Trials@uspto.gov
`571.272.7822
`
`Paper No. 32
`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 IPR2016-01214
`Patent 8,966,144B2
`____________
`
`
`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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`
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`571.272.7822
`
`Paper No. 32
`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 IPR2016-01214
`Patent 8,966,144B2
`____________
`
`
`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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`
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`
`
`
`
`
`
`
`IPR2016-01214
`Patent 8,966,144 B2
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`
`INTRODUCTION
`
`A. Background
`Petitioner, listed above, filed a Petition requesting inter partes review
`of claims 1–8, 13–17, 19, 27–29, 31–40, 42–48, 52–55, 59, 61, 66, and 78–
`87 (the “challenged claims”) of U.S. Patent No. 8,966,144 B2 (Ex. 1400,
`“the ’144 patent”). Paper 5 (“Pet.”). Patent Owner, Papst Licensing GmbH
`& Co., KG, filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). On
`December 15, 2016, we granted the Petition, instituting trial on whether
`under § 103(a)1 (1) claims 1–8, 13–17, 19, 27–29, 31–40, 42–48, 52–55, 59,
`61, and 78–87 would have been obvious over Yamamoto,2 Yamamoto 2,3
`the SCSI Specification,4 and Admitted Prior Art,5 and (2) claim 66 would
`have been obvious over and Yamamoto, Yamamoto 2, Muramatsu,6 the
`
`
`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 1, 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, 3:37–46, 4:20–22, 5:11–14, 5:21–23, 5:37–47, 8:45–50,
`10:26–29. Although discussed in the Petitioner’s analysis, the SCSI
`Specification and the Admitted Prior Art were omitted inadvertently from
`the statement of the asserted ground. 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. Inst. Dec. 7, n.3.
`6 U.S. Patent No. 5,592,256, issued Jan. 7, 1997 (Ex. 1408) (“Muramatsu”).
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`SCSI Specification, and the Admitted Prior Art. Paper 12 (“Institution
`Decision” or “Inst. Dec.”).
`Following institution, Patent Owner filed a Response (Paper 16, “PO
`Resp.”)7, and Petitioner filed a Reply (Paper 22, “Reply”). Upon
`authorization, Patent Owner filed objections to arguments and evidence filed
`with Petitioner’s Reply (Paper 26) and Petitioner file a response to those
`objections (Paper 28). We held an oral hearing on September 14, 2017.
`Paper 29 (“Tr.”).8
`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 ’144 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. 12–14; Paper 6, 1–3. This patent has also
`been challenged in several other petitions for inter partes review. Pet. 14;
`Paper 6, 4–5. A final written decision in each of the following proceedings
`
`
`7 Patent Owner proffers testimony, supporting its position, by Thomas A.
`Gafford. Ex. 2007.
`8 This was a consolidated hearing with related cases IPR2016-01199,
`IPR2016-01200, and IPR2016-01213. See Tr. In addition, on September
`13, 2017, we held oral hearings 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 30, 31.
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`3
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`IPR2016-01214
`Patent 8,966,144 B2
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`is entered concurrently with this decision: IPR2016-01199, IPR2016-01212,
`IPR2016-01216, and IPR2016-01225.
`
`C. The ’144 Patent
`The ’144 patent describes an interface device for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1400, 1:18–22,
`1:54–57. According to the ’144 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 2:4–19. 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 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 ’144 patent indicates that the “invention is based on the finding
`that both a high data transfer rate and host device-independent use can be
`achieved if a driver for an input/output device customary in a host device” is
`used. Id. at 3:33–36. Figure 1 of the ’144 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 4:62–5:10. 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
`specific driver software for the interface card. Id. at 3:51–57, 8:42–46.
`According to the ’144 patent, SCSI interfaces were known to be present on
`most host devices or laptops. Id. at 8:42–46. By using a standard interface
`of a host device and by simulating an input/output device to the host device,
`the interface device “is automatically supported by all known host systems
`without any additional sophisticated driver software.” Id. at 11:38–44.
`
`D. Challenged Claim
`Of the challenged claims, claims 1, 84, and 86 are independent.
`Claims 2–8, 13–17, 19, 27–29, 31–40, 42–48, 52–55, 59, 61, 66, and 78–83
`depend directly or indirectly from claim 1, claim 85 depends directly from
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`independent claim 84, and claim 87 depends directly from independent
`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 multipurpose interface of the computer
`(a) without requiring any end user to load any software
`onto the computer at any time,
`(b) without requiring any end user to interact with the
`computer to set up a file system in the ADGPD at any time,
`(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;
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`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. 1400, 11:56–12:36
`
`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
`several terms. Inst. Dec. 8−16. We note, however, that the ’144 patent may
`expire shortly after the date of this Decision. In fact, 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. 1400, [60]. 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
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`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 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).9 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.
`With few exceptions, addressed below, both Petitioner and Patent
`Owner agree with our claim constructions set forth in the Institution
`Decision. PO Resp. 11−15; Reply 25. While Petitioner urges us not to
`adopt any new construction in the Final Decision, Patent Owner advances
`several modifications. PO Resp. 11−15. 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 controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`
`9 The ’144 patent and the ’399 patent share the same Specification and some
`of the same claim terms are used in both patents (e.g., interface device). Our
`interpretations herein are consistent with the Federal Circuit’s decision.
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`
`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. 1400,
`11:57–58, 16:11–12, 17:25–26. In the Institution Decision (Inst. 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. 1400. Rather, the Specification focuses on an interface device for
`communication between a host device and a data transmit/receive device.
`See, e.g., id. at Abstract., 1:18–22, 3:29–32, Figs. 1, 2. We further noted that
`claims 1 and 2 define an “analog data generating and processing device” as
`an interface device having, at least, a sensor. In that light, we construed the
`claim term “analog data generating and processing device” or “ADGPD” to
`encompass “an interface device having a sensor.” Inst. Dec. 8−9. After
`Institution, Patent Owner objects to this construction “[i]f intended to be a
`full construction.” PO Resp. 11. This construction is not intended to be
`complete, but simply to provide an example of what the phrase encompasses
`as necessary for the analysis below. We discern no reason to modify the
`construction. Therefore, for purposes of this Final Written Decision, we
`maintain our construction as to the term “analog data generating and
`processing device.”
`
`2. “sensor”
`Each independent claim recites “a sensor designed to transmit data.”
`
`See, e.g., Ex. 1400, 11:62. Claim 17, which depends directly from claim 1,
`requires the “sensor” to comprise a “data transmit/receive device.” Id. at
`13:7–8. In the Institution Decision (Inst. Dec. 9–10), we noted that, apart
`from the claims, the term “sensor” does not appear in the Specification of
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`9
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`Patent 8,966,144 B2
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`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. 1400, 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. Inst.
`Dec. 9–10. After Institution, both parties indicate that they agree with this
`claim construction. PO Resp. 12–13; Reply 25. 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. 1400, 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.
`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. 1403 ¶ 54.
`In light of the Specification and the evidence before us regarding the
`general knowledge of an ordinarily skilled artisan, we construed a
`“multi-purpose interface” to encompass a “SCSI interface” in the Institution
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`Decision. Inst. Dec. 10. Patent Owner objects to this construction in the
`event that a multi-purpose interface is limited to a SCSI interface. PO Resp.
`13. This construction does not limit a multi-purpose interface to a SCSI
`interface. Therefore, 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. 1400, 12:22–23, 17:10, 18:24. For instance, claim 1 recites “the
`at least one parameter is consistent with the ADGPD being responsive to
`commands issued from a customary driver.” Id. at 12:20–23 (emphasis
`added). Claim 29, which depends directly from claim 1, further recites
`“wherein the at least one parameter is consistent with the ADGPD being
`responsive to a SCSI inquiry command.” Id. at 13:38–40 (emphasis added).
`The Specification of the ’144 patent indicates that “both a high data
`transfer rate and host device-independent use can be achieved if a driver for
`an input/output device customary in a host device, normally present in most
`commercially available host devices, is utilized.” Ex. 1400, 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
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`commercially available computer system (e.g., a hard disk driver or a SCSI
`driver).” Inst. 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. 13–14. We discern
`no reason to modify the construction and, therefore, we maintain our claim
`construction of the term “customary driver.”
`5. “automatic recognition process”
`Each independent claim requires the processor to be adapted to be
`involved in an “automatic recognition process,” sending “identification
`information regarding the ADGPD” to the multi-purpose interface of the
`computer. See, e.g., Ex. 1400, 12:4–36. In the Institution Decision (Inst.
`Dec. 12−13), 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®, Windows®,
`Unix®).” Ex. 1400, 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
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`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.” Neither party disputes this
`claim construction. PO Resp. 14; Reply 25. For this Final Decision, we
`maintain our claim construction as to “automatic recognition process.”
`6. “automatic file transfer process”
`Each independent claim requires the processor to be adapted to be
`involved in an “automatic file transfer process,” sending a digitized analog
`data file to the computer. See, e.g., Ex. 1400, 12:24–36. The Specification
`describes that a user interacts with the host computer to request transfer of
`the digitized analog data, and the transfer occurs automatically after the
`request is made. Ex. 1400, 6:2–5 (“If the user now wishes to read data from
`the data transmit/receive device via the line 16, the host device sends a
`command, for example ‘read file xy,’ to the interface device.”). In the
`Institution Decision (Inst. Dec. 13−14), we construed an “automatic file
`transfer process” to encompass a file transfer process that allows user
`intervention to initiate the process or make a transfer request. See
`WhitServe, 694 F.3d at 19; CollegeNet, 418 F.3d at 1235. Neither party
`challenges this claim construction. PO Resp. 14; Reply 25. For this Final
`Decision, we maintain our claim construction for “automatic file transfer
`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
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`occur “without requiring any user-loaded file transfer enabling software to
`be loaded on or installed in the computer at any time.” Ex. 1400, 12:4–36.
`In this regard, the parties initially agreed to adopt the construction
`proposed by Patent Owner in the related district court proceeding—“without
`requiring the end user to install or load specific drivers or software for the
`ADGPD beyond that included in the operating system or BIOS.” Prelim.
`Resp. 20; Pet. 8–10 (citing Ex. 1404) (emphasis added). Patent Owner’s
`proposed claim construction was intended to clarify the aforementioned
`“without requiring” limitations so that they would not be read out of context
`with the rest of the claim language. Ex. 1404, 42.
`However, in light of the Specification, we noted that the 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. Inst. 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 the 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 25. Patent Owner,
`however, disagrees with our claim construction, arguing that “a driver for a
`multi-purpose interface or SCSI interface that must be installed by a user
`would be inconsistent with these limitations.” PO Resp. 15 (citing Ex. 2007
`¶ 463). Patent Owner’s argument and Mr. Gafford’s testimony (Ex. 2007
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`¶ 63) 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. 1400, 3:59–4:1. The Specification also makes clear that
`communication between the host device and the multi-purpose
`interface can take place not only via drivers for input/output
`device customary in a host device which reside in the BIOS
`system of the host device but also via specific interface drivers
`which,
`in
`the case of SCSI
`interfaces, are known as
`multi-purpose interface ASPI (advanced SCSI programming
`interface) drivers.
`Id. at 10:23–29 (emphases added). Interpreting the “without requiring”
`limitations to exclude the drivers for a multi-purpose interface would be
`unreasonable when the very same claim, claim 1, also requires a
`multi-purpose interface. Id. at 12:6–7. Claim 29, which depends from claim
`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
`
`15
`
`
`
`IPR2016-01214
`Patent 8,966,144 B2
`
`Celsis In Vitro v. CellzDirect, Inc., 664 F.3d 922, 926−27 (Fed. Cir. 2012),
`concerning a claim reciting “without requiring,” which is similar to the
`language we have here. In that decision, our reviewing court stated:
`“‘without requiring’ means simply that the claim does not require the
`[recited] step,” and “performance of that step does not preclude a finding of
`infringement.” Id. Here too, the claim language is not as restrictive as
`Patent Owner argues. The claim language, under a plain reading, means that
`the end user is “not required” to load or install the recited software for
`transferring a file or recognizing a device. The claim language, however,
`does not prohibit the end user from ever installing or loading the recited
`software. The key word in the claim language is “requiring”—if the
`software is not required, then it does not matter whether the end user loaded
`or installed the software.
`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 an automatic
`transfer process to occur for a “first computer” and a “second computer that
`is manufactured by a company other than the company that manufactured
`the first computer.” Ex. 1400, 17:41–18:18. In the Institution Decision, we
`adopted the parties’ proposed claim construction, interpreting these
`limitations of claim 86 to refer to, respectively, a first computer and a second
`
`16
`
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`IPR2016-01214
`Patent 8,966,144 B2
`
`computer “regardless of the identity of a manufacturer of the computer.”
`Inst. Dec. 16; Pet. 56; Prelim. Resp. 29–37. After institution, both parties
`agree with our claim construction. PO Resp. 15; Reply 25. Therefore, for
`this Final 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.10 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
`
`
`10 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.
`
`17
`
`
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`IPR2016-01214
`Patent 8,966,144 B2
`
`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. 17–18),
`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 ¶ 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 years of experience
`without a bachelor’s degree. Prelim. Resp. 18; PO Resp. 10–11; Ex. 2007
`¶ 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
`
`18
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`IPR2016-01214
`Patent 8,966,144 B2
`
`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., S
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