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` Paper 20
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` Entered: December 11, 2017
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`Trials@uspto.gov
`571-272-7822
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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 IPR2016-01199
`Patent 8,966,144 B2
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 (a) and 37 C.F.R. § 42.73
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`Case IPR2016-01199
`Patent 8,966,144 B2
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`INTRODUCTION
`I.
`Petitioner, listed above, filed a Petition requesting an inter partes
`review of claims 1–8, 10, 14–20, 22, 26, 28, 29, 38, 52, 56, 57, 59–65, 67,
`71–74, 77–80, 84, 86, and 87 of U.S. Patent No. 8,966,144 B2 (Ex. 1003,
`“the ’144 patent”) and a Declaration of Paul Reynolds, Ph.D. (Ex. 1001).
`Paper 1 (“Pet.”). Patent Owner, Papst Licensing GmbH & Co., KG (“Patent
`Owner”), filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We
`instituted the instant inter partes review as to claims 1–8, 10, 14–20, 22, 28,
`29, 38, 52, 56, 57, 59–65, 67, 71–74, 77–80, 84, 86, and 87, but not with
`respect to claim 26. Paper 8 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 12, “PO Resp.”) and a Declaration of Mr. Thomas Gafford
`(Ex. 2005). Petitioner filed a Reply. Paper 14 (“Reply”). A transcript of the
`oral hearing held on September 14, 2017, has been entered into the record as
`Paper 17 (“Tr.”).1
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that claims 1–8, 10, 14–20, 22, 28, 29, 38, 52, 56, 57, 59–65,
`67, 71–74, 77–80, 84, 86, and 87 of the ’144 patent are unpatentable.
`
`
`1 This was a consolidated hearing with related cases IPR2016-01200,
`IPR2016-01213, and IPR2016-001214. See Tr. In addition, on September
`13, 2017, we held hearings for several other related cases IPR2016-01211,
`IPR2016-01212, IPR2016-01216, and IPR2016-01225. Because of the
`overlap in issues in all the related cases, the transcripts for those hearings are
`also entered into the record in this case. Papers 18−19.
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`A. Related Matters
`The parties indicate that the ’144 patent is involved in Papst Licensing
`GmbH & Co. KG v. Canon Inc., Case No. 1:15-cv-01692 (D.D.C.) and other
`proceedings. Pet. 4–6; Paper 5, 1–3. A final written decision in each of the
`following proceedings is entered concurrently with this decision:
`IPR2016-01212, IPR2016-01214, IPR2016-01216, and IPR2016-01225.
`
`B. The ’144 Patent
`The ’144 patent describes an interface device 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. 1003, 1:18–22,
`1:54–57. According to the ’144 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 2:4–19. Several solutions to this problem were known in the
`art. Id. at 2:20–3:25. 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 2:23–29. The plug-in card provided a printer
`interface for enhancing data transfer rates. Id. at 2:29–33. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:10–14. 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 3:17–19.
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`The ’144 patent indicates that the “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 3:33–37. Figure 1 of the ’144 patent, reproduced below,
`illustrates a block diagram of an interface device.
`
`
`As shown in Figure 1 above, 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 4:62–5:10. Interface device 10 includes first connecting
`device 12, second connecting device 15, digital signal processor 13, and
`memory means 14. 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 3:51–57, 8:42–46. According to
`the ’144 patent, SCSI interfaces were known to be present on most host
`devices or laptops. Id. at 8:42–46. By using a standard interface of a host
`device and by simulating an input/output device to the host device, the
`interface device “is automatically supported by all known host systems
`without any additional sophisticated driver software.” Id. at 11:38–44.
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`C. Illustrative Claim
`Of the challenged claims, claims 1, 84, and 86 are independent.
`Claims 2–8, 10, 14–20, 22, 28–29, 38, 52, 56–57, 59–65, 67, 71–74, 77–80
`depend ultimately from claim 1; claim 85 depends from claim 84; and claim
`87 depends from claim 86. Claim 1 is illustrative:
`1. An analog data generating and processing device (ADGPD),
`comprising:
`an input/output (i/o) port;
`a program memory;
`a data storage memory;
`a sensor designed to transmit data;
`a processor operatively interfaced with the i/o port, the program
`memory, the data storage memory and the sensor;
`wherein the processor is adapted to be involved in a data
`generation process by which the sensor generates analog data,
`the analog data is processed, and the processed analog data is
`stored in the data storage memory as at least one file of digitized
`analog data;
`wherein the processor also is adapted to be involved in an
`automatic recognition process in which, when the i/o port is
`operatively interfaced with a multi-purpose interface of a
`computer, the processor executes at least one instruction set
`stored in the program memory and thereby causes at least one
`parameter which provides identification information regarding
`the ADGPD to be automatically sent through the i/o port and to
`the multi-purpose interface of the computer
`(a) without requiring any end user to load any software
`onto the computer at any time,
`(b) without requiring any end user to interact with the
`computer to set up a file system in the ADGPD at any time,
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`(c) before a time when the computer is able to receive the
`at least one file of digitized analog data from the data storage
`memory, and
`(d) regardless of the identity of a manufacturer of the
`computer, wherein the at least one parameter is consistent with
`the ADGPD being responsive to commands issued from a
`customary driver;
`wherein the processor is further adapted to be involved in an
`automatic file transfer process in which, when the i/o port is
`operatively interfaced with the multi-purpose interface of the
`computer, and after the at least one parameter has been received
`by the multi-purpose interface of the computer, the processor
`executes at least one other instruction set stored in the program
`memory and thereby causes the at least one file of digitized
`analog data to be transferred to the computer regardless of the
`identity of the manufacturer of the computer and without
`requiring any user-loaded file transfer enabling software to be
`loaded on or installed in the computer at any time.
`Ex. 1003, 11:56–12:36 (emphases added).
`
`
`
`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below.
`(Ex. 1004)
`Aytac
`US 5,758,081
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`May 26, 1998
`Aytac’s source code in U.S. Patent Application No. 08/569,846
`(Ex. 1006, 77–527, “Aytac’s source code”).
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`Interface-2, ANSI X3.131-1994 (1994) (Ex. 1005, “the SCSI
`Specification”).2
`
`
`2 Citations to the SCSI Specification refer to the original page numbers.
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`Admitted Prior Art (see, e.g., Ex. 1003, 3:37–46, 4:20–22, 5:11–14,
`5;21–23, 5:37–47, 8:45–50, 10:26–33).
`
`
`E. Instituted Ground of Unpatentability
`We instituted this trial based on the sole ground that claims 1–8, 10,
`14–20, 22, 28, 29, 38, 52, 56, 57, 59–65, 67, 71–74, 77–80, 84, 86, and 87
`are unpatentable under § 103(a)3 as obvious over Aytac, in combination with
`the SCSI Specification and the Admitted Prior Art.4 Dec. 41.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`
`
`3 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.
`4 As noted in the Institution Decision (Dec. 7 n.3), although the Admitted
`Prior Art is relied upon in Petitioner’s analysis, the Admitted Prior Art is
`omitted inadvertently from the statement of the asserted ground. Pet. 70–72.
`Therefore, we treated the statement of the asserted ground as mere harmless
`error and presumed that Petitioner intended to assert that the challenged
`claims are unpatentable based, in part, on the Admitted Prior Art. Dec. 7,
`n.3.
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`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Claims of an expired
`patent are given their ordinary and customary meaning similar to the
`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). “In many cases, the claim construction will be the same
`under [both] standards.” In re CSB-System Int’l, Inc., 832 F.3d 1335, 1341
`(Fed. Cir. 2016).
`Here, in the Decision on Institution, we applied the broadest
`reasonable interpretation standard, as is proper for unexpired patents, to
`construe several claim terms. Dec. 7−20. We note, however, that the ’144
`patent claims, under 35 U.S.C. § 120, the benefit of the filing date of U.S.
`Patent No. 6,470,399 (“the ’399 patent”), through a chain of continuing
`applications. Ex. 1003, [60]. After institution of the instant proceeding,
`Patent Owner, in related cases, indicated that the ’399 patent will expire on
`March 3, 2018 (20 years from the ’399 patent’s March 3, 1998 filing date).
`See, e.g., Case IPR2016-01839, Ex. 1001, [22]; Paper 14; Case IPR2017-
`00443, Paper 6, 7 n.1. In the Institution Decisions in those related cases
`involving the ’399 patent, we did not apply the broadest reasonable
`interpretation standard, instead adopting the claim constructions set forth in
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`In re Papst Licensing GmbH & Co. KG Litig. v. Fujifilm Corp., 778 F.3d
`1255 (Fed. Cir. 2015) (Ex. 1011).5 See, e.g., Case IPR2017-00443, Papers
`7−8.
`
`In the instant proceeding, neither party provides, nor can we discern,
`any reason on which the broadest reasonable interpretation standard would
`lead to a different result than the district court claim construction standard.
`Indeed, in the Institution Decision, we adopted with modifications, as the
`broadest reasonable interpretation of several claim terms, the claim
`construction proposed by Patent Owner in the related district court litigation.
`Pet. 16−20; Ex. 1009; Dec. 7−20.
`With a few exceptions, addressed below, both Petitioner and Patent
`Owner agree with our claim constructions set forth in the Institution
`Decision. PO Resp. 14−24; Reply 3−4. While Petitioner urges us not to
`adopt any new construction in the Final Decision, Patent Owner advances
`several modifications. PO Resp. 14−24. We address below each of Patent
`Owner’s proposed claim construction modifications in turn to the extent
`necessary to resolve the controversy regarding the patentability of the
`challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need
`only construe terms ‘that are in controversy, and only to the extent necessary
`
`
`5 The ’144 patent and the ’399 patent share the same Specification and some
`of the same claim terms are used in both patents (e.g., interface device). Our
`interpretations herein are consistent with the Federal Circuit’s decision.
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`to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`1. “analog data generating and processing device”
`The claim term “analog data generating and processing device” or
`
`“ADGPD” appears in each independent claim of the ’144 patent. Ex. 1003,
`11:57–58, 16:11–12, 17:25–26. In the Institution Decision (Dec. 8−9), we
`noted that, apart from the title and claims, the Specification does not use the
`term “analog data generating and processing device.” See generally
`Ex. 1003. Rather, the Specification focuses on an interface device for
`communication between a host device and a data transmit/receive device.
`See, e.g., id. at Abstract., 1:18–22, 3:29–32, Figs. 1, 2. We further noted that
`claims 1 and 2 define an “analog data generating and processing device” as
`an interface device having, at least, a sensor. In that light, we construed the
`claim term “analog data generating and processing device” or “ADGPD” to
`encompass “an interface device having a sensor.” Dec. 8−9. After
`institution, Patent Owner objects to this construction “[i]f intended to be a
`full construction.” PO Resp. 14. This construction is intended to provide an
`example of what the phrase encompasses as necessary for the analysis
`below. See Nidec Motor, 868 F.3d at 1017. We discern no reason to modify
`the construction. Therefore, for purposes of this Final Written Decision, we
`maintain our construction for the term “analog data generating and
`processing device.”
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`2. “sensor”
`Each independent claim recites “a sensor designed to transmit data.”
`
`See, e.g., Ex. 1003, 11:62. Claim 17, which depends directly from claim 1,
`requires the “sensor” to comprise a “data transmit/receive device.” Id. at
`13:7–8. In the Institution Decision (Dec. 9), we noted that, apart from the
`claims, the term “sensor” does not appear in the Specification of the ’144
`patent. Rather, as noted above, the Specification focuses on an interface
`device for communication between a host device and a data transmit/receive
`device. Ex. 1003, 1:18–22, 3:29–32, 6:11–13, Figs. 1, 2. In that light, we
`construed a “sensor” to encompass a “data transmit/receive device”—a
`device that is capable of transmitting and/or receiving data. Dec. 9. After
`institution, both parties indicate that they agree with this claim construction.
`PO Resp. 15; Reply 3−4. We discern no reason to modify the construction
`and, therefore, we maintain our construction as to the term “sensor.”
`
`3. “multi-purpose interface”
`Each independent claim recites “the i/o port is operatively interfaced
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`with a multi-purpose interface of a computer.” See, e.g., Ex. 1003, 12:5–7.
`The Specification of the ’144 patent describes “the interface device
`according to the present invention is to be attached to a host device by
`means of a multi-purpose interface of the host device which can be
`implemented, for example, as a small computer systems interface (SCSI)
`interface or as an enhanced printer interface.” Id. at 3:51–56 (emphases
`added). The Specification also indicates that SCSI interfaces are present on
`most host devices or laptops. Id. at 8:45–46. Petitioner’s Declarant, Paul F.
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`Reynolds, Ph.D., testifies that SCSI is “a standard for attaching a range of
`peripheral device types to computers,” and “SCSI is designed to be
`multi-purpose: to both support a variety of devices and to operate with a
`variety of operating systems.” Ex. 1001 ¶ 46.
`In light of the Specification and the evidence before us regarding the
`general knowledge of an ordinarily skilled artisan, we construed a
`“multi-purpose interface” to encompass a “SCSI interface” in the Institution
`Decision. Dec. 9−10. Patent Owner appears to object to this construction
`insofar as a multi-purpose interface is limited to a SCSI interface. PO Resp.
`16. This construction is intended to provide an example of what the term
`encompasses as necessary for the analysis below. See Nidec Motor, 868
`F.3d at 1017. We discern no reason to modify the construction. Therefore,
`for purposes of this Final Written Decision, we maintain our construction for
`the term “multi-purpose interface.”
`
`4. “customary driver”
`The claim term “customary driver” appears in each independent
`claim. Ex. 1003, 12:22–23, 17:10, 18:24. For instance, claim 1 recites “the
`at least one parameter is consistent with the ADGPD being responsive to
`commands issued from a customary driver.” Id. at 12:20–23 (emphasis
`added). Claim 29, which depends directly from claim 1, further recites
`“wherein the at least one parameter is consistent with the ADGPD being
`responsive to a SCSI inquiry command.” Id. at 13:38–40 (emphasis added).
`The Specification of the ’144 patent indicates that “both a high data
`transfer rate and host device-independent use can be achieved if a driver for
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`an input/output device customary in a host device, normally present in most
`commercially available host devices, is utilized.” Ex. 1003, 3:33–37
`(emphases added). The Specification further explains that “[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, for
`graphics devices or for printer devices.” Id. at 3:37–40 (emphases added).
`The Specification also indicates that SCSI interfaces are present on most
`host devices or laptops, and SCSI drivers are “normally included by the
`manufacturer of the multi-purpose interface.” Id. at 8:45–46, 10:23–33.
`In light of the Specification, we construed, in the Institution Decision,
`a “customary driver” to encompass “a driver normally present in a
`commercially available computer system (e.g., a hard disk driver or a SCSI
`driver).” Dec. 10−12. After Institution, Patent Owner maintains that
`“customary driver” means “a set of software routines normally part of
`commercially available computer systems,” but does not point to any
`additional evidence to support this position. PO Resp. 16−17. We discern
`no reason to modify the construction and, therefore, we maintain our claim
`construction as to the term “customary driver.”
`
`5. “the processor adapted to be involved in a data generation process”
`Each independent claim recites “the processor is adapted to be
`
`involved in a data generation process by which the sensor generates analog
`data, the analog data is processed, and the processed analog data is stored in
`the data storage memory as at least one file of digitized analog data.” See,
`e.g., Ex. 1003, 11:66–12:3. In the Institution Decision, we determined that
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`the claimed sensor can be operatively interfaced with the processor of the
`interface device locally or remotely, declining to adopt Patent Owner’s
`implicit claim construction that requires the sensor to be connected with the
`processor locally (Prelim. Resp. 50–51). Dec. 12−13. Neither party
`challenges our determinations. PO Resp. 17; Reply 3−4. For this Final
`Decision, we maintain our determination in the Institution Decision. Dec.
`12−13. We need not further construe this phrase to resolve the issues before
`us. See Nidec Motor, 868 F.3d at 1017.
`
`6. “automatic recognition process”
`Each independent claim requires the processor to be adapted to be
`involved in an “automatic recognition process,” sending “identification
`information regarding the ADGPD” to the multi-purpose interface of the
`computer. See, e.g., Ex. 1003, 12:4–36. In the Institution Decision (Dec.
`13−14), we noted that the word “automatic” normally does not exclude all
`possible human intervention. See WhitServe, LLC v. Computer Packages,
`Inc., 694 F.3d 10, 19 (Fed. Cir. 2012); CollegeNet, Inc. v. ApplyYourself,
`Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005). According to the Specification
`of the ’144 patent, the communication between the host system and the
`interface device “is based on known standard access commands as supported
`by all known operating systems (e.g., DOS®, Window®, Unix®).”
`Ex. 1003, 5:11–14. When the host system is connected to the interface
`device and is booted, “usual BIOS routines or multi-purpose interface
`programs issue an instruction, known by those skilled in the art as the
`INQUIRY instruction.” Id. at 5:17–23. In response to the INQUIRY
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`instruction, the interface device sends a signal to the host system, identifying
`a connected hard disk drive. Id. at 5:24–30. In light of the Specification, we
`adopted the parties’ proposed construction, construing an “automatic
`recognition process” as “a process by which the computer recognizes the
`ADGPD upon connection with the computer without requiring any user
`intervention other than to start the process.” Both parties agree with this
`claim construction. PO Resp. 17; Reply 3−4. For this Final Decision, we
`maintain our claim construction as to “automatic recognition process.”
`
`7. “automatic file transfer process”
`Each independent claim requires the processor to be adapted to be
`involved in an “automatic file transfer process,” sending a digitized analog
`data file to the computer. See, e.g., Ex. 1003, 12:24–36. The Specification
`describes that a user interacts with the host computer to request transfer of
`the digitized analog data, and the transfer occurs automatically after the
`request is made. Ex. 1003, 6:2–5 (“If the user now wishes to read data from
`the data transmit/receive device via the line 16, the host device sends a
`command, for example ‘read file xy,’ to the interface device.”). In the
`Institution Decision (Dec. 14−15), we construed an “automatic file transfer
`process” to encompass a file transfer process that allows user intervention to
`initiate the process or make a transfer request. See WhitServe, 694 F.3d at
`19; CollegeNet, 418 F.3d at 1235. Neither party challenges this claim
`construction. PO Resp. 14−24; Reply 3−4. For this Final Decision, we
`maintain our claim construction for “automatic file transfer process.”
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`8. “without requiring”
`Each independent claim recites an apparatus with several negative
`limitations. For instance, claim 1 requires the automatic recognition process
`to occur “without requiring any end user to load any software onto the
`computer at any time,” and requires 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 at any time.” Ex. 1003, 12:4–36
`(emphases added).
`In this regard, the parties initially agreed 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 for the
`. . . ADGPD . . . beyond that included in the operating system or BIOS.”
`Prelim. Resp. 21; Pet. 17–18 (citing Ex. 1009) (emphasis added). Patent
`Owner’s proposed claim construction was intended to clarify the
`aforementioned “without requiring” limitations so that they would not be
`read out of context with the rest of the claim language. Ex. 1009, 42.
`However, in light of the Specification, we noted that Patent Owner’s
`construction improperly excludes SCSI drivers and drivers for multi-purpose
`interfaces, which do not necessarily reside in the operating system or BIOS.
`Dec. 15−16. In our Institution Decision, we construed the “without
`requiring” limitations 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
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`interface,” adding “drivers for a multi-purpose interface or SCSI interface”
`to Patent Owner’s proposed construction. Id. (emphases added).
`After institution, Petitioner agrees with our claim construction and
`urges us not to adopt a new construction. Reply 3−4. Nevertheless, Patent
`Owner disagrees with our claim construction, arguing that “a driver for a
`multi-purpose interface or SCSI interface that must be installed by a user
`would be inconsistent with these limitations.” PO Resp. 18 (citing Ex. 2005
`¶ 48). However, Patent Owner’s argument and Dr. Gafford’s testimony
`(Ex. 2005 ¶ 48) are not consistent with the Specification. As our reviewing
`court has explained, the correct inquiry “is an interpretation that corresponds
`with what and how the inventor describes his invention in the specification.”
`In re Smith Int’l, Inc., 871 F.3d 1375, 1382−83 (Fed. Cir. 2017).
`Notably, the Specification indicates that, at the time of the invention,
`multi-purpose interfaces can be, but are not necessarily, integrated into the
`BIOS system. Ex. 1003, 3:59–4:1. 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 10:23–29 (emphases added). Interpreting the “without requiring”
`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 12:6–7. Claim 29, which depends from claim
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`1, also requires a SCSI driver to issue a SCSI INQUIRY command. Id. at
`13:38–40. Id. at 13:38–40. As described in the Specification, the SCSI
`driver or the driver for the multi-purpose interface enables the automatic
`recognition process and automatic file transfer process, regardless of
`whether the SCSI driver is installed by the manufactured or user. Id. at
`3:51−56, 5:17−33, 11:14−23. Therefore, Patent Owner’s proposed
`construction would be inconsistent with the Specification and those claims.
`More importantly, the issue in dispute centers on whether the “without
`requiring” limitations prohibit an end user from installing or loading other
`drivers. In that regard, we are guided by the Federal Circuit’s analysis in
`Celsis In Vitro v. CellzDirect, Inc., 664 F.3d 922, 926−27 (Fed. Cir. 2012),
`concerning a claim reciting “without requiring,” which is similar to the
`language we have here. In that decision, our reviewing court stated:
`“‘without requiring’ means simply that the claim does not require the
`[recited] step,” and “performance of that step does not preclude a finding of
`infringement.” Id. Here too, the claim language is not as restrictive as
`Patent Owner argues. The claim language, under a plain reading, means that
`the end user is “not required” to load or install the recited software for
`transferring a file or recognizing a device. The claim language, however,
`does not prohibit the end user from ever installing or loading the recited
`software. The key word in the claim language is “requiring”—if the
`software is not required, then it does not matter whether the end user loaded
`or installed the software.
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`In addition, Patent Owner relies on a proposed claim construction for
`the term “end user,” which we determine is incorrect. PO Resp. 17−24. For
`the reasons stated below in our analysis concerning the term “end user,” we
`do not agree that the term “end user” includes the “system administrator”
`and “all persons intended to use a computer.”
`In view of the foregoing reasons, we maintain our claim construction,
`interpreting the “without requiring” limitations 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.”
`
`9. “end user”
`Each of the independent claims 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 ADGPD at any time.” See, e.g., Ex. 1003, 12:4–23 (emphasis added).
`In the Institution Decision (Dec. 17−18), we gave 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”—citing
`two dictionary definitions. Dec. 18; see also MICROSOFT COMPUTER
`DICTIONARY at 176 (3rd ed. 1997) (Ex. 3001, 3) (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
`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
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`marketing it”), 453 (defining “system administrator” as “a person who
`manages a multiuser computer”) (Ex. 3002, 3). We rejected Patent Owner’s
`argument 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. 24–26.
`After institution, Patent Owner does not dispute that “both the Board’s
`cited definitions are consistent with the ordinary meaning of end user as it is
`used in the ’144 patent,” but maintains that “end user” requires no
`construction. PO Resp. 18. Nonetheless, Patent Owner argues that the term
`“end user” “encompasses a system administrator, as well as ‘a technically
`competent individual who understands how to install device drivers,’ who
`are all persons intended to use a computer.” Id. at 18−19 (emphasis added).
`Patent Owner’s proposed claim construction again broadly includes
`anyone that intended to use a computer. For example, Dr. Reynolds
`testifies, “[a] technically competent individual who unders