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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`____________
`
`Case IPR2016-01200
`Patent 8,504,746 B2
`
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`OLYMPUS et al. EX. 1019 - 1/27
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`

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`
`
`Fujifilm Corporation and a multitude of other entities, listed in the
`
`caption (“Petitioner”), filed a Petition to institute inter partes review of
`
`claims 1, 6, 15, 17, 18, 31, 34 of U.S. Patent No. 8,504,746 B2 (“the ’746
`
`patent”) pursuant to 35 U.S.C. § 311319. Paper 1 (“Pet.”). Papst
`
`Licensing GMBH & Co. KG (“Patent Owner”) timely filed a Preliminary
`
`Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`
`§ 314.
`
`For the reasons that follow, we grant the Petition.
`
`I.
`
`BACKGROUND
`
`A. RELATED MATTERS
`
`Petitioner identifies the patent-at-issue as the subject matter of many
`
`district court cases filed in the Northern District of California, Eastern
`
`District of Texas, District of D.C. and District of Delaware. Pet 69; PO
`
`Notice, Paper 5, 13.
`
`The ’746 patent also has been the subject of multiple petitions for
`
`inter partes review filed by various Petitioners. Id. at 9; Paper 5 at 1. The
`
`following proceedings have been identified: IPR2016-01206, -01211,
`
`-01213, -01223, and -01224. Paper 5, 1.
`
`B. REAL PARTIES-IN-INTEREST
`
`
`
`Petitioner asserts that the following parties are real parties-in-interest:
`
`Canon Inc.; Canon U.S.A., Inc.; Canon Financial Services, Inc.; Fujifilm
`
`Corporation; Fujifilm Holdings America Corporation; Fujifilm North
`
`America Corporation; JVC Kenwood Corporation; JVC Kenwood USA
`
`Corporation; Nikon Corporation, Nikon Inc.; Olympus Corporation;
`
`OLYMPUS et al. EX. 1019 - 2/27
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`Olympus America Inc.; Panasonic Corporation; Panasonic Corporation of
`
`North America; Samsung Electronics Co., Ltd; and Samsung Electronics
`
`America, Inc. Pet. 56.
`
`C. THE ’746 PATENT (EX. 1003)
`
`
`
`The ’746 patent is titled, “Analog Data Generating and Processing
`
`Device for use With a Personal Computer.” It relates generally to the
`
`transfer of data, and, in particular, to interface devices for communication
`
`between a computer or host device and a data transmit/receive device from
`
`which data is to be acquired or with which two-way communications is to
`
`take place. Ex. 1003, 1:20–24. Figure 1, reproduced below, illustrates a
`
`general block diagram of an interface device 10. Id. at 4:5960.
`
`
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`OLYMPUS et al. EX. 1019 - 3/27
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`
`According to Figure 1, first connecting device 12 is attached to a host
`
`device (not shown), to digital signal processor (DSP) 13 and memory means
`
`14. Id. at 4:6065. DSP 13 and memory means 14 are also connected to
`
`second connecting device 15. Id. at 4:6467. The interface device
`
`“simulates a hard disk with a root directory whose entries are ‘virtual’ files
`
`which can be created for the most varied functions.” Id. at 5:1114.
`
`“Regardless of which data transmit/receive device at the output line 16 is
`
`attached to the second connecting device, the digital signal processor 13
`
`informs the host device that it is communicating with a hard disk drive.” Id.
`
`at 5:3134. In one embodiment, the interface device is automatically
`
`detected when the host system is “booted,” resulting in the user “no longer
`
`[being] responsible for installing the interface device 10 on the host device
`
`by means of specific drivers which must also be loaded.” Id. at 7:1320.
`
`D. REPRESENTATIVE CLAIM
`
`There are three independent claims in the set of challenged claims (1,
`
`31, 34). Claim 1 is reproduced below, and is illustrative of the subject
`
`matter claimed.
`
`1. An analog data acquisition device operatively connect
`able to a computer through a multipurpose interface of the
`computer, the computer having an operating system
`programmed so that, when the computer receives a signal
`from the device through said multipurpose interface of the
`computer indicative of a class of devices, the computer
`automatically activates a device driver corresponding to the
`class of devices for allowing the transfer of data between the
`device and the operating system of the computer, the analog
`data acquisition device comprising:
`
`a) a program memory;
`
`OLYMPUS et al. EX. 1019 - 4/27
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`b) an analog signal acquisition channel for receiving a
`
`signal from an analog source;
`
`c) a processor operatively interfaced with the
`multipurpose interface of the computer, the program
`memory, and a data storage memory when the analog data
`acquisition device is operational;
`
`d) wherein the processor is configured and programmed
`to implement a data generation process by which analog data
`is acquired from the analog signal acquisition channel, the
`analog data is processed and digitized, and the processed
`and digitized analog data is stored in a file system of the
`data storage memory as at least one file of digitized analog
`data;
`
`e) wherein when the analog acquisition device is
`operatively interfaced with the multipurpose interface of the
`computer, the processor executes at least one instruction set
`stored in the program memory and thereby automatically
`causes at least one parameter indicative of the class of
`devices to be sent to the computer through the multipurpose
`interface of the computer, independent of the analog source,
`wherein the analog data acquisition device is not within the
`class of devices; and
`
`f) wherein the processor is further configured and
`programmed to execute at least one other instruction set
`stored in the program memory to thereby allow the at least
`one file of digitized analog data acquired from the analog
`signal acquisition channel to be transferred to the computer
`using the device driver corresponding to said class of
`devices so that the analog data acquisition device appears to
`the computer as if it were a device of the class of devices;
`
`whereby there is no requirement for any user-loaded
`file transfer enabling software to be loaded on or installed in
`the computer in addition to the operating system.
`
`E. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner asserts unpatentability of claims 1, 6, 15, 17, 18, 31, 34
`
`(Pet. 2569):
`
`OLYMPUS et al. EX. 1019 - 5/27
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`

`Reference(s)
`
`Aytac,1 SCSI Specification,2 and
`
`Admitted Prior Art3
`
`Basis
`
`§ 103
`
`Claim
`
`1, 6, 15, 17, 18, 31, 34
`
`In addition to the supporting argument for these grounds in the
`
`Petition, Petitioner also presents expert testimony. Ex. 1001, Declaration of
`
`Paul F. Reynolds, Ph.D. (“Reynolds Declaration”).
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`The Board interprets claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their
`
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
`
`meaning that the term would have to a person of ordinary skill in the art in
`
`question.’”) (Citation omitted).
`
`
`
`Petitioner proposes the adoption of certain claim constructions
`
`allegedly proposed by Patent Owner in related district court litigation. Pet.
`
`1 U.S. Patent No. 5,758,081 (“Aytac”) (Ex. 1006).
`2 American National Standard for Information Systems, Small
`Computer System Interface-2, ANSI X3.131-1994 (1994) (“SCSI
`Specification”) (Ex. 1005).
`3 Although the Admitted Prior Art is relied upon in the Petitioner’s analysis,
`the Admitted Prior Art are omitted inadvertently from the statement of the
`asserted ground. Pet. 16. Therefore, we treat the statement of the asserted
`ground as mere harmless error and presume that Petitioner intended to assert
`that the challenged claims are unpatentable based, in part, on the Admitted
`Prior Art.
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`OLYMPUS et al. EX. 1019 - 6/27
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`20. Patent Owner agrees with the claim construction expressly proposed by
`
`Petitioner, but argues that Petitioner has implicitly applied another claim
`
`term in a manner contrary to the term’s broadest reasonable interpretation.
`
`PO Resp. 2225. In light of the parties’ arguments regarding the
`
`applicability of the prior art, we address below the disputed terms.
`
`“whereby there is no requirement for any user-loaded file transfer enabling
`software to be loaded on or installed”
`
`“without requiring any end user to load software”
`
`“without requiring any user-loaded file transfer enabling software to be
`loaded on or installed”
`
`
`
`Each independent claim recites negative limitations in apparatus
`
`(claims 1 and 31) and method claims (claim 34). For instance, claim 1
`
`requires the automatic file transfer process to occur “whereby there is no
`
`requirement for any user-loaded file transfer enabling software to be loaded
`
`on or installed in the computer in addition to the operating system.” Ex.
`
`1003, 12:2427. Claims 31 and 34 require the automatic file transfer
`
`process to occur “without requiring any user-loaded file transfer enabling
`
`software to be loaded on or installed in the computer [or host device].”
`
`Ex. 1003, 14:4244; 16:1517. Dependent claim 17 further recites that the
`
`automatic file system transfer occurs “(a) without requiring any end user to
`
`load any software onto the computer at any time, and (b) without requiring
`
`any end user to interact with the computer to set up a file system in the
`
`analog data acquisition device at any time.” Ex. 1003, 13:1421.
`
`
`
`For these claim limitations, the parties agree to adopt the construction
`
`proposed by Patent Owner in the related District Court proceeding—
`
`“without requiring the end user to install or load specific drivers or software
`
`OLYMPUS et al. EX. 1019 - 7/27
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`for the [ADGPD]4 beyond that included in the operating system or BIOS.”
`
`Prelim. Resp. 22; Pet. 2021 (citing Ex. 1009) (emphasis added). However,
`
`the parties’ proposed claim construction may improperly exclude SCSI
`
`drivers and drivers for multi-purpose interfaces that are not necessarily
`
`resided in the operating system or BIOS.
`
`
`
`The Specification discloses that a SCSI interface is a multi-purpose
`
`interface, and that a multi-purpose interface comprises “both an interface
`
`card and specific driver software for the interface card.” Ex. 1003, 3:49–55
`
`(emphasis added). Significantly, the Specification indicates that, at the time
`
`of the invention, multi-purpose interfaces can be, but are not necessarily,
`
`integrated into the BIOS system. Id. at 3:61–67. The Specification also
`
`makes clear that
`
`communication between the host device and the multi-purpose
`interface can take place not only via drivers for input/output
`device customary in a host device which reside in the BIOS
`system of the host device but also via specific interface drivers
`which, in the case of SCSI interfaces, are known as multi-
`purpose interface ASPI (advanced SCSI programming
`interface) drivers.
`
`Id. at 10:14–20 (emphases added). Interpreting the negative limitations to
`
`exclude the drivers for a multi-purpose interface would be unreasonable
`
`when the very same claim, claim 1, also requires a multi-purpose interface.
`
`Id. at 11:61–64. Claim 15, which depends from claim 1, also requires a
`
`SCSI INQUIRY command. Id. at 13:69. Therefore, the parties’ proposed
`
`construction would be inconsistent with the Specification and those claims.
`
`4 In addition to the acronym, the construction refers to the analog data
`acquisition device of claim 1, and analog data acquisition and interface
`device of claim 31.
`
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`
`
`In view of the foregoing, we construe the claim phrases—“whereby
`
`there is no requirement for any user-loaded file transfer enabling software to
`
`be loaded on or installed,” “without requiring any end user to load software
`
`onto the computer [at any time]” and “without requiring any user-loaded file
`
`transfer enabling software to be loaded on or installed in the computer [at
`
`any time]”—as “without requiring the end user to install or load specific
`
`drivers or software for the ADGPD beyond that included in the operating
`
`system, BIOS, or drivers for a multi-purpose interface or SCSI interface,”
`
`adding “drivers for a multi-purpose interface or SCSI interface” to the
`
`parties’ proposed claim construction.
`
`“end user”
`Claim 17, which depends from claim 1, recites “without requiring any
`
`
`
`end user to load any software onto the computer at any time,” and “without
`
`requiring any end user to interact with the computer to set up a file system in
`
`the analog data acquisition device at any time.” See, e.g., Ex. 1003, 13:17–
`
`20 (emphasis added). Patent owner alleges that the claim term “end user”
`
`should not be limited to “actual end user,” but instead should include a
`
`“system administrator” who sets up a computer for another or “a technically
`
`competent individual who understood how to install device drivers.” Prelim.
`
`Resp. 23–25.
`
`
`
`As Patent Owner implies, one of ordinary skill in the art would have
`
`recognized that the claim term “end user” has a different meaning than the
`
`term “system administrator.” Id.; see also MICROSOFT COMPUTER
`
`DICTIONARY at 176 (3rd ed. 1997) (Ex. 3001) (defining “end user” as “[t]he
`
`ultimate user of a computer or computer application in its finished,
`
`marketable form”); BARRON’S DICTIONARY OF COMPUTER AND INTERNET
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`TERMS at 158 (6th ed. 1998) (defining “end user” as “the person ultimately
`
`intended to use a product, as opposed to people involved in developing or
`
`marketing it”), 453 (defining “system administrator” as “a person who
`
`manages a multiuser computer”) (Ex. 3002). Patent Owner does not identify
`
`where the Specification redefines the claim term “end user” to include
`
`system administrators. Rather, Patent Owner alleges that the prosecution
`
`history supports its proposed claim construction, citing to the August 13,
`
`2009 Amendment (Ex. 2005). Prelim. Resp. 2325.
`
`
`
`There is a “heavy presumption” that a claim term carries its ordinary
`
`and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`
`1359, 1366 (Fed. Cir. 2002) (citation omitted). To overcome this
`
`presumption, the patentee must “clearly set forth” and “clearly redefine” a
`
`claim term away from its ordinary meaning. Bell Atlantic Network Servs.,
`
`Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001).
`
`The disavowal must be “unmistakable” and “unambiguous.” Dealertrack,
`
`Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012). Here, the portion of
`
`the prosecution history cited by Patent Owner does not even mention the
`
`term “system administrator,” much less unmistakable and unambiguous
`
`redefining the claim term “end user” to include a “system administrator.”
`
`Ex. 2005 at 24, 26, 29; Prelim. Resp. 2324.
`
`
`
`Moreover, Patent Owner’s proposed construction would essentially
`
`redefine the claim term “end user” as “user,” rendering the word “end”
`
`insignificant, if not wholly superfluous. We are mindful that “claims are
`
`interpreted with an eye toward giving effect to all terms in the claim.”
`
`Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
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`OLYMPUS et al. EX. 1019 - 10/27
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`(denouncing claim constructions which render terms or phrases in claims
`
`superfluous).
`
`
`
`For the reasons noted above, we decline to adopt Patent Owner’s
`
`proposed claim construction, but rather giving the claim term “end user” its
`
`ordinary and customary meaning—“[t]he ultimate user of a computer or
`
`computer application in its finished, marketable form.” Ex. 3001.
`
`B. ANALYSIS OF ASSERTED GROUND
`
`
`
`Petitioner asserts a single ground based on obviousness over Aytac,
`
`Admitted Prior Art, and SCSI Specification. See supra, Section I.E. A
`
`patent claim is unpatentable as obvious 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. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`
`First, we evaluate the level of ordinary skill in the art for purposes of
`
`this decision. Dr. Reynolds testifies that a person having ordinary skill in
`
`the art at the time of the invention “would have had at least a four-year
`
`degree from a reputable university in electrical engineering, computer
`
`science, or related field of study, or equivalent experience, and at least two
`
`[years of] experience in studying or developing computer interfaces or
`
`peripherals.” Ex. 1001 ¶ 39. Dr. Reynolds further testifies that such an
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`artisan also would “be familiar with operating systems (e.g., MS-DOS,
`
`Windows, Unix) and their associated file systems (e.g., a FAT file system),
`
`device drivers for computer components and peripherals (e.g., mass storage
`
`device drivers), and communication interfaces (e.g., SCSI and PCMCIA
`
`interfaces).” Id. Patent Owner confirms that Petitioner’s statements
`
`regarding the level of ordinary skill in the art are mostly consistent with
`
`Patent Owner’s view, but nonetheless contends that an ordinarily skilled
`
`artisan would have one more year of experience, or, alternatively, five or
`
`more years of experience without a bachelor’s degree. Prelim. Resp. 2122.
`
`Notwithstanding the apparent differing opinions, at this juncture, the
`
`variance between the proffered levels of ordinary skill in the art does not
`
`have meaningful impact in our determination of whether to institute inter
`
`partes review. Our analysis in this Decision is supported by either level of
`
`skill.
`
`
`
`We now turn to address the scope of the prior art. A short overview
`
`of Aytac, the Admitted Prior Art, the SCSI Specification, and Aytac’s source
`
`code is in order.
`
`1. Overview of Aytac (Ex. 1004)
`
`
`
`Aytac discloses an interface device (CaTbox) that is connected to a
`
`host PC and a plurality of peripheral devices. Ex. 1004, Abs. Figure 1 of
`
`Aytac is reproduced below.
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`
`
`
`As illustrated in Figure 1 of Aytac, 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.
`
`2. Overview of the SCSI Specification
`
`
`
`The SCSI Specification is a technical specification published by the
`
`American National Standard for Information Systems to set forth the SCSI
`
`standards. According to the SCSI Specification, the SCSI protocol “is
`
`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
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`OLYMPUS et al. EX. 1019 - 13/27
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`including one or more hosts.” Ex. 1005, Abs.5 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
`
`3. Overview of the Admitted Prior Art
`
`
`
`According to the ’746 patent, drivers for hard disks were known to be
`
`customary drivers “in practically all host devices.” Ex. 1003, 3:36–44,
`
`4:17–21. The ’746 patent indicates that SCSI interfaces and SCSI drivers
`
`were known in the art at the time of the invention. Id. at 8:39–41, 10:20–24.
`
`According to the 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 8:39–41, 10:23–24. Moreover,
`
`certain standard access commands, including the SCSI INQUIRY command,
`
`were “supported by all known operating systems (e.g., DOS[®],
`
`Windows[®], Unix[®]).” Id. at 5:8–11, 5:18–21. The ’746 patent further
`
`discloses that it was known to those skilled in the art that a virtual boot
`
`5 Citations to the SCSI Specification refer to the original page numbers.
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`sequence includes “the drive type, the starting position and the length of the
`
`file allocation table (FAT), the number of sectors.” Id. at 5:40–44.
`
`4. Aytac’s Source Code
`
`
`
`Petitioner asserts that Aytac’s source code (Ex. 1006, 77–527) was
`
`filed on paper, as part of the original disclosure of the application that issued
`
`as Aytac’s patent. Pet. 1718. Petitioner acknowledges that the Office did
`
`not print the source code as part of Aytac’s patent, but nevertheless alleges
`
`that Aytac’s source code qualifies as prior art under § 102(e). Id.
`
`
`
`In response, Patent Owner contends that Aytac’s source code is not
`
`prior art under § 102(e) as to the challenged claims because it was not
`
`published with Aytac’s patent and Aytac’s patent does not contain a
`
`reference to the source code. Prelim. Resp. 36–39.
`
`
`
`Upon review of the evidence before us, we agree with Patent Owner’s
`
`contention. Petitioner concedes that the Aytac’s patent was not printed with
`
`the source code, and proffers no evidence to indicate otherwise. Pet. 17–18.
`
`Petitioner does not identify any reference in Aytac’s patent itself to the
`
`source code. Id. Nor does Petitioner proffer any evidence to show that a
`
`certificate of correction has ever been issued to have the source code
`
`properly added to Aytac’s patent. Id.
`
`
`
`Based on this record, we persuaded that Aytac’s source code is not
`
`considered part of the patent disclosure. See Southwest Software, Inc. v.
`
`Harlequin, Inc., 226 F.3d 1280, 1291 (Fed. Cir. 2000) (the source code that
`
`was filed with the application could not be considered as part of the patent
`
`disclosure because the patent was not printed with the source code and the
`
`certificate of correction adding the source code to the patent did not issue
`
`prior to the filing of the of the lawsuit). Therefore, we determine that
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`OLYMPUS et al. EX. 1019 - 15/27
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`Petitioner has not established sufficiently that Aytac’s source code is prior
`
`art under § 102(e) as to the challenged claims.
`
`
`
`We also agree with Patent Owner that Aytac’s source code is not prior
`
`art under § 102(a) or (b) as to the claims at issue. As Patent Owner explains
`
`(Prelim. Resp. 37–39), even if the source code were a printed publication as
`
`of May 26, 1998, the issued date of Aytac’s patent, when the file record of
`
`Aytac’s patent became publicly available, Aytac’s source code still would
`
`not be prior art under § 102(a) or (b) as to the ’746 patent, which appears to
`
`have an effective filing date of March 3, 1998. Id. at 39. On its face, the
`
`’746 patent claims under 35 U.S.C. §§ 120 and 365(c), through a series of
`
`continuation and division applications, the benefit of the filing date
`
`(March 3, 1998) of International Application No. PCT/EP98/01187 that
`
`entered the national stage (U.S. Patent Application No. 09/331, 002) after
`
`compliance with 35 U.S.C. 371. Ex. 1003, at [63], [30]; Ex. 3003, at [21],
`
`[22], [86]. On this record, we determine that Petitioner has not established
`
`sufficiently that Aytac’s source code is available as prior art under § 102(a)
`
`or (b) as to the challenged claims.
`
`
`
`We further observe that, although Aytac’s source code does not
`
`qualify as prior art, Aytac’s source code may be relied upon to show the
`
`level of ordinary skill in the art at or around the time the invention was
`
`made. Thomas and Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1581
`
`(Fed. Cir. 1983) (“[references] though not technically prior art, were, in
`
`effect, properly used as indicators of the level of the ordinary skill in the art
`
`to which the invention pertained”). As discussed above, Aytac’s source
`
`code was publicly available as of May 26, 1998 (less than three months after
`
`the effective filing date of the challenged claims), when Aytac’s patent was
`
`OLYMPUS et al. EX. 1019 - 16/27
`
`

`

`issued and the file record of Aytac’s patent that include the source code was
`
`available to the public. See In re Wyer, 655 F.2d 221, 22627 (CCPA 1981)
`
`(concluding that when the specification is not issued in printed form but is
`
`announced in an official journal and anyone can inspect or obtain copies, it
`
`is sufficiently accessible to the public to constitute a “printed publication”).
`
`Moreover, Aytac’s source code is an implementation of the invention that is
`
`described in the specification of Aytac’s patent. See generally Ex. 1004.
`
`Therefore, Aytac’s source code may be relied upon to show the level of
`
`ordinary skill in the art at or around the time the invention was made.
`
`5. Differences Between the Prior Art and Claimed Subject Matter
`
`
`
`According to Petitioner, Aytac discloses the recited limitations of all
`
`the challenged claims, but relies on the SCSI Specification and the Admitted
`
`Prior Art for the limitations of: automatic recognition (Pet. 4756);
`
`automatic file transfer process (Pet. 6061); and sending a parameter
`
`indicative of the class of devices (Pet. 4750). Petitioner proffers at least
`
`one motivation to combine the teachings as asserted. Pet. 2526. In
`
`particular, Petitioner asserts that Aytac “specifically directs those skilled in
`
`the art to the SCSI Specification.” Id. at 26.
`
`
`
`For the limitations that are similarly recited in the challenged
`
`independent claims, the Petition treats the limitations as co-extensive and
`
`identifies how the prior art is alleged to teach or suggest those limitations.
`
`To the extent the parties do not point out the differences in claim scope
`
`between the independent claims, we analyze their similarly recited
`
`limitations together. A summary of Petitioner’s contentions is provided
`
`below.
`
`OLYMPUS et al. EX. 1019 - 17/27
`
`

`

`a. Challenged Independent Claims: 1, 31, and 34
`
`
`
`Petitioner alleges that processor 201 and associated chipset 221 of the
`
`CaTbox discloses the processor limitation of claims 1, 31, and 34, which
`
`recite a processor that is “operatively interfaced” with a memory and a
`
`multipurpose interface of the host computer. See Pet. 3841. Petitioner also
`
`points to CaTdisc 301, RAM and the buffers of the CaTbox modems as the
`
`recited data storage memory.
`
`
`
`With regard to the limitation that recites a “data generation process,”
`
`Petitioner identifies two CaTbox features. Pet. 4244. First, Petitioner
`
`points to the CaTbox modems receiving and digitizing a fax transmission,
`
`where the file (comprising the digitized fax) is stored in CaTdisc 301. Id. at
`
`43. Second, Petitioner points to Aytac’s microphone 125 that “generates
`
`analog audio signals and transmits those signals to CaTbox.” Id.6 Petitioner
`
`points to an annotated Table I of Aytac, reproduced below, to further support
`
`the proffered examples.
`
`6 Petitioner also supports the microphone example with an excerpt of source
`code that allegedly discloses “a program for recording a voice message using
`a microphone connected to CaTbox.” Pet. 44.
`
`OLYMPUS et al. EX. 1019 - 18/27
`
`

`

`
`
`Table I, describes “Standalone Functions of CaTbox,” and lists two of these
`
`functions: “receive faxes and print them or store them on CaTdisc” and
`
`“receive voice mail and store them on CaTdisc.” Ex. 1004, 10:1427.
`
`
`
`According to Petitioner, the challenged independent claims require
`
`that the processor automatically cause at least one parameter indicative of
`
`the class of devices to be sent to a computer. Pet. 4547. Petitioner refers to
`
`this as the “automatic recognition process.” Id. at 47. For this limitation,
`
`Petitioner relies on the Admitted Prior Art and the SCSI Specification, as
`
`summarized above. Pet. 4748. Petitioner also relies on Aytac’s disclosure
`
`of using a SCSI Interface and alleging that Aytac describes the automatic
`
`recognition process disclosed in the ’746 patent. Id. (“Both patents
`
`reference the same SCSI commands (e.g., INQUIRY) to accomplish the
`
`same functions.”).
`
`
`
`Finally, Petitioner contends that Aytac, the Admitted Prior Art, and
`
`the SCSI Specification disclose the limitation referred to as the “automatic
`
`file transfer” process. Pet. 5661. In particular, Petitioner asserts that
`
`“[a]fter receiving the INQUIRY response and file system information, host
`
`OLYMPUS et al. EX. 1019 - 19/27
`
`

`

`PC 101 is capable of accessing the files stored on CaTbox’s CaTdisc 301
`
`using SCSI read and write commands.” Pet. 58 (citing the Reynolds
`
`Declaration, Ex. 1001 ¶¶ 99101). As an example of how Aytac discloses
`
`this feature, Petitioner argues that processor 201 is involved in receiving a
`
`fax, storing the fax on CaTdisc 301, and reading the fax file from CaTdisc.
`
`Id. at 59. Petitioner also identifies another example involving Aytac’s
`
`microphone. Id. In that example, Petitioner argues that processor 201 is
`
`involved in receiving analog audio signals from microphone 125, converting
`
`the analog signals and storing the digital signals on CaTdisc 301, and
`
`reading the digital audio file from CaTdisc 301 in response to a “read file”
`
`SCSI operation initiated by the host. Id. (citing Reynolds Declaration, Ex.
`
`1001 ¶¶ 99100, 8384).
`
`
`
`Further, regarding the “automatic file transfer” process limitation,
`
`Petitioner argues that “[b]ecause the automated file transfer uses the
`
`standard SCSI interface and drivers (ASPI) and standard OS file system
`
`software on both the host computer and on CaTbox, there is no need for the
`
`end user to load or install any file transfer enabling software on the host.”
`
`Pet. 60 (relying on Ex. 1005, at 100).
`
`
`
`Claim 1 recites limitations not recited in claims 31 and 34. For these
`
`claim 1 limitations, Petitioner argues that Aytac discloses the recited
`
`“program memory” (RAM 203, BIOS EPROM 222, and CaTdisc 301)7 and
`
`the “analog signal acquisition channel for receiving a signal from an analog
`
`source” (inputs to CaTbox from microphone 125, receiver 107, handset 105,
`
`7 Pet. 62.
`
`OLYMPUS et al. EX. 1019 - 20/27
`
`

`

`scanner 104, and telephone network 123 connecting fax machines and
`
`telephones via phone lines 116, 118, 120, 122 and modems 308-311).8
`
`b. Dependent Claim 6
`
`
`
`Claim 6 depends from claim 1, and requires interfacing the processor
`
`with the multi-purpose interface with a cable. Pet. 65. Petitioner relies on
`
`Aytac’s disclosure that “CaTbox would look like a PC and it would be
`
`attached via cable.” Id. (citing Ex. 1004, 4:4950).
`
`c. Dependent Claim 15
`
`
`
`Claim 15 depends from claim 1, and re

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