throbber
Paper 32
`
`
`
`
`
`
`Trials@uspto.gov
` Entered: December 11, 2017
`
`
`
`571-272-7822
`
`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.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-012121
`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
`
`
`
`
`
`1 Case IPR2017-00679, filed by Apple Inc., has been joined with this
`proceeding.
`
`

`

`Case IPR2016-01212
`Patent 8,966,144 B2
`
`
`
`INTRODUCTION
`I.
`Petitioner, listed above, filed a corrected Petition requesting an inter
`partes review of claims 1–6, 8, 10, 13–16, 22, 27–40, 42–49, 52–55, 59–65,
`77, and 80–87 (“the challenged claims”) of U.S. Patent No. 8,966,144 B2
`(Ex. 1201, “the ’144 patent”) and a Declaration of Paul Reynolds, Ph.D.
`(Ex. 1204). Paper 4 (“Pet.”). Patent Owner, Papst Licensing GmbH & Co.,
`KG (“Patent Owner”), filed a Preliminary Response. Paper 10 (“Prelim.
`Resp.”). We instituted the instant inter partes review as to the challenged
`claims. Paper 11 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 15, “PO Resp.”) and a Declaration of Mr. Thomas Gafford
`(Ex. 2008). Petitioner filed a Reply. Paper 22 (“Reply”). A transcript of the
`oral hearing held on September 14, 2017, has been entered into the record as
`Paper 30 (“Tr.”).2
`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 1–6, 8, 10, 13–16, 22, 27–40, 42–49, 52–55, 59–
`65, 77, and 80–87 of the ’144 patent are unpatentable.
`
`
`2 This was a consolidated hearing with related cases IPR2016-01211 and
`IPR2016-01216. See Tr. We held hearings for several other related cases
`IPR2016-01199, IPR2016-01200, IPR2016-01213, IPR2016-001214, 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 29, 31.
`
`2
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`

`

`Case IPR2016-01212
`Patent 8,966,144 B2
`
`
`
`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. 62–65; Paper 5, 1–3. A final written decision in each of
`the following proceedings is entered concurrently with this decision:
`IPR2016-01199, IPR2016-01214, IPR2016-01216, and IPR2016-01225.
`
`B. The ’144 Patent
`The ’144 patent describes interface devices for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1201, 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.
`
`3
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`
`
`The ’144 patent indicates that its “invention is based on the finding
`that both a high data transfer rate and host device-independent use can be
`achieved if a driver for an input/output device customary in a host device” is
`utilized. Id. at 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) interface—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,
`
`4
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`
`the interface device “is automatically supported by all known host systems
`without any additional sophisticated driver software.” Id. at 11:38–44.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 84, and 86 are independent.
`Claims 2–6, 8, 10, 13–16, 22, 27–40, 42–49, 52–55, 59–65, 77, 80–83
`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
`
`5
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`(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,
`(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. 1201, 11:56–12:36 (emphases added).
`
`
`
`D. Prior Art Relied Upon
`Petitioner relies upon the prior art references listed below.
`Matsumoto
`US 5,684,607
`Nov. 4, 1997
`(Ex. 1208)
`Kawaguchi
`JP H4-15853
`Jan. 21, 1992
`(Ex. 1206)3
`
`
`3 Petitioner filed a certified translation (Ex. 1207) of Kawaguchi with its
`Petition. Nevertheless, Patent Owner submitted another translation
`6
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`
`
`Analogic, DASM-AD14, 14-Bit, 2 MHz A-to-D SCSI Substation for
`the Most Demanding Data Acquisition Applications (1992) (Ex. 1209,
`“DASM-AD14”).
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`Interface-2, ANSI X3.131-1994 (1994) (Ex. 1204D, App. A-4, “the SCSI
`Specification”).4
`Admitted Prior Art (see, e.g., Ex. 1201, 3:37–46, 4:20–22, 5:11–14,
`5;21–23, 5:37–47, 8:45–50, 10:26–29).
`
`
`(Ex. 2009). The parties did not indicate any meaningful differences between
`the two translations, except the term “arbitrary data” appears only in Patent
`Owner’s translation (Ex. 2009, 3), which allegedly supports its argument
`that data is merely “passing through” the data reading unit, not stored. PO
`Resp. 24. Our patentability analysis is supported by either translation. The
`alleged errors in Petitioner’s translation—“microcomputer . . . should
`actually be processor or CPU”—also does not affect our patentability
`determination. PO Resp. 1−2, n. 1 (citing Ex. 2011, 109:19−110:6,
`124:4−12). In fact, Patent Owner’s translation uses the same term
`“microcomputer.” Ex. 2009, 4.
`4 Citations to the SCSI Specification refer to the original page numbers.
`7
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`
`
`E. Instituted Grounds of Unpatentability
`We instituted this trial based on the following grounds of
`unpatentability (Dec. 7, 44)5:
`
`Challenged Claims
`
`Basis6
`
`References
`
`1–6, 8, 10, 13–16, 22,
`27–40, 42–49, 52–55,
`59–65, 77, and 80–87
`
`§ 103(a) Kawaguchi, Matsumoto, the SCSI
`Specification, and Admitted Prior Art
`
`49, 52, and 53
`
`§ 103(a)
`
`Kawaguchi, Matsumoto,
`DASM-AD14, the SCSI
`Specification, and Admitted Prior Art
`
`
`
`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
`
`5 As noted in the Institution Decision (Dec. 7 n.4), although discussed in the
`Petitioner’s analysis, the SCSI Specification and the Admitted Prior Art are
`omitted inadvertently from the statements of the asserted grounds.
`Therefore, we treated the statements of the asserted grounds as mere
`harmless error and presumed that Petitioner intended to assert that the
`challenged claims are unpatentable based, in part, on the SCSI Specification
`and the Admitted Prior Art. Id.
`6 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.
`
`8
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`
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`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. 8−17. 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. 1201, [60]. After institution of the instant proceeding,
`Patent Owner, in related cases, indicates 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 of those related cases
`
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`Case IPR2016-01212
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`
`involving the ’399 patent, we did not apply the broadest reasonable
`interpretation standard, instead adopting the claim constructions set forth in
`In re Papst Licensing GmbH & Co. KG Litig. v. Fujifilm Corp., 778 F.3d
`1255 (Fed. Cir. 2015) (Ex. 1011).7 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. 8−10; Ex. 1205; Dec. 8−17.
`With a few exceptions, addressed below, both Petitioner and Patent
`Owner agree with our claim constructions set forth in the Institution
`Decision. PO Resp. 12−17; Reply 2, n.1. Patent Owner advances several
`modifications. PO Resp. 12−17. 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 to resolve the
`
`
`7 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.
`10
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`
`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. 1201,
`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. 1201. 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 Abs., 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. 12−14. 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.”
`
`11
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`
`2. “sensor”
`Each independent claim recites “a sensor designed to transmit data.”
`See, e.g., Ex. 1201, 11:62. Claim 17, which depends from claim 1, requires
`the “sensor” to comprise a “data transmit/receive device.” Id. at 13:7–8. In
`the Institution Decision (Dec. 9−10), 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. 1201, 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. 9−10. After institution,
`both parties indicate that they agree with this claim construction. PO Resp.
`14; Reply 2, n.1. 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
`
`with a multi-purpose interface of a computer.” See, e.g., Ex. 1201, 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.
`12
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`Case IPR2016-01212
`Patent 8,966,144 B2
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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. 1204 ¶ 64.
`In light of the Specification and the evidence regarding the knowledge
`of an ordinarily skilled artisan, we construe a “multi-purpose interface” to
`encompass a “SCSI interface” in the Institution Decision. Dec. 10. Patent
`Owner appears to object to this construction insofar as a multi-purpose
`interface is limited to a SCSI interface. PO Resp. 14−15. 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 and, hence, we maintain our
`construction for the term “multi-purpose interface.”
`
`4. “customary driver”
`The claim term “customary driver” appears in each independent
`claim. Ex. 1201, 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 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
`an input/output device customary in a host device, normally present in most
`13
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`commercially available host devices, is utilized.” Ex. 1201, 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. 11−12. 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. 15. 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. 1201, 11:66–12:3. In the Institution Decision (Dec. 12−13), we
`declined to adopt Patent Owner’s implicit construction (Prelim. Resp.
`14
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`33−35), interpreting “the processor is adapted to be involved in a data
`generation process” to require the processor to be involved directly in every
`aspect of the process, because it would improperly import an extraneous
`limitation into the claims. It is well-settled that if a feature is not necessary
`to give meaning to what the inventor means by a claim term, it would be
`“extraneous” and should not be read into the claim. Hoganas AB v. Dresser
`Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours &
`Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`Neither party challenges our determinations. PO Resp. 15; Reply 2, n.1.
`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 of the ADGPD 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. 1201, 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®,
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`Window®, Unix®).” Ex. 1201, 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 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. 16; Reply 2, n.1. For this
`Final Decision, we maintain our claim construction as to “automatic
`recognition process.”
`
`7. “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. 1201, 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
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`. . . ADGPD . . . beyond that included in the operating system or BIOS.”
`Pet. 8–9 (citing Ex. 1205); Prelim. Resp. 25 (emphasis added). 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.
`14−16. 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 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 2, n.1. Nevertheless, Patent
`Owner disagrees, 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. 16−17 (citing Ex. 2008 ¶ 49). However, Patent
`Owner’s argument and Dr. Gafford’s testimony (Ex. 2008 ¶ 49) 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. 1201, 3:59–4:1. The Specification also makes clear that
`
`17
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`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
`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
`
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`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.
`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.”
`
`8. “a first computer” and “a second computer that is manufactured by a
`company other than the company that manufactured the first computer
`Claim 86 requires an automatic recognition process and automatic
`transfer process to occur for a “first computer” and “second computer that is
`manufactured by a company other than the company that manufactured the
`first computer.” Ex. 1201, 17:41–18:18. In the Institution Decision, we
`adopted Patent Owner’s proposed claim construction, interpreting these
`limitations of claim 86 to refer to, respectively, a first computer and a second
`computer “regardless of the identity of a manufacturer of the computer.”
`Dec. 16−17; Prelim. Resp. 48–49. After institution, both parties agree with
`our claim construction. PO Resp. 17; Reply 2, n.1. Therefore, for this Final
`
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`Case IPR2016-01212
`Patent 8,966,144 B2
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`
`Written Decision, we maintain our claim construction for these limitations of
`claim 86.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). As noted in our Institution Decision (Dec. 18−19), we
`
`
`8 Neither party proffers any objective evidence of nonobviousness in this
`proceeding.
`
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`Case IPR2016-01212
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`
`find that the prior art (e.g., Ex. 1204D, App. A-4) in the instant proce

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