Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: June 21, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC. and ZTE Corporation,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00714
`Patent 6,470,399 B1
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 10
`
`
`
` Entered: June 21, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC. and ZTE Corporation,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00714
`Patent 6,470,399 B1
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00714
`Patent 6,470,399 B1
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, identified above, filed a corrected Petition requesting inter
`
`partes review of claims 1–3, 5, 6, 11, 14, and 15 (“the challenged claims”)
`
`of U.S. Patent No. 6,470,399 B1 (Ex. 1001, “the ’399 patent”). Paper 9
`
`(“Pet.”). Papst Licensing GmbH & Co., KG (“Patent Owner”) filed a
`
`Preliminary Response. Paper 8 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless the information presented in the petition “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`
`we determine that, on this record, Petitioner has established a reasonable
`
`likelihood that it would prevail with respect to the challenged claims. We
`
`hereby institute an inter partes review as to the challenged claims.
`
`A. Related Matters
`
`The parties indicate that the ’399 patent is involved in Papst Licensing
`
`GmbH & Co. KG v. Huawei Technologies Co., Ltd., Case No. 6:15-cv-
`
`01115 (E.D. Tex.) and other proceedings. Pet. 4–6; Paper 4, 2–5.
`
`B. The ’399 Patent
`
`The ’399 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, 1:9–13,
`
`1:48–51. According to the ’399 patent, using a specific driver to match very
`
`closely to an individual host system would achieve high data transfer rates
`
`across the interface, but the specific driver cannot be used with other host
`
`systems. Id. at 1:65–2:13. Several solutions to this problem were known in
`2
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`
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`IPR2017-00714
`Patent 6,470,399 B1
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`the art. Id. at 2:16–3:21. For example, IOtech introduced an interface
`
`device for laptops, using a plug-in card for converting the personal computer
`
`memory card association (“PCMCIA”) interface into a known standard
`
`interface (“IEEE 1284”). Id. at 2:19–24. The plug-in card provided a
`
`printer interface for enhancing data transfer rates. Id. at 2:24–28. In another
`
`example, a floppy disk drive interface was used for connecting a host device
`
`to a peripheral device. Id. at 3:6–10. The interface appeared as a floppy
`
`disk drive to the host, allowing a floppy disk drive and another peripheral
`
`device to be connected to the host device. Id. at 3:13–15.
`
`The ’399 patent indicates that its “invention is based on the finding
`
`that both a high data transfer rate and host device-independent use can be
`
`achieved if a driver for an input/output device customary in a host device” is
`
`utilized. Id. at 4:23–27. Figure 1 of the ’399 patent, reproduced below,
`
`illustrates a block diagram of an interface device.
`
`As shown in Figure 1, interface device 10 connects to a host device
`
`via host line 11, and to a data transmit/receive device via output line 16. Id.
`
`at 5:47–63. Interface device 10 includes first connecting device 12, second
`
`connecting device 15, digital signal processor 13, and memory means 14.
`
`
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`3
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`IPR2017-00714
`Patent 6,470,399 B1
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`Id. In a preferred embodiment, the interface device is attached to a host
`
`device via a multi-purpose interface—e.g., a small computer systems
`
`interface (“SCSI”)—which includes both an interface card and the driver for
`
`the interface card. Id. at 4:40–46, 8:29–32. According to the ’399 patent,
`
`SCSI interfaces were known to be present on most host devices or laptops.
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`Id. at 9:32–33. By using a standard interface of a host device and by
`
`simulating an input/output device to the host device, the interface device “is
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`automatically supported by all known host systems without any additional
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`sophisticated driver software.” Id. at 12:23–29.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 11, and 14 are independent. Each
`
`of claims 2–3, 5, and 6 depends directly or indirectly from claim 1.
`
`Claim 15 depends directly from claim 14. Claim 1 is illustrative and is
`
`reproduced below with disputed limitations emphasized:
`
`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, the data transmit/receive device being
`arranged for providing analog data, comprising:
`
`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
`
`a second connecting device for interfacing the interface device
`with the data transmit/receive device, the second connecting
`device including a sampling circuit for sampling the analog data
`provided by the data transmit/receive device and an analog-to-
`
`4
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`IPR2017-00714
`Patent 6,470,399 B1
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`digital converter for converting data sampled by the sampling
`circuit into digital data,
`
`wherein the interface device is configured by the processor and
`the memory to include a first command interpreter and a second
`command interpreter,
`
`wherein the first command interpreter is configured in such a
`way that the command interpreter, when receiving an inquiry
`from the host device as to a 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 an
`input/output device customary in a host device, whereupon the
`host device communicates with the interface device by means of
`the driver for the input/output device customary in a host device,
`and
`
`wherein the second command interpreter is configured to
`interpret a data request command from the host device to the type
`of input/output device signaled by the first command interpreter
`as a data transfer command for initiating a transfer of the digital
`data to the host device.
`
`Ex. 1001, 12:42–13:12 (emphases added).
`
`
`
`Petitioner relies upon the references listed below.
`
`D. Applied References
`
`Lin
`
`
`
`Aytac
`
`US 6,522,432 B1
`
`Feb. 18, 2003
`
`(Ex. 1007)
`
`US 5,758,081
`
`
`
`May 26, 1998
`
`(Ex. 1005)
`
`Aytac’s source code in U.S. Patent Application No. 08/569,846
`(Ex. 1020, 77–527, “Aytac’s source code”).
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`
`5
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`IPR2017-00714
`Patent 6,470,399 B1
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`Interface-2, ANSI X3.131-1994 (1994) (Ex. 1006, “the SCSI
`Specification”).1
`
`Admitted Prior Art in the ’399 patent (see, e.g., Ex. 1001, 4:23–30,
`4:42–44, 5:10–13, 5:64–67, 6:7–19, 6:22–32, 6:28–32, 9:32–38, 11:9–22).
`
`E. Asserted Ground of Unpatentability
`
`Petitioner asserts that each of claims 1–3, 5, 6, 11, 14, and 15 is
`
`unpatentable under § 103(a)2 as obvious over Aytac, the SCSI Specification,
`
`Lin, and the Admitted Prior Art in the ’399 patent (Ex. 1001). Pet. 7.
`
`II. DISCUSSION
`
`A. Claim Construction
`
`Patent Owner indicates that the ’399 patent will expire on March 3,
`
`2018 (20 years from the ’399 patent’s March 3, 1998, filing date (Ex. 1001
`
`[22]))—most likely prior to a final written decision in this proceeding. PO
`
`Resp. 18. Claims of an expired patent are given their ordinary and
`
`customary meaning similar to the claim construction standard applied by the
`
`U.S. district courts. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005) (en banc); In re Rambus Inc., 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. district court standard to construe the
`
`claims of an expired patent in an inter partes review).
`
`
`
`1 Citations to the SCSI Specification refer to the original page numbers.
`
`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.
`§ 103 in this Decision.
`
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`Patent 6,470,399 B1
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`
`We have considered all judicial claim construction decisions
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`submitted by the parties. Ex. 1008; Ex. 2004. Although a district court’s
`
`interpretation of a claim term recited in the involved patent is instructive,
`
`we, nevertheless, are not bound by that construction. See Power
`
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is no
`
`dispute that the board is not generally bound by a prior judicial construction
`
`of a claim term.”). Further, we observe that the parties’ arguments and
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`supporting evidence submitted here may be different than those presented in
`
`the district court proceedings.
`
`In any event, the U.S. Court of Appeals for the Federal Circuit
`
`provided constructions for certain terms of the challenged claims of the ’399
`
`patent under the U.S. district court standard in connection with a related,
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`district court proceeding involving the ’399 patent. In re Papst Licensing
`
`Digital Camera Patent Litigation, 778 F.3d 1255 (Fed. Cir. 2015) (Ex.
`
`1008). Therefore, for purposes of this Decision, we apply those claim
`
`constructions set forth in the Federal Circuit’s decision in Papst (reproduced
`
`in the table below).
`
`Claim term
`
`District Court
`Construction
`
`CAFC Holding
`
`“interface
`device”
`
`may not be “a permanent
`part of either the data
`transmit/receive device or
`the host device/computer.”
`Papst, 778 F.3d at 1262.
`
`“is not limited to… a
`device that is physically
`separate and apart from,
`and not permanently
`attached to, a data device
`(or a host computer).” Id.
`
`7
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`IPR2017-00714
`Patent 6,470,399 B1
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`
`Claim term
`
`District Court
`Construction
`
`CAFC Holding
`
`“second
`connecting
`device”
`
`“a physical plug or socket
`for permitting a user readily
`to attach and detach the
`interface device with a
`plurality of dissimilar data
`transmit/receive devices.”
`Id. at 1264.
`
`does not require “a
`physical plug, socket, or
`other structure that
`permits a user to readily
`attach and detach
`something else.” Id. at
`1265.
`
`“data transmit/
`receive device”
`
`“virtual files”
`
`“input/output
`device
`customary in a
`host device”
`
`“a device that is capable of
`either (a) transmitting data to
`or (b) transmitting data to
`and receiving data from the
`host device when connected
`to the host device by the
`interface device.” Id. at
`1265.
`
`“files that appear to be but
`are not physically stored;
`rather they are constructed
`or derived from existing data
`when their contents are
`requested by an application
`program so that they appear
`to exist as files from the
`point of view of the host
`device.” Id. at 1267.
`
`“data input/output device
`that was normally present
`within the chassis of most
`commercially available
`computers at the time of the
`invention.” Id. at 1270.
`
`8
`
`“need not be capable of
`communicating ‘when
`connected to the host
`device by the interface
`device.’” Id. at 1266.
`
`not limited to a file
`“whose content is stored
`off the interface device,
`though it includes such
`files.” Id. at 1268.
`
`not limited to a device
`“‘normally present within
`the chassis’ of a
`computer.” Id. (emphasis
`in original).
`
`
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`IPR2017-00714
`Patent 6,470,399 B1
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`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. 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
`
`in the art at the time of the invention “would have had at least a four-year
`
`degree in electrical engineering, computer science, or related field of study
`
`. . . and would also have either a master’s degree, or at least two years of
`
`
`
`3 Patent Owner does not present arguments regarding objective evidence of
`nonobviousness in the Preliminary Response.
`9
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`Patent 6,470,399 B1
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`experience in one of the relevant fields, computer science, computer
`
`systems, or peripheral devices.” Ex. 1003 ¶ 47 (emphasis added). Patent
`
`Owner confirms that Petitioner’s statements regarding the level of ordinary
`
`skill in the art are 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. 17 (citing Ex. 2001 ¶ 17).
`
`On this record, we do not discern a meaningful difference 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 appears to satisfy either assessment.
`
`Ex. 1003 ¶¶ 48, 49; see Ex. 1004. Our analysis in this Decision is supported
`
`by either assessment, but, for purposes of this Decision, we adopt
`
`Petitioner’s assessment.
`
`D. Obviousness over Aytac, the SCSI Specification, Lin,
`and the Admitted Prior Art in the ’399 Patent
`
`Petitioner asserts that claims 1–3, 5, 6, 11, 14, and 15 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over the combined teachings of Aytac,
`
`the SCSI Specification, Lin, and the Admitted Prior Art in the ’399 patent.
`
`Pet. 7, 26–73. Patent Owner opposes. Prelim. Resp. 24–40.
`
`Based on the evidence in this record, we determine that Petitioner has
`
`established that there is reasonable likelihood that Petitioner would prevail
`
`10
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`IPR2017-00714
`Patent 6,470,399 B1
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`with respect to this ground of unpatentability. In our discussion below, we
`
`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, Abs. 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
`
`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 Abs.
`
`CaTbox receives faxes, voice mails, emails, and stored them on CaTdisc. Id.
`
`11
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`IPR2017-00714
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`Overview of the SCSI Specification
`
`
`
`The SCSI Specification is a technical specification published by the
`
`American National Standard for Information Systems, which sets 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, Abs. 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 Abs. “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 Lin
`
`
`
`Lin describes an image scanner with automatic signal compensation.
`
`Ex. 1007, Abstract. Figure 2 of Lin is reproduced below.
`
`12
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`
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`Figure 2 of Lin illustrates a block diagram of signal compensation circuit 24
`
`attached to charged coupled device (“CCD”) line image sensor 22. Id. at
`
`2:56–58. Signal compensation circuit 24 comprises signal amplifier 30 for
`
`amplifying the image signal and brightness signal from line image sensor 22
`
`to an appropriate voltage level, analog-to-digital (“A/D”) converter 32,
`
`sampling circuit 34 for sampling the brightness signal and generating a
`
`sample voltage Vs, and brightness compensation circuit 36. Id. at 3:14–24.
`
`Overview of the Admitted Prior Art in the ’399 Patent
`
`
`
`According to the ’399 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, 4:23–30, 5:10–13; 11:9–
`
`12:23. The ’399 patent indicates that SCSI interfaces and SCSI drivers were
`
`known in the art at the time of the invention. Id. at 9:32–38, 11:13–15.
`
`According to the ’399 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 4:42–44, 9:32–33,
`
`11:9–22. Moreover, certain standard access commands, including the SCSI
`
`INQUIRY command, were “supported by all known operating systems (e.g.,
`
`13
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`Patent 6,470,399 B1
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`[DOS®, Windows®, and Unix®]).” Id. at 5:64–67, 6:7–19, 6:22–32. The
`
`’399 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
`
`6:28–32.
`
`Analysis
`
`Petitioner provides explanations to account for all of the claim
`
`limitations recited in claims 1, 11, and 14, and a reason to combine the
`
`teachings of Aytac, SCSI Specification, and Lin, citing Dr. Almeroth’s
`
`Declaration for support. Pet. 26–73; Ex. 1003. In support of its contentions,
`
`Petitioner provides the following annotated version of Aytac’s Figure 2.
`
`As shown in the annotated Figure 2, Petitioner takes the position that:
`
`(1) Aytac’s CaTbox (annotated in red) discloses the claimed interface
`14
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`Patent 6,470,399 B1
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`device; (2) X86 processor 201 and its associated chipset 221 (annotated in
`
`purple) disclose the claimed processor; (3) RAM 203 and/or BIOS EPROM
`
`222 (annotated in brown) disclose the claimed memory; (4) SCSI connector
`
`213, SCSI protocol chip 202, and the associated circuitry disclose (annotated
`
`in blue) the claimed first connecting device; and (5) data/fax/voice modem
`
`daughterboard connectors 208–211, I/O chip 204, parallel printer connector
`
`214, ATA/IDE hard disk connector 205, ISA bus 290, X86 processor 201,
`
`processor’s chipset 221, SCSI interface and chip 201/213, RAM 203, keypad
`
`connector 206, LCD connector 207, LED device connector 223, and
`
`associated circuitry (annotated in green) disclose the claimed second
`
`connecting device. Pet. 39–47 (citing Ex. 1005, 9:5–15, Fig. 2).
`
`Petitioner also asserts that Aytac’s CaTbox is an interface device for
`
`communication between a host device (host PC) and a data transmit/receive
`
`device that provides analog data (e.g., scanner, fax modems, and
`
`microphones). Pet. 28–41. Figure 1 of Aytac is reproduced below with
`
`annotations added by Petitioner (id. at 45).
`
`As illustrated by annotated Figure 1 above, the link between host PC
`
`101 and CaTbox 102 is SCSI cable 113. Ex. 1005, 7:57–62, 8:63–66.
`15
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`Petitioner contends that any device tied into the SCSI bus would be required
`
`to have a SCSI interface and, therefore, CaTbox 102 is connected to host PC
`
`101 via a SCSI interface, which is a multi-purpose interface. Pet. 29–30
`
`(citing Ex. 1005, Abstract, 8:63–66; Ex. 1001, 4:42–44).
`
`Petitioner also argues that the combined teachings of Aytac, the SCSI
`
`Specification, Lin, and Admitted Prior Art in the ’399 patent teach or
`
`suggest the limitation that “the host device communicates with the interface
`
`device by means of the driver for the input/output device customary in a host
`
`device,” as recited in claims 1 and 14, and the “the host device
`
`communicates with the interface device by means of the specific driver for
`
`the multi-purpose interface,” as recited in claim 11. Pet. 31–32. As support,
`
`Petitioner notes that Aytac discloses a driver for the hard disk (input/output
`
`device) that is customary on the host computer—an advanced SCSI
`
`programming interface (“ASPI”) driver, such as “ASPIDISK.SYS”—and
`
`using an ASPI driver as the SCSI interface specific driver. Id. (citing
`
`Ex. 1005, 10:53–66; Ex. 1001, 11:9–12:23; Ex. 1003 ¶¶ 103–04, 106).
`
`In its Preliminary Response, Patent Owner counters that Aytac does
`
`not disclose those “driver” limitations recited in claims 1, 11, and 14.
`
`Prelim. Resp. 31–40. 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 communicate with Aytac’s CaTbox.” Id. at 32–33 (emphasis added);
`
`Ex. 2001 ¶¶ 51–58. According to Patent Owner, “Aytac neither discloses
`
`nor suggests that the host computer can communicate with the CaTbox
`
`solely by means of the driver for a storage device customary in a host device
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`or by means of the specific driver for the multi-purpose interface.” Id. at 34
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`(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 modem or modems, and a remote fax device.” Id. at 36. 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 beyond the ASPIDISK.SYS and ASPI2DOS.SYS drivers.” Id. at
`
`34–40; Ex. 2001 ¶¶ 35–46.
`
`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, Lin,
`
`and the Admitted Prior Art in the ’399 patent at least suggest to a person of
`
`ordinary skill in the art the aforementioned “driver” limitations. See
`
`Ex. 1003 ¶¶ 103–105, 139–141, 144. Based on the evidence in the present
`
`record, we are not persuaded otherwise by Patent Owner’s arguments.
`
`Notably, Patent Owner’s arguments and Mr. Gafford’s supporting
`
`testimony rest on the premise that Aytac’s host device cannot have programs
`
`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. 31–40;
`
`Ex. 2001 ¶¶ 35–46; see Prelim. Resp. 39–40 (“Such a modification is not
`
`suggested by Aytac, in view of the explicit teachings of the Aytac
`
`specification that such specialized drivers be included to enable the myriad
`
`of functions performed by the CaTbox for the host PC.”).
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`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 36 (“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 ’399 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/out devices customary in a host
`
`device which are found in practically all host devices.” Ex. 1001, 4:23–44,
`
`5:10–13, 9:32–33, 11:15–19. Moreover, the ’399 patent explains 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
`
`11:9–19.
`
`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 to a person of ordinary skill in the art the
`
`aforementioned “driver” limitations of claims 1, 11, and 14.
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`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, Lin, and Admitted Prior Art in the ’399
`
`patent to achieve the devices and methods recited in the challenged claims.
`
`Prelim. Resp. 28–31. According to Patent Owner, “without identification of
`
`the limitations missing from Aytac, Petitioner’s rationale is conclusory and
`
`grounded in hindsight.” Id. at 30.
`
`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, Lin, and Admitted Prior Art in the ’399 patent, and why
`
`they would have been motivated to apply that knowledge to the devices
`
`described by Aytac. Pet. 26–28, 51–52; Ex. 1003 ¶¶ 87–95. 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 ¶ 87 (citing Ex. 1005, 4:49–53). According to
`
`Dr. Almeroth, such an artisan “would have been motivated to combine the
`
`detailed teachings of the SCSI Specification with the teachings of CaTbox in
`
`Aytac,” because such an artisan “would have viewed as important to the
`
`CaTbox functioning as a SCSI hard disk.” Id. In addition, Dr. Almeroth
`
`acknowledges that Aytac does not provide explicit details of the construction
`
`of the scanner that is connected to the CaTbox, but, nevertheless, he explains
`
`that Lin teaches a scanner having a sampling circuit for sampling the analog
`
`data provided by the data transmit/receive device and an analog-to-digital
`
`converter (Ex. 1007, 2:54–3:24). Ex. 1003 ¶ 92. Dr. Almeroth testifies that
`
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`an ordinarily skilled artisan would have been motivated to use the teachings
`
`of Lin for a better understanding of Aytac’s system. Id. Indeed, a person of
`
`ordinary skill in the art would have known that an analog-to-digital
`
`converter “periodically measures (samples) the analog signal and converts
`
`each measurement to the corresponding digital value.” Ex. 3001, 19.
`
`Based on the evidence presently before us, we are persuaded that
`
`Petitioner’s articulated reasons to combine the prior art teachings are
`
`sufficient for purposes of institution.
`
`Conclusion on Obviousness
`
`In view of the foregoing, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertions that each
`
`of independent claims 1, 11, and 14 is unpatentable as obvious under
`
`§ 103(a) over the combined teachings of Aytac, the SCSI Specification, Lin,
`
`and the Admitted Prior Art in the ’399 patent. Patent Owner does not
`
`address dependent claims 2–3, 5, 6, and 15 with separate, specific
`
`arguments. Upon review of the evidence in this record, we are persuaded
`
`that Petitioner also has shown sufficiently for institution purposes that the
`
`asserted prior art combination renders those dependent claims obvious. See
`
`Pet. 66–72; Ex. 1003 ¶¶ 164–179.
`
`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 1–3, 5, 6,
`
`11, 14, and 15 of the ’399 patent. At this juncture, we have not made a final
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`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
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted for the sole ground that each of claims 1–3, 5, 6,
`
`11, 14, and 15 of the ’399 patent is unpatentable under § 103(a) as obvious
`
`over Aytac, the SCSI Specification, Lin, and the Admitted Prior Art in the
`
`’399 patent.
`
`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is authorized for this inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`will commence on the entry date of this Decision.
`
`
`
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`IPR2017-00714
`Patent 6,470,399 B1
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`For PETITIONER:
`
`Scott Miller
`Darren Franklin
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`
`For PATENT OWNER:
`
`Nicholas Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY, LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`
`
`22
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`
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