there was an increasing
`
`demand to transfer that information to commercially-available, general-
`
`purpose computers. (Id. at 1:21–34.) But at that time, performing that data
`
`transfer operation required either loading specialized, sophisticated software
`
`onto a general-purpose computer, which increases the risk of error and the
`
`level of complexity for the operator, or specifically matching interface
`
`devices for a data acquisition system to a host system that may maximize
`
`data transfer rates but lacks the flexibility to operate with different devices.
`
`(Id. at 1:12–3:19.)
`
`The ’449 Patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer
`
`rates, without specialized software, while being sufficiently flexible to
`
`operate independent of device or host manufacturers. (Id. at 3:26–30.) The
`
`resulting invention would allow a data acquisition system to identify itself as
`
`a type of common device so as to leverage the inherent capabilities of
`
`general-purpose, commercially-available computers.
`6
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`(Id. at 5:2–22.)
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`Accordingly, users could avoid loading specific software; improve data
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`transfer efficiency; save time, processing power, and memory space; and
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`avoid the waste associated with purchasing specialized computers or loading
`
`specific software for each device. (Id. at 3:26–30, 8:17–9:58, 10:9–15.) The
`
`’449 Patent claims variations of this concept and provides a crucial, yet
`
`seemingly simple, method and apparatus for a high data rate, device-
`
`independent information transfer. (Id. at 3:26–30.)
`
`The interface device disclosed in the ’449 Patent can leverage “drivers
`
`for input/output device[s] customary in a host device which reside in the
`
`BIOS system of the host device . . .” (Id. at 10:11–12; see also id. at 4:1–20
`
`(“The interface device according to the present invention therefore no longer
`
`communicates with the host device or computer by means of a specially
`
`designed driver but the means of a program which is present in the BIOS
`
`system . . .”), 5:6–8 (describing the use of “usual BIOS routines” to issue
`
`INQUIRY instructions to the interface), 7:11–21 (describing use of BIOS
`
`routines.)) Similarly, the written description describes also using drivers
`
`included in the operating system. (Id. at 4:63–66 (“Communication between
`
`the host system or host device and the interface device is based on known
`
`standard access commands as supported by all known operating systems
`
`(e.g., DOS®, Windows®, Unix®).”)) Alternatively, if the required specific
`7
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`driver or drivers for a multi-purpose interface (such as a SCSI interface) is
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`already present in a host device, such drivers could be used with the ’449
`
`Patent’s interface device instead of, or in addition to, customary drivers
`
`which reside in the BIOS. (Id. at 10:9–25.) Accordingly, the ’449 Patent
`
`contemplated a universal interface device that could operate independent of
`
`the manufacturer of the computer. (Id. at 11:7–10.) Indeed, the preferred
`
`embodiment discloses that the interface device includes three different
`
`connectors, a 50-pin SCSI connector 1240, a 25-pin D-shell connector 1280,
`
`and a 25-pin connector 1282, to allow the ’449 Patent’s interface device to
`
`connect to a variety of different standard interfaces that could be present in a
`
`host computer. (Id. at 8:30–47 and FIG. 2.)
`
`III. OVERVIEW OF THE APPLIED ART
`
`A. Aytac’s CaTbox Requires User-Loaded Specialized
`Software On The Host Computer To Communicate And
`Function Properly
`
`Aytac discloses a specialized device to allow communication between
`
`a computer and multiple peripheral devices. Aytac’s title is “Computing and
`
`communications transmitting, receiving system, with a push button interface,
`
`that is continuously on, that pairs up with a personal computer and carries
`
`out mainly communications related routine tasks.” (Ex. 1005 at 1.) As the
`
`title suggests, Aytac generally relates to a telecommunications apparatus or
`8
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`“Personal Communicator” in the form of an embedded computer called
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`PATENT OWNER RESPONSE IN IPR2017-00713
`U.S. PATENT NO. 6,895,449
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`“CaTbox” (so named because the device “sits between a Computing and a
`
`Telecommunications apparatus.”) (Id. at 4:8–20.) Given the complexity of
`
`managing connections to many devices, Aytac discloses specialized software
`
`needed for the device to function properly.
`
`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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`Canon Inc. v. Papst Licensing GMBH & Co., KG, IPR2016-01200, Paper 8
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`at 16–17 (PTAB Dec. 15, 2016).) Even when viewed from this limited
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`perspective, the Source Code supports Papst’s position that specialized
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`software must be installed on the host computer for Aytac’s CaTbox to work
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`properly—why else would the inventor feel compelled to include such
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`software with Aytac’s patent application? Because Mr. Aytac felt it was
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`needed for the CaTbox to work. If only regularly-available software were
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`needed for operation of the CaTbox, none of this specialized software would
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`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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`PATENT OWNER RESPONSE IN IPR2017-00713
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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…” (Pet. at
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`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
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`of ordinary skill would know to check file history of the Aytac application
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`when 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 IPR2016-01199 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. (Pet. at 21.) A
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`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 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
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`that computer program listings, if 10 printed pages or less, must be
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`submitted as part of the specification or drawings, but if 11 pages or more,
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`should be submitted “[a]s an appendix which will not be printed.” (Ex. 2003
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`at 2–3 (quoting 37 C.F.R. § 1.96 (a), (b)).) Although 37 C.F.R. § 1.96(b)
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`concludes with the sentence that “[a]ll computer program listings submitted
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`on paper will be printed as part of the patent” (id. at 3), the 450-page
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`program listing submitted was not in fact printed as part of the Aytac patent.
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`Thus, because the owner of the Aytac patent failed to have the patent
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`corrected to include the program listing, the program listing is not a part of
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`the Aytac written description. This would be the case even if Aytac had
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`included a reference to the program listing in the specification, which he
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`failed to do. See Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280,
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`1295 (Fed. Cir. 2000) (source code not part of patent even though patent
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`stated source code was incorporated in appendix because source code was
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`not printed with patent and was not part of specification, even though filed
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`with application); Solaia Tech. LLC v. Arvinmeritor, Inc., 2003 U.S. Dist.
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`LEXIS 16482, at *21–22 (N.D. Ill. Sept. 17, 2003) (where source code was
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`referenced in the patent, but did not append it to certified copy or have
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`required reference to appendix at the required location after the title of the
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`invention and before the summary of the invention, source code was not
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`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.
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`§ 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
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`patent issued and published (and when the file wrapper became publicly
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`available), it still would not be prior art under 35 U.S.C. §§ 102(a) or (b) to
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`the ’449 patent, which has a priority date of March 4, 1997 and an effective
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`filing date as of March 3, 1998. Thus, the unpublished Aytac source code is
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`not prior art for the purposes of this inter partes review. Accordingly, to the
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`extent Petitioner relies on the Aytac source code as prior art, the Board must
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`disregard this evidence.
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`B. American National Standard For Information Systems –
` Small Computer System Interface-2 (“SCSI Specification”)
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`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. 10