Trials@uspto.gov
`−571-272-7822
`
`
`Paper 20
`Entered: December 11, 2017
`
`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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

`

`IPR2016-01200
`Patent 8,504,746 B2
`
`
`INTRODUCTION
`I.
`In this inter partes review, instituted pursuant to 35 U.S.C. § 134,
`
`Fujifilm Corporation and a multitude of other entities, listed in the caption
`(“Petitioner”), challenge the patentability of certain claims of U.S. Patent
`No. 8,504,746 B2 (Ex. 1001, “the ’746 patent”), owned by Papst Licensing
`GMBH & Co. KG (“Patent Owner”). We have jurisdiction under 35 U.S.C.
`§ 6(c). This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`has shown by a preponderance of the evidence that claims 1, 6, 15, 17, 18,
`31, and 34 of the ’746 patent are unpatentable.
`
`A. PROCEDURAL HISTORY
`The Petitioner-captioned entities filed a Petition to institute inter
`
`partes review of claims 1, 6, 15, 17, 18, 31, and 34 of the ’746 patent.
`Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). On December 16, 2016, we instituted inter partes review
`as to challenged claims 1, 6, 15, 17, 18, 31, and 34. Paper 8 (“Institution
`Decision” or “Dec”).
`
`After institution, Patent Owner filed a Patent Owner Response.
`Paper 12 (“PO Resp.”). And Petitioner filed a Reply. Paper 14 (“Reply”).
`We heard oral arguments on September 14, 2017. A transcript of the
`hearing has been entered into the record. Paper 17 (“Tr.”).
`
`B. 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
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`Patent 8,504,746 B2
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`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. Pet. at 9; Paper 5 at 1.
`A final written decision in each of the following proceedings is
`entered concurrently with this decision: IPR2016-01211 and IPR2016-
`01213.
`
`C. 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 America Inc.; Panasonic Corporation; Panasonic Corporation of
`North America; Samsung Electronics Co., Ltd; and Samsung Electronics
`America, Inc. Pet. 5−6.
`
`D. 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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`Patent 8,504,746 B2
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`According to Figure 1, first connecting device 12 is attached to a host
`
`device (not shown), 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
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`[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.
`
`E. 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;
`
`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
`
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`
`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.
`F. INSTITUTED GROUNDS OF UNPATENTABILITY
`We instituted inter partes review of claims 1, 6, 15, 17, 18, 31, and 34
`(Dec. 26):
`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
`
`
`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. In our Decision on Institution 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. Arguments by Patent Owner to the
`contrary are addressed further below.
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`Petition, Petitioner also presents expert testimony. Ex. 1001, Declaration of
`Paul F. Reynolds, Ph.D. (“Reynolds Declaration”). Patent Owner supports
`its arguments of patentability with expert testimony. Ex. 2006, Declaration
`of Thomas A. Gafford (“Gafford Declaration”).
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b). Under this standard, 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). 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 to construe several claim terms. We note,
`however, that the ’746 patent claims under 35 U.S.C. § 120 the benefit of the
`
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`filing date of U.S. Patent No. 6,470,399 (“the ’399 patent”), through a chain
`of continuing applications. Ex. 1003, [63]. After institution of trial in the
`present case, Patent Owner, in related cases involving the ’399 patent,
`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, and adopted
`the claim constructions set forth by the district court and affirmed by the
`Federal Circuit in In re Papst Licensing GmbH & Co. KG Litig. v. Fujifilm
`Corp., 778 F.3d 1255 (Fed. Cir. 2015) (Ex. 1011).4 See, e.g., Case IPR2017-
`00443, Papers 7−8. In the instant proceeding, neither party provides, nor can
`we discern, any reason the broadest reasonable interpretation standard would
`lead to a different result than the district court claim construction standard.
`
`In our Decision on Institution, we provided preliminary constructions
`for the following terms:
`
`1) “without requiring” limitations:
`“whereby there is no requirement for any user-loaded file
`i.
`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”; and
`
`ii.
`iii.
`
`
`
`2) “end user” (Dec. 6−11).
`
`
`4 The ’746 patent and the ’399 patent share the same Specification and some
`of the 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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`Patent Owner does not present an argument as to whether the Board’s
`
`construction for either of these terms is erroneous. PO Resp. 14−15.
`However, with regard to the “without requiring” limitations, Patent Owner
`proffers its own understanding of the Board’s claim construction. Id. at 15.
`In light of the parties’ arguments regarding the applicability of the prior art,
`we address both terms below.
`
` “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—
`
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`“without requiring the end user to install or load specific drivers or software
`for the [ADGPD]5 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 do not necessarily
`reside 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
`
`
`5 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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`SCSI INQUIRY command. Id. at 13:6−9. Therefore, the parties’ proposed
`construction would be inconsistent with the Specification and those claims.
`
`Furthermore, Patent Owner argues that the “without requiring”
`limitations “specify that a user is not required to install or load software onto
`the host computer, and therefore a manufacturer-installed driver for a multi-
`purpose interface would be consistent with these limitations.” PO Resp. 15.
`Patent Owner also argues that “a driver for a multi-purpose interface or
`SCSI interface that must be installed by a user would be inconsistent with
`these limitations.” Id. At the heart of this dispute is whether the “without
`requiring” limitations prohibit a user from installing or loading a driver. We
`are guided by the Federal Circuit’s analysis in Celsis In Vitro v. CellzDirect,
`Inc., 664 F.3d 922, 926−927 (Fed. Cir. 2012), concerning a claim reciting
`“without requiring,” which is similar to the language the parties dispute.6 In
`that decision, our reviewing court stated: “‘without requiring’ means simply
`that the claim does not require the [recited] step.” The Court also stated that
`such a limitation was not susceptible to a construction where it means
`“prohibiting” the recited step. Celsis, 664 F.3d at 926. 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. 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.
`
`6 We recognize that claim 1 recites “whereby there is no requirement” in
`contrast with other claims that recite “without requiring.” Our analysis is
`applicable to claim 1 nonetheless, as the dispute for that claim also centers
`on our construction of the phrase to mean “without requiring.”
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`In our Decision on Institution, we construed 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. In consideration of Patent
`Owner’s argument after Institution, we see no need to alter our construction
`of these claim terms, with the caveat, as stated above, that our interpretation
`of the “without requiring” phrase does not prohibit software to be loaded or
`installed by a user or end user.
`
`“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 (emphases added). In the Preliminary Response, 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
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`term “system administrator.” Id.; 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
`marketing it”), 453 (defining “system administrator” as “a person who
`manages a multiuser computer”) (Ex. 3002, 3). Patent Owner has not
`identified 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. We do not
`agree.
`
`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 Atl. 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 unmistakably and unambiguously
`redefine the claim term “end user” to include a “system administrator.”
`Ex. 2005 at 24, 26, 29; Prelim. Resp. 23−24.
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`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)
`(denouncing claim constructions which render terms or phrases in claims
`superfluous).
`
`Further, 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 understood how to
`install device drivers in my opinion was not necessarily an end user.” Ex.
`2007, 85:15−23, 86:16−17 (emphasis added). We agree with Dr. Reynolds
`that a system administrator can be, but is not necessarily, an end user. Id. at
`87:12−18. Therefore, the plain meaning of “end user” is a type of user, but
`it does not encompasses all users.
`
`In our Decision on Institution, for the reasons noted above, we
`declined to adopt Patent Owner’s proposed claim construction. Giving the
`claim term “end user” its ordinary and customary meaning, we determine
`that “end user” is “[t]he ultimate user of a computer or computer application
`in its finished, marketable form.” Ex. 3001. After institution, neither party
`challenged our preliminary claim construction analysis and conclusion as
`stated above. Therefore, our construction of “end user” as stated above is
`adopted without modification.
`
`B. ANALYSIS OF ASSERTED GROUND
`Petitioner asserts a single ground based on obviousness. A patent
`
`claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences
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`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.7
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`1. Level of Ordinary Skill in the Art
`First, we evaluate the level of ordinary skill in the art for purposes of
`
`this decision. In our Institution Decision we stated,
`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 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
`
`7 Neither party proffers any objective evidence of nonobviousness in this
`proceeding.
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`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.
`
`
`Dec. 11−12. Patent Owner in its Response reiterates the same level of
`ordinary skill that it proffered in the Preliminary Response. PO Resp.
`13−14. Patent Owner presents no argument as to why Petitioner’s proposal
`is erroneous or why Patent Owner’s proposal is more appropriate for this
`proceeding. More importantly, no argument presented hinges on whether
`either party’s proposed level of ordinary skill in the art is adopted.
`
`We find Mr. Reynolds’ testimony persuasive as it is presents more
`than just the educational level of a person of ordinary skill in the art.
`Petitioner’s proposal is more helpful as it identifies the familiar objects of
`the technology used by a person of ordinary skill at the time of the
`invention: 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).. Ex. 1001
`§ 39. We therefore determine that Petitioner’s level of ordinary skill in the
`art is appropriate.
`2. 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
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`101 via SCSI bus 113 and telephone network 123 via phone lines 116, 118,
`120, and 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 stores them on CaTdisc. Id.
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`1. Overview of the SCSI Specification
`The SCSI Specification is a technical specification published by the
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`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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`including one or more hosts.” Ex. 1005, Abs.8 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
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`2. Overview of the Admitted Prior Art
`According to the ’746 patent, drivers for hard disks were known to be
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`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
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`8 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.
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`Patent Owner argues in its Response that some of the statements
`Petitioner relies on are not admissions of prior art. PO Resp. 12. Patent
`Owner, without any explanation, refers to the portion of the Specification
`that describes sending a virtual boot sequence, at column 5, lines 37−47. Id.
`That portion of the Specification describes “sending to the host device a
`virtual boot sequence which, in the case of actual hard drives, includes the
`drive type, the starting position and the length of the file allocation table
`(FAT), the number of sectors, etc., known to those skilled in the art.” Ex.
`1003, 5: 38−44 (emphasis added). This statement unequivocally conveys
`that applicant deemed known that the virtual boot sequence of a hard drive,
`when sent, includes various pieces of information such as the drive type, the
`starting position and the length of the FAT, and the number of sectors. At a
`minimum, we infer that the applicant admits a person of skill in the art
`would have known this information at the time of the invention. Such
`statement is therefore an admission by applicant that the knowledge was in
`the prior art.
`3. Aytac’s Source Code
`Petitioner asserts that Aytac’s source code (Ex. 1006, 77–527) was
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`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.
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`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
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`published with Aytac’s patent and Aytac’s patent does not contain a
`reference to the source code. PO Resp. 8−11; Prelim. Resp. 36–39.
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`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 o