`
`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
`
`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
`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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`

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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ................................................................................ 1 
`I. 
`II.  OVERVIEW OF THE ’399 PATENT ................................................. 5 
`III.  OVERVIEW OF THE APPLIED ART ............................................. 10 
`A.  Aytac’s CaTbox Requires User-Loaded Specialized
`Software On The Host Computer
`For
`Communication ........................................................................ 10 
`B.  American National Standard For Information
`Systems – Small Computer System Interface-2
`(“SCSI Specification”) ............................................................. 16 
`C.  U.S. Patent No. 6,522,432 to Lin ............................................. 16 
`D.  Alleged Admitted Prior Art ...................................................... 16 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ................................ 17 
`V. 
`CLAIM CONSTRUCTION ............................................................... 18 
`“whereupon the host device communicates with the
`A. 
`interface device by means of the [driver for the
`input/output device
`customary
`in
`a host
`device/specific driver
`for
`the multi-purpose
`interface/usual driver for the input/output device]” ................. 21 
`“Data transmit/receive device” ................................................ 25 
`“The driver for the input/output device customary
`in a host device” ....................................................................... 27 
`“The usual driver for the input/output device” ........................ 29 
`“An input/output device customary in a host
`device.” ..................................................................................... 30 
`VI.  Petitioners Did Not Meet Their Burden To Show The
`Challenged Claims Are Unpatentable ................................................ 30 
`The Petition Fails To Provide A Proper
`A. 
`Obviousness Analysis .............................................................. 30 
`i
`
`D. 
`E. 
`
`B. 
`C. 
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`2. 
`
`C. 
`
`B.  Aytac Does Not Disclose An Interface Device With
`Which A Host Device Communicates Without
`Using Specialized Software On The Host Device ................... 35 
`Aytac
`Intended CaTbox To Be A
`1. 
`Multitasking Device To Solve The Problem
`Of
`Integrating Operation Of Multiple
`Devices With A PC ........................................................ 37 
`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 Therewith ........................................... 39 
`Petitioner Admits That Aytac’s Specialized
`Software Facilitates Communications Between the
`CaTbox and the Host Computer ............................................... 43 
`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 ................................................................................... 46 
`VII.  CONCLUSION .................................................................................. 50 
`
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Activevideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................. 32
`Allergan Inc. v. Apotex Inc.,
`754 F.3d 952 (Fed. Cir. 2014) ................................................................... 47
`Apple Inc. v. Papst Licensing GmbH & Co. KG,
`IPR2016-01843, Paper 13 (PTAB Mar. 10, 2017) .................................... 10
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ................................................................. 32
`Canon Inc. v. Papst Licensing GMBH & Co., KG,
`IPR2016-01200, Paper 8 (PTAB Dec. 15, 2016) ...................................... 11
`Catch Curve, Inc. v. Venali, Inc.,
`363 Fed. Appx. 19 (Fed. Cir. 2010) .......................................................... 28
`David Netzer Consulting Engineer LLC v. Shell Oil Co.,
`824 F.3d 989 (Fed. Cir. 2016) ............................................................. 20, 25
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`469 F.3d 1005 (Fed. Cir. 2006) ................................................................. 19
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................. 4, 31
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006) ................................................................. 20
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ................................................................. 15
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ................................................................. 50
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................... 50
`In re Magnum Oil Tools Int’l,
`829 F.3d 1364 (Fed. Cir. 2016) ................................................................... 4
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ........................................................... 31, 32
`
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`
`In re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015) ..................................................... 19, 24, 25
`In re Zurko,
`258 F.3d 1379 (Fed. Cir. 2001) ................................................................. 33
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008) ................................................................. 29
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`IPR2014-00309, Paper 83 (PTAB Mar. 23, 2014) .................................... 31
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ............................................... 32, 33, 34, 35
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................. 4, 31
`Microsoft Corp. v. Multi-Tech Sys., Inc.,
`357 F.3d 1340 (Fed. Cir. 2004) ................................................................. 20
`Papst Licensing GmbH & Co., KG v. Apple, Inc.,
`6:15-cv-01095, D.E. 275 (E.D. Tex. Mar. 7, 2017) .................................. 19
`PC Connector Solutions, LLC v. SmartDisk Corp.,
`406 F.3d 1359 (Fed. Cir. 2005) ................................................................. 28
`Personal Web Technologies, LLC v. Apple, Inc.,
`2016–1174, Slip op. (Fed. Cir. Feb. 14, 2017) .......................................... 32
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ........................................................... 19, 20
`Plas-Pak Indus. v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) ........................................................ 49
`SciMed Life Systems v. Advanced Cardiovascular,
`242 F.3d 1337 (Fed. Cir. 2001) ................................................................. 20
`Solaia Tech. LLC v. Arvinvmeritor Inc.,
`2003 U.S. Dist. LEXIS 16482 (N.D. Ill. Sept. 17, 2003) ......................... 14
`Southwest Software, Inc. v. Harlequin, Inc.,
`226 F.3d 1280 (Fed. Cir. 2000) ................................................................. 14
`SuperGuide Corp. v. DirecTV Enters., Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ............................................................. 28, 29
`Upsher-Smith Labs., Inc. v. Pamlab LLC,
`412 F.3d 1319 (Fed. Cir. 2005 .................................................................. 47
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ................................................................. 20
`
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`
`Statutes
`35 U.S.C. § 103 ....................................................................................... 30, 31
`35 U.S.C. § 311 ............................................................................................. 15
`35 U.S.C. § 312(a) ........................................................................................ 34
`35 U.S.C. § 314(a) .......................................................................................... 1
`35 U.S.C. § 316(e) ........................................................................................ 30
`Other Authorities
`Manual of Patent Examining Procedure
`§ 608.05, 6th ed., rev. 1 (Sept. 1, 1995) .............................................. 13, 14
`Regulations
`37 C.F.R. § 1.96 ............................................................................................ 14
`37 C.F.R. § 42.104(b)(4) ............................................................................... 34
`37 C.F.R. § 42.104(b)(5) ............................................................................... 34
`37 C.F.R. § 42.120 .......................................................................................... 1
`37 C.F.R. § 42.24 .......................................................................................... 52
`37 C.F.R. § 42.8 ............................................................................................ 52
`37 C.F.R. §§ 42.22(a) ................................................................................... 34
`
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`LIST OF EXHIBITS
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`EXHIBIT NO. TITLE
`U.S. Patent No. 6,470,399 to Tasler (“Tasler,” “the ’399
`1001
`Patent”)
`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 (Aytac)
`American National Standard
`Institution, American
`National Standard for Info. System’s Small Computer
`System Interface-2, ANSI X3.131-1994 (1994)
`U.S. Patent No. 6,522,432 (Lin)
`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., No. 6:15-cv-
`01095-RWS (E.D. Tex. Nov. 22, 2016)
`Papst 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/EP98/01187
`(published
`WO98/39710)
`U.S. Patent No. 4,589,063
`U.S. Patent No. 5,038,230
`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
`vi
`
`1011
`1012
`1013
`
`1014
`
`1015
`1016
`1017
`1018
`1019
`1020
`
`Application
`PCT
`as PCT Pub. No.
`
`
`
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`

`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`1021
`
`2001
`2002
`2003
`
`2004
`
`2005
`
`2006
`
`3001
`
`Papst’s Brief, In re Papst Licensing Digital Camera
`Patent Litigation, No. 2014-1110 (Federal Circuit,
`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)
`Declaration of Thomas Gafford In Support Of Patent
`Owner Response
`Transcript of Deposition of Kevin Almeroth Taken on
`August 24, 2017
`Microsoft Press Computer Dictionary, Second Edition,
`1994
`
`vii
`
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`

`
`I.
`
`INTRODUCTION
`
`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`This proceeding commenced when Petitioners filed a Petition for Inter
`
`Partes review of claims of U.S. Patent No. 6,470,399 (“the ’399 patent”) (Ex.
`
`1001). Patent Owner Papst Licensing GmbH & Co. KG (“Papst”) timely filed
`
`a Preliminary Response (Paper 8). The Patent Trial and Appeal Board
`
`(“Board”) entered
`
`its Decision on Institution on June 21, 2017
`
`(“Decision”)(Paper 10), by which it ordered the institution of trial on claims
`
`1–3, 5, 6, 11, 14, and 15 of the ’399 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),
`
`U.S. Patent No. 6,522,432 to Lin (“Lin”) (Ex. 1007), and alleged Admitted
`
`Prior Art. (Paper 10 at 21.)
`
`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
`
`
`
`1
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`

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`of the challenged claims. In particular, the Petition and the Decision rely on
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`an incorrect interpretation of “whereupon the host device communicates with
`
`the interface device by means of [the driver for the input/output device
`
`customary in a host device/ the specific driver for the multi-purpose interface/
`
`the usual driver for the input/output device]” as recited in independent claims
`
`1, 11, and 14, respectively. As properly construed in view of the clear and
`
`consistent teachings of the ’399 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 ’399 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
`
`3:25–4:39, 12:26–40.) Contrary to these requirements of the claims, however,
`
`Aytac teaches that specialized software is indeed 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 disclosed modems located in the CaTbox. (Ex. 1005 at 10:52–11:64.)
`
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`To construe the claims otherwise ignores explicit teachings of the ’399
`
`patent and defeats a primary object of the disclosed invention: host device
`
`independence. (Ex. 1001 at 3:25–28, 5:6–32.) Aytac does 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 secondary 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 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.
`
`The Board should also deny the Ground asserted in the Petition 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, fails to provide citations for alleged teachings of the prior art and alleged
`
`knowledge or understanding of a person of ordinary skill in the art (“a
`
`POSITA”) and even relies on non-prior art teachings of the challenged ’399
`
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`patent in support of its ground of invalidity. (See, e.g., Pet. at 56–61.)
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`Although the single ground of invalidity is alleged to be based on U.S. Patent
`
`No. 5,758,081 to Aytac in view of the SCSI Specification, U.S. Patent No.
`
`6,522,432 to Lin, 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. of Kansas City, 383 U.S. 1, 17–18
`
`(1966).
`
`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. Because Petitioners have failed to meet
`
`their burden to establish that the challenged claims are unpatenable by a
`
`preponderance of the evidence, the Petition must be denied. See In re Magnum
`
`Oil Tools Int’l, 829 F.3d 1364, 1376–77 (Fed. Cir. 2016) (holding that the
`
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`burden of proof remains on petitioner throughout an IPR proceeding and does
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`not shift to patent owner).
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`II. OVERVIEW OF THE ’399 PATENT
`
`The ’399 Patent involves a unique system and method for achieving
`
`high data transfer rates for data acquisition systems (e.g., still pictures, videos,
`
`voice recordings) to any general-purpose computer, without requiring a user
`
`to purchase, install, and/or run specialized software for each system. (Ex. 1001
`
`at 4:23–27.) 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 1:34–53.) As such, there was an increasing
`
`demand to transfer that information to commercially-available, general-
`
`purpose computers. (Id. at 1:20–33.) 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 1:17–
`
`3:21.)
`
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`The ’399 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 2:17–47, 3:24–27, 4:23–
`
`27.) 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.
`
`(Id. at 5:6–20.)
`
`Accordingly, users could avoid loading specific software; improve data
`
`transfer efficiency; save time, processing power, and memory space; and
`
`avoid the waste associated with purchasing specialized computers or loading
`
`specific software for each device. (Id. at 3:24–27, 8:23–9:58, 9:23–34, 12:23–
`
`41.) The ’399 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 3:24–27.)
`
`The interface device disclosed in the ’399 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 11:9–15; see also id. at 5:13–17 (“The
`
`interface device according to the present invention therefore no longer
`
`communicates with the host device or computer by means of a specially
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`designed driver but by means of a program which is present in the BIOS
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`system . . .”), 6:3–10 (describing the use of “usual BIOS routines” to issue
`
`INQUIRY instructions to the interface), 8:43–50 (describing use of BIOS
`
`routines).) Similarly, the written description describes also using drivers
`
`included in the operating system. (Id. at 5:64–67 (“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 driver
`
`or drivers for a multi-purpose interface (such as a SCSI interface) is already
`
`present in a host device, such drivers could be used with the ’399 Patent’s
`
`interface device instead of, or in addition to, customary drivers which reside
`
`in the BIOS. (Id. at 11:9–12.) Accordingly, the ’399 Patent contemplated a
`
`universal interface device that could operate independent of the manufacturer
`
`of the computer “without any additional sophisticated driver software.” (Id. at
`
`12:23–40.) 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 ’399
`
`Patent’s interface device to connect to a variety of different standard interfaces
`
`that could be present in a host computer. (Id. at 9:30–47; FIG. 2.)
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`As is apparent from the title of the ’399 Patent, the interface device
`
`disclosed is capable of acquiring and processing analog data. As shown in
`
`Figure 2 reproduced below, the ’399 Patent discloses that the interface device
`
`10 has an analog input at a connection 16 for receiving analog data from a
`
`data transmit/receive device on a plurality of analog input channels 1505 and
`
`simultaneously digitizing the received analog data using, inter alia, a sample
`
`and hold amplifier 1515 and an analog to digital converter 1530 that converts
`
`analog data received from the plurality of channels 1505 into digital data that
`
`may then be processed by the processor 1300. (Id. at 9:49–64, 10:27–41.)
`
`“Each sample/hold circuit is connected to a corresponding input of an 8-
`
`channel multiplexer 1520 which feeds its output signals via a programmable
`
`amplifier 1525 into an analog/digital converter (ADC).” (Id. at 9:55–58.)
`
`This arrangement of sample/hold circuits permits a single ADC to be used
`
`even when multiple analog data channels are being utilized. (Id. at 9:49–64.)
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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`
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`The Petition challenges the priority date of the ’399 patent, arguing that
`
`it is only entitled to the filing date of the PCT application, and not the earlier
`
`German application, because the German application allegedly fails to
`
`disclose a multi-purpose interface. (Pet. at 10–11.) Whether the ’399 patent is
`
`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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`PATENT OWNER RESPONSE IN IPR2017-00714
`U.S. PATENT NO. 6,470,399
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`unpatentability. Should the Board, however, decide to address this issue, the
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`Board has already soundly rejected this same argument in IPR2016-01843.
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`(See Apple Inc. v. Papst Licensing GmbH & Co. KG, IPR2016-01843, Paper
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`13 at 11–13 (PTAB Mar. 10, 2017) (denying institution of inter partes
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`review)).
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`III. OVERVIEW OF THE APPLIED ART
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`A. Aytac’s CaTbox Requires User-Loaded Specialized Software
`On The Host Computer For Communication
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`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 at 1.) 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 Decision acknowledges the inclusion of
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`the Source Code in the “applied references” section but does not include any
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`discussion of the parties’ arguments with respect thereto. (Paper 10 at 5.) For
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`the sake of completeness, Papst includes its prior argument that the Source
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`Code is not prior art as follows.
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`The Board found in another related IPR that Aytac’s Source Code is
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`not prior art that may be relied upon, except to show the level of ordinary skill
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`in the art at the time of the invention. (Ex. 1019, Canon Inc. v. Papst Licensing
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`GMBH & Co., KG, IPR2016-01200, Paper 8 at 16–17 (PTAB Dec. 15, 2016).)
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`Even when viewed from this limited perspective, the Source Code supports
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`Papst’s position that specialized software must be installed on the host
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`computer for Aytac’s CaTbox to work properly—why else would the inventor
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`feel compelled to include such software with Aytac’s patent application?
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`Because Mr. Aytac felt it was needed for the CaTbox to work. If only
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`regularly-available software were needed, there would be no need for this
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`specialized software.
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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
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`POSITA at or around the time of the invention of the ’399 patent.” (Pet. at
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`21.) 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. However, Petitioner does
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`not actually rely on the Source code for this purpose. (Pet. at 8; Ex. 1003 at
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`¶¶ 46–49.)
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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.” (Pet. at 21.) Petitioner does not
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`explain how one of ordinary skill would know to check file history of the
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`Aytac 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 IPR2016-01199 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 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 *21–22 (N.D. Ill. Sept.
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`17, 2003) (where source code was referenced in the patent, but did not append
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`it 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 n