`
`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 IPR2017-00714
`Patent 6,470,399 B2
`____________________
`
`PAPST LICENSING GMBH & CO. KG’S
`PRELIMINARY RESPONSE
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`
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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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`PRELIMINARY RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ................................................................................ 1
`I.
`OVERVIEW OF THE ‘399 PATENT ................................................. 5
`II.
`III. OVERVIEW OF THE APPLIED ART ............................................. 10
`A. Aytac’s CaTbox Requires User-Loaded Specialized
`Software On The Host Computer To Function Properly ......... 10
`American National
`Standard
`For
`Information
`Systems – Small Computer System Interface-2 (“SCSI
`Specification”) .......................................................................... 15
`U.S. Patent No. 6,522,432 to Lin ............................................. 15
`C.
`D. Alleged Admitted Prior Art ...................................................... 16
`IV. LEVEL OF ORDINARY SKILL IN THE ART ................................ 17
`V.
`CLAIM CONSTRUCTION ............................................................... 18
`A. Data transmit/receive device .................................................... 19
`B.
`“The driver for the input/output device customary in a host
`device” ...................................................................................... 21
`“The usual driver for the input/output device” ........................ 23
`C.
`“An input/output device customary in a host device.” ............ 23
`D.
`“Interface device” ..................................................................... 24
`E.
`VI. THE PETITION FAILS TO MEET THE REQUIREMENTS
`FOR INSTITUTING AN INTER PARTES REVIEW ........................ 24
`A.
`The Board Should Not Institute Trial Based on The
`Petition’s Redundant Grounds ................................................. 24
`The Petition Fails To Provide A Proper Obviousness
`Analysis .................................................................................... 28
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`B.
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`B.
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`C.
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`Aytac Does Not Disclose “Whereupon The Host Device
`Communicates With The Interface Device By Means Of
`The Driver For The Input/Output Device Customary In a
`Host Device” As Required In Claim 1, “Whereupon The
`Host Device Communicates With The Interface Device By
`Means Of The Specific Driver For The Multi-Purpose
`Interface” As Required In Claim 11, or “Whereupon The
`Host Device Communicates With The Interface Device By
`Means Of The Usual Driver For The Input/Ouput Device”
`As Required By Claim 14 ........................................................ 31
`i.
`Aytac Intended CaTbox To Be A Multitasking
`Device To Solve The Problem Of Integrating
`Operation Of Multiple Devices With A PC ................... 34
`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 ........................................................ 37
`VII. CONCLUSION .................................................................................. 40
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`EXHIBIT LIST
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`Ex. No. Description
`1001
`U.S. Patent No. 6,470,399 to Tasler
`1002
`File History for U.S. Patent No. 6,470,399
`1003
`Declaration of Kevin C. Almeroth
`1004
`Curriculum vitae of Kevin C. Almeroth
`1005
`U.S. Patent No. 5,758,081 to Aytac
`Am. Nat’l Standards Inst. Inc., Am. Nat’l Standard for Info.
`Sys’s Small Computer System Interface-2, ANSI X3. 131-1994
`(1994) (“SCSI Specification”)
`U.S. Patent No. 6,522,432 to Lin
`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., et al., 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 Filed German Priority Document Patent Application
`197 08 755.8
`
`1006
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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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`‘399 German Application Publication (DE 197 08 755)
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`1013
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`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
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`Certified Translation of Published ‘399 German
`Application (DE 197 08 755)
`English Translation of PCT Application PCT/EP98/01187
`(published as PCT Pub. No. WO98/38710)
`U.S. Patent No. 4,589,063
`U.S. Patent No. 5,038,320
`U.S. Patent No. 5,787,246
`Rufus P. Turner et al., The Illustrated Dictionary of Electronics
`(1991)
`IPR2016-1200, Paper No. 8
`Source code submitted with the Aytac application in 1995
`Papst’s Brief, In re Papst Licensing Digital Camera Patent
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`Litig., No. 2014-1110 (Fed. Cir., February 20, 2014)
`Declaration of Thomas Gafford
`(Reserved)
`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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`2001
`2002
`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 1-3, 5, 6, 11, 14, and 15 of U.S. Patent No. 6,470,399 (“the ’399
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`patent”). This Response is supported by the declaration of Papst’s retained
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`qualified technical expert, Thomas Gafford (Ex. 2001), as well as other
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`accompanying exhibits. Papst requests that the Board not institute inter partes
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`review for 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); 35 U.S.C. § 314(a). While it is not required to file a preliminary
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`response (37 C.F.R. § 42.107(a)), Papst takes this limited opportunity to point
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`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 ’399 patent in support of its
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`ground of invalidity. (See, e.g., Pet. at 56-61.)1 Although the single ground of
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`invalidity is alleged to be based on U.S. Patent No. 5,758,081 to Aytac
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`(“Aytac”) (Ex. 1005) in view of the SCSI Specification (Ex. 1006), U.S.
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`Patent No. 6,522,432 to Lin (“Lin”) (Ex. 1007), and alleged admitted prior
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`art, Petitioner fails to provide a proper obviousness analysis, including
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`1 Because the Petition lacks page numbers, Papst will refer to the pages as if
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`they were numbered starting with the page with the heading “I. Introduction”
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`as page 1. The Petition contains numerous similar informalities including the
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`failure to provide as an exhibit the waiver of service relied upon for
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`Petitioners’ argument that the Petition was timely filed. (Pet. at 7, incorrectly
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`citing Ex. 1012).
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`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. of Kansas City, 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 if it were a seamless part of the Aytac disclosure and alleges little more
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`than all of the limitations of the claims were known when all of the asserted
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`art is combined. (See, e.g., Pet. at 27-28.) This is insufficient reasoning to
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`support obviousness. In re NuVasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir.
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`2016). The result is that Petitioner effectively alleges anticipation instead of
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`obviousness of the challenged claims. Indeed, the word “obvious” only
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`appears once in the Petition. Never once conceding which claim limitations
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`are missing from Aytac, Petitioner fails to clearly articulate any theory of
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`obviousness premised on combining the teachings of Aytac, the SCSI
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`Specification, Lin, 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
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`another inter partes review petition filed by Petitioner against the ’399 patent.
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`Petitioner’s two petitions against the ’399 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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`Mut. Ins. Co. v. Progressive Casualty Insurance Co., CBM2012-00003, Paper
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`7 (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, independent claim 1 of the ‘399 patent requires that
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`“whereupon the host device communicates with the interface device by means
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`of the driver for the input/output device customary in a host device,”
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`independent claim 11 requires, “whereupon the host device communicates
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`with the interface device by means of the specific driver for the multi-purpose
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`interface”, and independent claim 14 requires “whereupon the host device
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`communicates with the interface device by means of the usual driver for the
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`input/output device.” The specification of the ‘399 patent makes clear that the
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`communication between the host computer and the interface device is
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`accomplished using a customary driver typically found on a host computer,
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`without needing a specialized, user-installed driver. (Ex. 1001 at 3:25-4:39,
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`12:26-40.) Contrary to the requirements of the claims, however, Aytac teaches
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`that specialized software is indeed required on the host computer to enable
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`communication with Aytac’s disclosed “CaTbox” device, including the
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`transfer of files to and from the CaTbox’s hard drive (“Catdisc”) and
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`communications with the disclosed modems located in the CaTbox. (Ex. 1005
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`at 10:52-11:64.)
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`Papst does not attempt to fully address the numerous other deficiencies
`
`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 ‘399 PATENT
`The ’399 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 4:23-27.) 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 1:34-53.) 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 1:20-33.) 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 1:17-
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`3:21.)
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`The ‘399 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 2:17-36 3:24-27.) The
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`resulting invention would allow a data acquisition system to identify itself as
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`a type of common device so as to leverage the inherent capabilities of general-
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`purpose, commercially-available computers. (Id. at 5:6-20.) Accordingly,
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`users could avoid loading specific software; improve data transfer efficiency;
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`save time, processing power, and memory space; and avoid the waste
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`associated with purchasing specialized computers or loading specific software
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`for each device. (Id. at 3:24-27, 8:23-9:58, 9:23-34, and 12:23-41.) The ‘399
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`Patent claims variations of this concept and provides a crucial, yet seemingly
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`simple, method and apparatus for a high data rate, device-independent
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`information transfer. (Id. at 3:24-27.)
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`The interface device disclosed in the ‘399 Patent can leverage “drivers
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`for input/output device[s] customary in a host device which reside in the BIOS
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`system of the host device . . . ” (Id. at 11:9-15; see also id. at 5:13-17 (“The
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`interface device according to the present invention therefore no longer
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`communicates with the host device or computer by means of a specially
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`designed driver but the means of a program which is present in the BIOS
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`system . . . ”), 6:2-9 (describing the use of “usual BIOS routines” to issue
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`INQUIRY instructions to the interface), and 8:43-50 (describing use of BIOS
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`routines).) Similarly, the written description describes also using drivers
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`included in the operating system. (Id. at 5:64-6:3 (“Communication between
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`the host system or host device and the interface device is based on known
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`standard access commands as supported by all known operating systems (e.g.,
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`DOS®, Windows®, Unix®).”).) Alternatively, if the required specific driver
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`or drivers for a multi-purpose interface (such as a SCSI interface) is already
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`present in a host device, such drivers could be used with the ‘399 Patent’s
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`interface device instead of, or in addition to, customary drivers which reside
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`in the BIOS. (Id. at 11:9-12.) Accordingly, the ‘399 Patent contemplated a
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`universal interface device that could operate independent of the manufacturer
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`of the computer. (Id. at 12:23-40.) Indeed, the preferred embodiment discloses
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`that the interface device includes three different connectors, a 50 pin SCSI
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`connector 1240, a 25 pin D-shell connector 1280, and a 25 pin connector 1282,
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`to allow the ‘399 Patent’s interface device to connect to a variety of different
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`standard interfaces that could be present in a host computer. (Id. at 9:30-47
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`and FIG. 2.)
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`As is apparent from the title of the ’399 Patent, the interface device
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`disclosed is capable of acquiring and processing analog data. As shown in
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`Figure 2 reproduced below, the ’399 Patent discloses that the interface device
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`10 has an analog input at a connection 16 for receiving analog data from a
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`data transmit/receive device on a plurality of analog input channels 1505 and
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`simultaneously digitizing the received analog data using, inter alia, a sample
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`and hold amplifier 1515 and an analog to digital converter 1530 that converts
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`analog data received from the plurality of channels 1505 into digital data that
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`may then be processed by the processor 1300. (Id. at 9:49-64 and 10:27-41.)
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`“Each sample/hold circuit is connected to a corresponding input of an 8-
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`channel multiplexer 1520 which feeds its output signals via a programmable
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`amplifier 1525 into an analog/digital converter (ADC).” (Id. at 9:55-58.) This
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`arrangement of sample/hold circuits permits a single ADC to be used even
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`when multiple analog data channels are being utilized. (Id. at 9:49-64.)
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`The Petition challenges the priority date of the ‘399 patent, arguing that
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`it is only entitled to the filing date of the PCT application, and not the earlier
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`German application, because the German application allegedly fails to
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`disclose a multi-purpose interface. (Pet. at 10-12.) Whether the ‘399 patent is
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`entitled to the earlier German priority date does not appear to change the prior
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`art status of any of the references relied upon in the alleged grounds of
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`unpatentability. Should the Board, however, decide to address this issue in
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`this petition, the Board has already soundly rejected this same argument in
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`IPR2016-01843. (See Apple Inc. v. Papst Licensing GmbH & Co. KG,
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`IPR2016-01843, Paper 13 at 11-13 (PTAB March 10, 2017) (denying
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`institution of inter partes review).
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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 “[Petitioner] reserves the right to use [the Source
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`Code] as prior art should the PTAB allow it to do so, Petitioner has used the
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`Aytac source code only as evidence showing what would be known to a POSA
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`at or around the time of the invention of the ‘399 patent.” (Pet. at 21.)
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`However, Petitioner does not explain the difference between prior art and
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`“what would be known to a POSA at the time of the invention of the invention
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`of the ‘399 patent.” Papst presumes Petitioner intended to use the Aytac
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`Source Code only as evidence of the level of ordinary skill in the art at or
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`around the time of the invention of the ‘399 patent.
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`Nevertheless, Petitioner argues that “reference to programming for the
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`interface device of the ‘081 patent, and manners of implementation of that
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`interface device [] would direct one of skill in the art to the attached source
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`code filed with the Atyac [sic] application.” (Id.) Petitioner does not explain
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`how one of ordinary skill would know to check file history of the Aytac
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`application when there is no reference to the source code found in the
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`application. More importantly, the file history would not have been publicly
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`available until the issuance of the Aytac patent, which is too late for the file
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`history to become prior art to the ‘399 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. (Id.) A closer
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`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 Examining Procedure § 608.05, 6th ed., rev.
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`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 “as 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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`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, 1161 (Fed. Cir. 1989) (holding thesis not to be a printed publication
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`despite being available in a library and indexed by the author’s name because
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`index 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 ’399
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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. U.S. Patent No. 6,522,432 to Lin
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`Petitioner cites to Lin for disclosure of a scanner having a CCD,
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`sampling circuit, and A/D converter. (Pet. at 27, erroneously citing Ex. 1008
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`instead of Ex. 1007.) However, Lin also does not describe how a standard
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`SCSI driver can support the full functionality of Aytac’s CaTbox.
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`D. Alleged Admitted Prior Art
`The Petition relies in part on statements in the ‘399 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 ‘399 patent with the disclosure of Aytac.
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`(See, e.g., Pet. at 18: “The ‘399 discloses that ‘[g]enerally speaking, this multi-
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`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 11:19-22. This is exactly what Aytac’s ASPI2DOS.SYS driver
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`does”; Pet. at 56: “The following paragraphs include a detailed discussion of
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`first the ‘399 Patent’s description of its recognition process, followed by the
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`nearly identical recognition process in Aytac.”) However, when one actually
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`reviews the portions of Aytac cited by Petitioner, it is clear that Aytac’s
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`disclosure is neither “nearly identical” nor analogous to that of the ‘399 patent.
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`Regardless, the Petition does not demonstrate how the ’399 patent’s
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`statements have any bearing on whether Aytac’s CaTbox renders those
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`claimed inventions 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 ‘399 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.” (Pet. at 8.) According to Petitioner, “[a]
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`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 1:9-13.) A POSITA would have at least a bachelor’s degree in a related
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`field such as computer engineering or electrical engineering and at least three
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`years of experience in the design, development, and/or testing of hardware and
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`software components involved with data transfer or in embedded devices and
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`their interfaces with host systems. Alternatively, a POSITA may have five or
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`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 ‘399 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 Architecture
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`LLC, IPR2015-01502, Paper 14 at 8 (PTAB January 6, 2016); see also Sony
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`Corp. v. Cascades Projection LLC, IPR2015-01846, Paper 13 at 5, (PTAB
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`February 26, 2016); Terremark North Am. LLC v. Joao Control & Monitoring
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`Systems LLC, IPR2015-01477, Paper 10 at 8 (PTAB Jan. 8, 2016).
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`Accordingly, the correct standard for claim construction is the ordinary
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`meaning, as would be understood by a person of ordinary skill in the art at the
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`time of the invention in view of the specification. In re Rambus, Inc., 694 F.3d
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`42, 46 (Fed. Cir. 2012); Square, Inc. v. J. Carl Cooper, IPR2014-00157, Paper
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`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 an
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