Trials@uspto.gov
`571.272.7822
`
`Paper No. 33
`Filed: 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 IPR2016-01213
`Patent 8,504,746 B2
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
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`IPR2016-01213
`Patent 8,504,746 B2
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`INTRODUCTION
`
`A. Background
`Petitioner, listed above, filed a Petition requesting inter partes review
`of claims 1–3, 6–10, 15, 17–19, 21, 23–25, 31, 34, and 35 (the “challenged
`claims”) of U.S. Patent No. 8,504,746 B2 (Ex. 1400, “the ’746 patent”).
`Paper 6 (“Pet.”). Patent Owner, Papst Licensing GmbH & Co., KG, filed a
`Preliminary Response. Paper 12 (“Prelim. Resp.”). On December 15, 2016,
`we granted the Petition, instituting trial on whether under § 103(a)1
`(1) claims 1–3, 6–10, 15, 17–19, 21, 24, 25, 31, 34, and 35 would have been
`obvious over the combination of Yamamoto,2 Yamamoto 2,3 the SCSI
`Specification,4 and the Admitted Prior Art,5 and (2) claim 23 would have
`been obvious over and Yamamoto, Yamamoto 2, Muramatsu,6 the SCSI
`
`1 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.
`§§ 102 and 103 in this Decision.
`2 U.S. Patent No. 6,088,532, issued July 11, 2000 (Ex. 1401) (“Yamamoto”).
`3 U.S. Patent No. 6,256,452 B1, issued July 3, 2001 (Ex. 1407)
`(“Yamamoto 2”).
`4 AMERICAN NATIONAL STANDARDS INSTITUTE, INC., AMERICAN NATIONAL
`STANDARD FOR INFORMATION SYSTEMS – SMALL COMPUTER SYSTEM
`INTERFACE-2, ANSI X3.131-1994 (1994) (Ex. 1405) (“SCSI Specification”).
`5 See e.g. Ex. 1400, 1:49–53, 5:8–11, 5:14–20, 5:27–54, 7:11–20, 8:37–45,
`10:14–24. Although discussed in the Petitioner’s analysis, the SCSI
`Specification and the Admitted Prior Art are omitted inadvertently from the
`statement of the asserted ground. See, e.g., Pet. 20, 26, 44. Therefore, we
`treated the statement 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. Paper 13 (Institution
`Decision), p. 7 n. 3.
`6 U.S. Patent No. 5,592,256, issued Jan. 7, 1997 (Ex. 1408) (“Muramatsu”).
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`Specification, and the Admitted Prior Art. Paper 13 (“Institution Decision”
`or “Inst. Dec.”).
`Following institution, Patent Owner filed a Response (Paper 17, “PO
`Resp.”), and Petitioner filed a Reply (Paper 23, “Reply”). Upon
`authorization, Patent Owner filed objections to arguments and evidence filed
`with Petitioner’s Reply (Paper 27) and Petitioner file a response to those
`objections (Paper 29). We held an oral hearing on September 14, 2017.
`Paper 30 (“Tr.”).7
`This is a Final Written Decision pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons set forth the below, we conclude that
`Petitioner has shown by a preponderance of evidence that the challenged
`claims are unpatentable.
`
`B. Related Matters
`The parties indicate that the ’746 patent is involved in Papst Licensing
`GmbH & Co. KG v. Canon Inc., Case No. 1:15-cv-01692 (D.D.C.) and other
`district court proceedings. Pet. 10–13; Paper 7, 1–3. This patent has also
`been challenged in several other petitions for inter partes review. Pet. 13;
`Paper 7, 4–5. A final written decision in each of the following proceedings
`is entered concurrently with this decision: IPR2016-01200 and IPR2016-
`01211.
`
`
`7 This was a consolidated hearing with related cases IPR2016-01199,
`IPR2016-01200, and IPR2016-01214. See Tr. In addition, on September
`13, 2017, we held an oral hearing for several other related cases IPR2016-
`01211, -01212, -01216, and -01225. Because of the overlap in issues in all
`the related cases, the transcripts for the September 13, 2017 hearings are also
`entered into the record in this case. Papers 31, 32.
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`C. The ’746 Patent
`The ’746 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. 1400, 1:20–22,
`1:56–59. According to the ’746 patent, using a specific driver for the data
`transmit/receive device that is customized to match very closely to an
`individual host system would achieve high data transfer rates across the
`interface, but such a specific driver cannot be used with other host systems.
`Id. at 2:6–21. Several solutions to this problem were known in the art. Id. at
`2:22–3:24. 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 2:25–30. The plug-in card provided a printer interface for
`enhancing data transfer rates. Id. at 2:30–34. 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 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.
`The ’746 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
`used. Id. at 3:32–36. Figure 1 of the ’746 patent, reproduced below,
`illustrates a block diagram of an interface device.
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`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 4:59–5:10. 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
`specific driver software for the interface card. Id. at 3:49–55, 8:37–41.
`According to the ’746 patent, SCSI interfaces were known to be present on
`most host devices or laptops. Id. at 8:37–41. 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 11:29–35.
`
`D. Challenged Claims
`Of the challenged claims, claims 1, 31, and 34 are independent.
`Claims 2, 3, 6–10, 15, 17–19, 21, and 23–25 depend directly or indirectly
`from claim 1 and claim 35 depends directly from independent claim 34.
`Claim 1 is illustrative:
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`1. An analog data acquisition device operatively connectable 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 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
`the computer using
`the device driver
`transferred
`to
`corresponding to said class of devices so that the analog data
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`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.
`Ex. 1400, 11:48–12:26 (emphasis added).
`
`ANALYSIS
`
`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
`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).
`In the Institution Decision, we applied the broadest reasonable
`interpretation standard, as is proper for unexpired patents, to construe the
`term “analog signal acquisition channel.” Inst. Dec. 7−10. We note,
`however, that the ’746 patent may expire shortly after the date of this
`Decision. In fact, the ’746 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. 1400, [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 the cases involving the ’399 patent, we did not
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`apply the broadest reasonable interpretation standard, instead adopting 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).8 See, e.g., Case IPR2017-00443,
`Papers 7−8.
`In this proceeding, neither party provides, nor can we discern, any
`term for which the broadest reasonable interpretation standard would lead to
`a different result than the district court claim construction standard.
`Indeed, neither party disagrees with the construction set forth in the
`Institution Decision. PO Resp. 12; See Reply.
`Accordingly, for purposes of this Decision, we reiterate our
`understanding that the “analog signal acquisition channel” is part of the
`claimed “analog data acquisition device.” Moreover, because neither party
`proposes a construction of any other claim term, nor is such construction
`necessary for purposes of our analysis below, we do not explicitly address
`the construction of any other claim term.
`
`A. 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
`
`
`8 The ’746 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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`(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.9 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. 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 (Inst. Dec. 9–10),
`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. 1403 ¶ 40. 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.
`
`
`9 Neither party introduced objective evidence of non-obviousness or argued
`that the existence of secondary considerations impacts this Decision’s
`obviousness analysis. Accordingly, our analysis is based upon the first three
`of the four Graham factors.
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`Patent Owner confirms that Petitioner’s statements regarding the level
`of ordinary skill in the art are mostly consistent with Patent Owner’s view,
`but nonetheless contends that an ordinarily skilled artisan would have one
`more year of experience, or, alternatively, five or more years of experience
`without a bachelor’s degree. Prelim. Resp. 18; PO Resp. 11−12; Ex. 2006
`¶ 18. 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 issue to be decided in this Decision
`hinges on whether either party’s proposed level of ordinary skill in the art is
`adopted.
`We find Dr. Reynolds’ testimony persuasive as it is presents more
`than just the educational level of a person of ordinary skill in the art.
`Similarly, Petitioner’s more detailed proposal is 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.
`1403 ¶ 40. We, therefore, adopt Petitioner’s proposed level of ordinary skill
`in the art. We further note that the prior art at issue in this proceeding
`reflects the level of ordinary skill in the art at the time of the invention. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1354−55 (Fed. Cir. 2001).
`
`C. Obviousness over Yamamoto, in Combination with Yamamoto 2,
`the SCSI Specification, and the Admitted Prior Art
`Petitioner asserts that claims 1–3, 6–10, 15, 17–19, 21, 24, 25, 31, 34,
`and 35 (all the challenged claims except claim 23) are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Yamamoto, combined with Yamamoto
`2, the SCSI Specification, and the Admitted Prior Art. Pet. 7, 20, 26–68.
`Petitioner explains how the combination of the prior art references teaches
`the claimed subject matter and proffers articulated reasoning as to why a
`person of ordinary skill in the art would have combined the prior art
`teachings in the manner asserted, citing to Dr. Reynolds’s Declaration for
`support. Id. (citing Ex. 1403).
`Patent Owner does not challenge Petitioner’s reasons to combine the
`prior art teachings, but nevertheless argues that Petitioner fails to show the
`prior art combination discloses certain claim limitations and that those
`limitations would have been obvious to a person of ordinary skill. PO Resp.
`16–35.
`Upon consideration of the parties’ contentions and supporting
`evidence, we determine that Petitioner has demonstrated by a preponderance
`of the evidence that Yamamoto, in combination with Yamamoto 2, the SCSI
`Specification, and the Admitted Prior Art, renders obvious the challenged
`claims. In our discussion below, we begin with a brief overview of the prior
`art, and then we address the obviousness of the challenged claims, focusing
`on those assertions by Petitioner that are disputed by Patent Owner.
`
`1. Overview of Yamamoto
`Yamamoto discloses an electronic camera having an image sensor for
`recording analog image data, and a hard disk that can be used as a storage
`device to an external computer via a SCSI interface. Ex. 1401, 1:7–10,
`4:21–30, 7:43–48, 23:8–13. Figure 29 of Yamamoto is reproduced below.
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`Figure 29 is an external view of a still video camera. Ex. 1401, 5:45–
`47, 22:6–7. “Beside the output terminal 17, a mode switch 19 is provided to
`set an operation mode of the still video camera.” Id. at 22:8–10. In the first
`mode, “HDD mode,” the hard disk of the camera (shown in Figure 30 as
`Hard Disk 71) “is used as the external memory for a computer connected to
`the still video camera though the output terminal 17.” Id. at 22:25–27.
`Figure 30 of Yamamoto, a block diagram of the internals of the camera
`shown in Figure 29, is reproduced below with highlights added by Petitioner
`(Pet. 33).
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`As illustrated in Figure 30 of Yamamoto, the camera comprises:
`system control circuit 20 (highlighted in pink), image sensor 44, e.g., a
`charge-coupled device (CCD) sensor (highlighted with a red box),
`analog-to-digital (A/D) converter 62 (highlighted in yellow), image
`processing circuit 63 (highlighted in green), memory 64 (highlighted in
`blue), image recording device 67 (highlighted in purple), detachable hard
`disk 71 (highlighted in orange), and output terminal 17 (highlighted in light
`blue). Id. at 6:7–8:5, 22:16–67. Mode switch 19 (not highlighted) is
`connected to system control circuit 20.
`
`2. Overview of Yamamoto 2
`Yamamoto 2, likewise, describes an electronic camera having a sensor
`for recording image data, and a hard disk device that can be used as a
`storage device to an external computer. Ex. 1407, Abs. The hard disk
`device has a file system and file allocation table so that the user can search
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`the hard disk for stored image data. Id. at 3:58–62. Figure 1 of Yamamoto 2
`is reproduced below.
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`
`
`As illustrated in Figure 1 of Yamamoto 2, the electronic camera
`comprises an optical system (not shown), system control circuit 11, hard
`disk device 13, solid state imaging device (CCD) 14, analog-to-digital (A/D)
`converter 16, memory 19, interface 22, and external computer 23. Id. at
`2:47–3:37. System control circuit 11 comprises a microcomputer which
`controls the entire electronic camera, and RAM 12. Id. at 2:51–53. An
`image signal corresponding to an object image is generated in CCD 14, and
`is converted into a digital signal in A/D converter 16. Id. at 2:66–3:9. The
`digital image data are stored in memory 19, and then transferred and
`recorded on a predetermined area of the hard disk mounted in hard disk
`device 13. Id. at 2:53–55, 3:26–28, 4:1–4. In one of the operational modes,
`hard disk device 13 is connected to external computer 23 through interface
`22, so that the hard disk of the electronic camera can be operated as an
`external storage device of external computer 23. Id. at 2:55–57, 3:34–36.
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`3. Overview of the SCSI Specification
`The SCSI Specification is a technical Specification published by the
`American National Standard for Information Systems to set forth the SCSI
`standards. According to the SCSI Specification, the SCSI protocol “is
`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
`including one or more hosts.” Ex. 1405, Abs. 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.
`
`4. Overview of the Admitted Prior Art
`According to the ’746 patent, drivers for hard disks were known to be
`customary drivers “in practically all host devices.” Ex. 1400, 3:36–39,
`4:17–20. The ’746 patent indicates that SCSI interfaces and SCSI drivers
`were known in the art at the time of the invention. Id. at 8:37–45, 10:14–24.
`According to the ’746 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 10:20–24. Moreover,
`certain standard access commands, including the SCSI INQUIRY command,
`were “supported by all known operating systems (e.g., DOS[®], Windows[®],
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`Unix[®]).” Id. at 5:8–11. The ’746 patent further discloses that it was known
`to those skilled in the art that a virtual boot sequence includes “the drive
`type, the starting position and the length of the file allocation table (FAT),
`[and] the number of sectors.” Id. at 5:38–44.
`Patent Owner argues in its Response that some of the statements
`Petitioner relies on are not admissions of prior art. PO Resp. 10. Patent
`Owner particularly refers to the portion of the Specification that describes
`sending a virtual boot sequence, at column 5, lines 27−54 (Ex. 1400). Id.
`We do not agree that the patentee did not admit this process was known in
`the art. The relevant 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. 1400, 5:38−44 (emphasis added). This statement
`unequivocally conveys that the applicant deemed it 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.
`Moreover, the Specification also indicates that “[c]ommunication
`between the host system or host device and the interface device is based on
`known standard access commands as supported by all known operating
`system (e.g., DOS[®], Windows[®], [and] Unix[®]).” Ex. 1400, 5:8−11. The
`Specification further indicates that “[t]hose skilled in the art know that
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`communication between a processor and a hard disk consists of the
`processor transferring to the hard disk the numbers of the blocks or clusters
`or sectors whose contents it wishes to read,” and “[b]y reference to the FAT,
`the processor knows which information is contained in which block.” Ex.
`1400 at 6:17–21 (emphasis added). The Specification explains the plug-and-
`play standard, in which the interface device simulates a hard disk to the host
`device, and the interface device is automatically detected and readied for
`operation when the host system is powered up or booted, was increasingly
`widespread used at the time of the invention. Id. at 7:11–16. In view of the
`Specification, we are persuaded that the statement regarding sending of a
`virtual boot sequence is an admission of prior art. In any event, we do not
`rely on this admission in our obviousness analysis below.
`
`5. Independent Claims 1, 31, and 34
`Petitioner contends that claims 1, 31, and 34—all the challenged
`independent claims—would have been obvious over a combination of
`Yamamoto, Yamamoto 2, the SCSI Specification, and the Admitted Prior
`Art. Pet. 26–50. Patent Owner disagrees. PO Resp. 16–35. For the reasons
`discussed below, we determine that Petitioner has demonstrated by a
`preponderance of the evidence that Yamamoto, in combination with
`Yamamoto 2, the SCSI Specification, and Admitted Prior Art, renders
`obvious claims 1, 31, and 34.
`An Analog Data Acquisition Device
`Claim 1 recites an “analog data acquisition device operatively
`connectable to a computer through a multipurpose interface of the
`computer,” which includes a program memory and a processor. Ex. 1400,
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`11:48–12:26. Claims 31 and 34 recite similar language.10 Id. at 14:16–44,
`15:15–16:17.
`Petitioner asserts that Yamamoto teaches or suggests the claimed
`analog data acquisition device. Pet. 32–39. In particular, Petitioner takes
`the position that Yamamoto’s still video camera 11, which can be connected
`to a computer through an output terminal 17, is equivalent to the claimed
`analog data acquisition device. Id. at 32. Petitioner explains that output
`terminal 17 “permits connection [from the camera] to an external computer
`through a cable” and “allows the computer and . . . camera to exchange SCSI
`commands and data.” Id. at 33–34 (citing Ex. 1401, 7:43–48; Ex. 1403
`¶ 85). Further, Petitioner contends that the computer sends command
`signals such as “READ CAPACITY” and “FORMAT UNIT” to the camera
`to control hard disk 71. Id. at 34 (citing Ex. 1401, 23:38–40; Ex. 1403 ¶ 85).
`Petitioner explains that these communications occur between the
`computer’s SCSI interface (the multipurpose interface), the camera’s output
`terminal 17 and interface circuit 65. Id. (citing 1401, 22:25–28). Petitioner
`adds that “[i]t would have been necessarily given that the [Yamamoto’s]
`computer would have an operating system” and “the Yamamoto camera’s
`access of [detachable hard disk 71] must necessarily include a device driver
`for accessing the hard disk device.” Id. at 34, 36.
`Finally, Petitioner maps the non-volatile memory of Yamamoto’s
`system control circuit 20 to the claimed “program memory” (id. at 36–37)
`
`10 Claim 31 recites “[a]n analog data acquisition and interface device for
`interfacing to a host device which includes a mass storage device” and a
`processor. Id. at 14:16–21. Claim 34 recites “a host device” “operatively
`interfacing a data acquisition device, including a processor and a memory.”
`Id. at 15:15–20.
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`and the micro-processor of system control circuit 20 to the claimed
`“processor” (id. at 39).
`Based on the evidence before us, we are persuaded by Petitioner’s
`showing that Yamamoto’s camera discloses an “analog data acquisition
`device.” Patent Owner does not dispute Petitioner’s contentions regarding
`this limitation. See Pet. 16–35. Accordingly, we determine that Petitioner
`has established by a preponderance of the evidence that Yamamoto teaches
`or suggests an “analog data acquisition device” having a program memory
`and process as required by claims 1, 31, and 34.
`
`Analog signal acquisition channel (claim 1)
`The analog data acquisition device of claim 1 additionally includes
`“an analog signal acquisition channel for receiving a signal from an analog
`source.” Ex. 1400, 11:59–60.
`Petitioner contends that “Yamamoto discloses a line sensor 44,”
`which “serves as a photoelectric conversion device” converting “an optical
`image to an electric signal” and “receives analog information from the
`photoelectric elements of the camera and converts it to an electric signal on a
`CCD, which can then be converted to digital information that forms a digital
`image.” Pet. 37.
`Petitioner addresses the analog signal acquisition channel again in its
`discussion of several of claim 1’s dependent claims explaining that “the
`Yamamoto camera can convert the ‘pixel signals’ (digitized analog data)
`acquired from the line sensor 44 into a form that permits an external
`computer to receive it in a file format typical of a data stored on a hard
`disk.” Pet. 52–53. Further, referring to Figure 19 of Yamamoto, Petitioner
`asserts that “the Yamamoto camera may have multiple light sources (42a–
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`42c), scanner optical systems (43a–43c), line sensors (44a–44c), line sensor
`drive circuits (47a–47c), amplifiers (61a–61c) and A/D converters (62a–
`62c).” Id. at 53. According to Petitioner “[t]hese devices comprise a
`plurality of analog sources from which analog data can be simultaneously
`acquired, digitized, and processed by the image processing circuit 63, under
`control of the system control circuit 20 (processor).” Id. Thus, Petitioner
`concludes that Yamamoto discloses “a plurality of independent analog signal
`acquisition channels, each of the plurality of channels.” Id.; see also Pet.
`67–68 (stating similar reasoning to conclude that Yamamoto discloses the
`limitation added by claim 35).
`As we explained in the Institution Decision (Inst. Dec. 15),
`Petitioner’s explanation leads us to presume that Petitioner equates line
`sensor 44 to the claimed analog signal acquisition channel, which is shown
`to send output through analog/digital converter 62. We also presume that
`Petitioner is mapping “the photoelectric elements of the camera” as the
`analog source. See Pet. 37.
`Based on the evidence before us, we are persuaded by Petitioner’s
`showing that Yamamoto’s line sensor 44 receives an optical image from an
`analog source and converts that image to an electric signal, which in turn is
`sent to analog/digital converter 62 for digitization. Ex. 1401, 6:66–7:5,
`7:31–33. Patent Owner doe