throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper: 24
`
`
`
` Entered: February 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and LG ELECTRONICS,
`INC.
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-017331
`Patent 9,189,437 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
`
`
`
`1 LG Electronics, Inc. (“LG”) filed a petition and motion to join this case in
`IPR2017-01038. We granted that motion and joined the two cases on April
`11, 2017. Paper 10. Subsequently, LG and Patent Owner filed a joint
`motion to terminate the proceeding as to LG. Paper 22.
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd., and Samsung Electronics America,
`Inc. (collectively “Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–45 (“the challenged claims”) of U.S. Patent No.
`9,189,437 B2 (Ex. 1003, “the ’437 patent”). Paper 1 (“Pet.”). Patent
`Owner, Papst Licensing GmbH & Co., KG (“Patent Owner”), filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted this review
`as to all challenged claims. Paper 7 (“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 13 (“PO Resp.”). Petitioner filed a Reply. Paper 15
`(“Reply”). A transcript of the oral hearing held on November 1, 2017, has
`been entered into the record as Paper 23 (“Tr.”).
`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 1–38 and 43–45 of the ’437 patent are
`unpatentable, but not as to claims 39−42.
`
`A. Related Matters
`The parties indicate that the ’437 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. 80–81; Paper 5, 2–3.
`The ’437 patent has also been challenged in several other petitions for
`inter partes review. All but one of these petitions—IPR2016-01842—was
`denied. See IPR2016-01840; IPR2016-01841; IPR2016-01844; IPR2017-
`
`2
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`00156; IPR2017-00712. IPR2016-01842 was instituted April 27, 2017 and
`is proceeding concurrently with this case.
`
`B. The ’437 Patent
`The ’437 patent describes an interface device for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1003, 1:18–22,
`1:54–57. According to the ’437 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 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 ’437 patent indicates that the purported “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 ’437 patent, reproduced
`below, illustrates a block diagram of an interface device.
`
`3
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`
`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 ’437
`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.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 39, 41, and 43 are independent.
`Claims 2–38 depend ultimately from claim 1; claim 40 depends from claim
`39; claim 42 depends from claim 41; and claims 44 and 45 depend from
`claim 43. Claim 1 is illustrative:
`
`4
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`1. An analog data generating and processing device (ADGPD),
`comprising:
`an input/output (i/o) port;
`a program memory;
`a data storage memory;
`a processor operatively interfaced with the i/o port, the program
`memory and the data storage memory;
`wherein the processor is adapted to implement a data generation
`process by which analog data is acquired from each respective
`analog acquisition channel of a plurality of independent
`analog acquisition channels, the analog data from each
`respective channel is digitized, coupled into the processor,
`and is processed by the processor, and the processed and
`digitized 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 of a host computer in which,
`when the i/o port is operatively interfaced with a multi-
`purpose interface of the host computer, the processor executes
`at least one instruction set stored in the program memory and
`thereby causes at least one parameter identifying the analog
`data generating and processing device, independent of analog
`data source, as a digital storage device instead of an analog
`data generating and processing device to be automatically
`sent through the i/o port and to the multi-purpose interface of
`the computer (a) without requiring any end user to load any
`software onto the computer at any time and (b) without
`requiring any end user to interact with the computer to set up
`a file system in the ADGPD at any time, wherein the at least
`one parameter is consistent with the ADGPD being
`responsive to commands issued from a customary device
`driver;
`wherein the at least one parameter provides information to the
`computer about file transfer characteristics of the ADGPD;
`
`5
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`and
`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 sent
`from the i/o port to the multi-purpose interface of the
`computer, the processor executes at least one other instruction
`set stored in the program memory to thereby cause the at least
`one file of digitized analog data acquired from at least one of
`the plurality of analog acquisition channels to be transferred
`to the computer using the customary device driver for the
`digital storage device while causing the analog data
`generating and processing device to appear to the computer
`as if it were the digital storage device without requiring any
`user-loaded file transfer enabling software to be loaded on or
`installed in the computer at any time.
`Ex. 1003, 11:57–12:42.
`
`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 4–7).
`
`
`
`
`
`Reference
`
`Aytac
`
`US 5,758,081, issued May 26, 1998
`
`Exhibit
`
`1004
`
`Aytac’s
`source code
`
`Aytac’s source code in U.S. Patent Application No.
`08/569,846
`
`Ex. 1006,
`77–527
`
`SCSI
`Specification
`
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC.,
`AMERICAN NATIONAL STANDARD FOR INFORMATION
`SYSTEMS – SMALL COMPUTER SYSTEM INTERFACE-2,
`ANSI X3.131-1994 (1994)
`
`Adaptec
`
`US 5,659,690, issued Aug. 19, 1997
`
`1005
`
`1009
`
`6
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`
`
`Reference
`
`Muramatsu US 5,592,256, issued Jan. 7, 1997
`
`TI Data
`Sheet
`
`“8-Bit Analog-to-Digital Converters With Serial
`Control and 19 Inputs (Rev. B),” SLAS066B, revised
`Oct. 1996 by Texas Instruments Inc., (available at
`http://www.ti.com/lit/ds/slas066b/slas066b.pdf)
`
`TI Patent
`
`US 5,325,071, issued June 28, 1994
`
`Admitted
`Prior Art
`
`See, e.g., 1:25–3:25, 8:45–50, 10:26–33
`
`E. Asserted Ground of Unpatentability
`We instituted inter partes review on the following grounds of
`unpatentability (Inst. Dec. 39–40):2
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`Exhibit
`
`1008
`
`1007
`
`1013
`
`1003
`
`1, 4–16, 18–31, 33–
`37, 41, 43, and 45
`
`§ 103(a)
`
`Aytac, the SCSI Specification and
`Admitted Prior Art3
`
`
`2 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.
`3 Although the Admitted Prior Art is relied upon in the Petitioner’s analysis,
`of all challenged claims (1–45), the Admitted Prior Art is only mentioned in
`the ground relating to claim 41. Pet. 8. In the Institution Decision, we
`notified the parties that we treat the petition’s omission in the statement of
`the asserted grounds as harmless error and presume that Petitioner intended
`to assert that all the challenged claims are unpatentable based, in part, on the
`Admitted Prior Art. Inst. Dec. 7, n.2.
`7
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`Challenged Claims
`2, 3, 17, 39, 40, 42,
`and 44
`
`32
`
`13 and 45
`
`38
`
`40
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Reference(s)
`Aytac, the SCSI Specification, Admitted
`Prior Art, and Adaptec
`Aytac, the SCSI Specification, Admitted
`Prior Art, and Muramatsu
`Aytac, the SCSI Specification, Admitted
`Prior Art, and TI Data Sheet
`Aytac, the SCSI Specification, Admitted
`Prior Art, TI Data Sheet, and TI Patent
`
`Aytac, the SCSI Specification, Admitted
`Prior Art, Adaptec, and TI Data Sheet
`
`II. 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). 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 (Fed. Cir. 2012) (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).
`
`8
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`Here, in the Institution Decision, we applied the broadest reasonable
`interpretation standard to construe several claim terms. Dec. 8−14. Patent
`Owner, however, represents that the ’437 patent will expire on March 3,
`2018, shortly after the deadline for a final written decision in this case—
`February 8, 2018. PO Resp. 21. Both parties assert that, because the ’437
`patent does not expire prior to our decision deadline, the broadest reasonable
`interpretation standard is applicable. Id.; Reply 3, n.3. Patent Owner notes
`that its proposed constructions are the same under either standard. Id. at 22.
`Petitioner proposes slightly different constructions for “automatic
`recognition process” and “without requiring any end user to load software.”
`Reply 3.
`We agree with Petitioner that any potential difference between the two
`standards would not affect the outcome of this Decision. Reply 3, n.3.
`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. 9–11; Ex. 1014; Inst. Dec. 8–14.
`Both Petitioner and Patent Owner mostly agree with our claim
`constructions set forth in the Institution Decision. PO Resp. 24–32; Reply
`3−9. We address, below, the construction of certain terms 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); Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`9
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`1. “multi-purpose interface”
`Each independent claim recites “a multi-purpose interface of the
`
`computer.” Ex. 1003, 12:9, 15:28–29, 16:10–11, 16:52–53. The
`Specification of the ’437 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
`system.” Ex. 1001 ¶ 50.
`In light of the Specification and the evidence before us regarding the
`general knowledge of an ordinarily skilled artisan, we construed a
`“multi-purpose interface” to encompass a “SCSI interface” in the Institution
`Decision. Inst. Dec. 8–9. Patent Owner objects to this construction in the
`event that a multi-purpose interface is limited to a SCSI interface. PO Resp.
`24. 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.”
`
`10
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`2. “automatic recognition process”
`Independent claim 1 requires the processor to be adapted to be
`involved in an “automatic recognition process,” sending “at least one
`parameter identifying the [ADGPD], independent of analog data source, as a
`digital storage device instead of as an [ADGPD]” to the multi-purpose
`interface of the computer. See, e.g., Ex. 1003, 12:6–23 In the Institution
`Decision (Inst. Dec. 9–10), 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 ’437 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. 1003, 5:11–14. When the host
`system is connected to the interface device and is booted, “usual BIOS
`routines or multi-purpose interface programs issue an instruction, known by
`those skilled in the art as the INQUIRY instruction.” Id. at 5:17–23. In
`response to the INQUIRY 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.”
`Neither party disputes this claim construction. Dec. 9. The parties do not
`disagree with this construction. PO Resp. 25; Reply 4–7 (asserting that
`11
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`Patent Owner implicitly, and improperly, attempts to add limitations to this
`term in the analysis portion of its decision)4. For this Final Decision, we
`maintain our claim construction as to “automatic recognition process.”
`
`3. “automatic file transfer process”
`Independent claim 1 requires the processor to be adapted to be
`involved in an “automatic file transfer process,” sending a digitized analog
`data file to the computer. Ex. 1003, 12:27–42. The Specification describes
`that a user interacts with the host computer to request transfer of the
`digitized analog data, and the transfer occurs automatically after the request
`is made. Ex. 1003, 6:2–5 (“If the user now wishes to read data from the data
`transmit/receive device via the line 16, the host device sends a command, for
`example ‘read file xy,’ to the interface device.”).
`Patent Owner does not explicitly address the construction of this term
`in its Response. Petitioner, however, argues that Patent Owner implicitly
`construes this term by requiring the ADGPD to “reliably transfer data.”
`Reply 4–7.
`Similar to the term “automatic recognition process,” we construe
`“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. We discuss
`Petitioner’s argument regarding Patent Owner’s implicit construction of this
`term in our analysis below.
`
`
`4 We address Petitioner’s arguments on this issue in the analysis section of
`this Decision.
`
`12
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`4. “without requiring”
`Each independent claim recites at least one negative limitation. For
`instance, claim 1 requires the automatic recognition process to occur
`“without requiring any end user to load any software onto the computer at
`any time,” and requires the automatic file transfer process to occur “without
`requiring any user-loaded file transfer enabling software to be loaded on or
`installed in the computer at any time.” Ex. 1003, 12:27–42. Claim 43
`similarly requires transferring digitized data “without requiring the user to
`load the device driver.” Id. at 17:3–10.
`For these claim limitations, 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. 16; Pet. 9 (citing Ex. 1014) (emphasis
`added). However, in light of the Specification, in our Institution Decision
`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. 10–12. Thus, 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. at 12.
`After institution, Petitioner agrees with our claim construction and
`urges us not to adopt a new construction. Reply 7. Patent Owner, however,
`13
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`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. 25–26. Patent Owner’s
`argument and Mr. Gafford’s testimony (Ex. 2006 ¶ 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. 1003, 3:59–4:1. The Specification also makes clear that
`communication between the host device and the multi-purpose
`interface can take place not only via drivers for input/output
`device customary in a host device which reside in the BIOS
`system of the host device but also via specific interface drivers
`which,
`in
`the case of SCSI
`interfaces, are known as
`multi-purpose interface ASPI (advanced SCSI programming
`interface) drivers.
`Id. at 10:23–29 (emphases added). Interpreting the “without requiring”
`limitations to exclude the drivers for a multi-purpose interface would be
`unreasonable when the very same claim, claim 1, also requires a
`multi-purpose interface. Id. at 12:6–7. Claim 21, which depends from claim
`1, also requires a SCSI driver to issue a SCSI INQUIRY command. Id. at
`13:64–67. 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 manufacturer or user. Id. at 3:51−56, 5:17−33, 11:14−23.
`14
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`Therefore, Patent Owner’s proposed construction would be inconsistent with
`the Specification and those claims.
`More importantly, the issue in dispute centers on whether the “without
`requiring” limitations prohibit an end user from installing or loading other
`drivers. In that regard, we are guided by the Federal Circuit’s analysis in
`Celsis In Vitro v. CellzDirect, Inc., 664 F.3d 922, 926−27 (Fed. Cir. 2012),
`concerning a claim reciting “without requiring,” which is similar to the
`language we have here. In that decision, our reviewing court stated:
`“‘without requiring’ means simply that the claim does not require the
`[recited] step,” and “performance of that step does not preclude a finding of
`infringement.” Id. Here too, the claim language is not as restrictive as
`Patent Owner argues. The claim language, under a plain reading, means that
`the end user is “not required” to load or install the recited software for
`transferring a file or recognizing a device. The claim language, however,
`does not prohibit the end user from ever installing or loading the recited
`software. The key word in the claim language is “requiring”—if the
`software is not required, then it does not matter whether the end user loaded
`or installed the software.
`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.”
`
`15
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`5. “end user”
`Independent claim 1 recites “without requiring any end user to load
`any software onto the computer at any time,” and “without requiring any end
`user to interact with the computer to set up a file system in the ADGPD at
`any time.” Ex. 1003, 12:17–20 (emphasis added).
`In the Institution Decision (Dec. 12−14), we gave the claim term “end
`user” its ordinary and customary meaning—“[t]he ultimate user of a
`computer or computer application in its finished, marketable form”—citing
`two dictionary definitions. Dec. 14; see also MICROSOFT COMPUTER
`DICTIONARY at 176 (3rd ed. 1997) (Ex. 3001, 3) (defining “end user” as
`“[t]he ultimate user of a computer or computer application in its finished,
`marketable form”); BARRON’S DICTIONARY OF COMPUTER AND INTERNET
`TERMS at 158 (6th ed. 1998) (defining “end user” as “the person ultimately
`intended to use a product, as opposed to people involved in developing or
`marketing it”), 453 (defining “system administrator” as “a person who
`manages a multiuser computer”) (Ex. 3002, 3). We rejected Patent Owner’s
`argument that the claim term “end user” should not be limited to “actual end
`user,” but instead should include a “system administrator” who sets up a
`computer for another or “a technically competent individual who understood
`how to install device drivers.” Prelim. Resp. 21–26.
`After Institution, Patent Owner “maintains the ‘end user’ requires no
`construction and that the Board’s cited definition is consistent with the
`ordinary meaning of ‘end user’ as it is used in the ’437 patent.” PO Resp.
`26–27. Nonetheless, Patent Owner argues that the term “end user”
`“encompasses a ‘system administrator’ or a ‘technically competent person’”
`16
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`because both “are ultimate users of a computer in its finished and marketable
`form.” Id. at 30.
`We agree, however, with Petitioner, that it is unnecessary to resolve
`this dispute about the exact scope of the term “end user.” See Reply 4, n.4.
`The analysis below turns on the question of whether software need be
`installed at all, not on whether the installation is done by an end user or not.
`Thus, we maintain our construction, giving the claim term “end user”
`its ordinary and customary meaning—“[t]he ultimate user of a computer or
`computer application in its finished, marketable form.” Ex. 3001, 3.
`
`6. “an analog to digital converter operatively coupled to the digital
`processor and configured to simultaneously acquire analog data from
`each respective analog source”
`Independent claim 41 recites, as part of the ADGPD, “an analog to
`digital converter operatively coupled to the digital processor and configured
`to simultaneously acquire analog data from each respective analog source.”
`Ex. 1003, 16:13–21 (emphases added).
`In the preliminary portion of this trial, neither party proposed an
`explicit construction for this limitation and we did not address the term in
`the Institution Decision. See Pet.; Prelim. Resp.; Inst. Dec. Patent Owner’s
`Response also does not explicitly propose a construction for this term.
`However, in its analysis, Patent Owner asserts that claim 41 “requires a
`single A/D converter to ‘simultaneously acquire analog data from each
`respective analog source.’” PO Resp. 59. Petitioner characterizes this
`assertion as “import[ing] a single A/D converter into [the] limitation.”
`Reply 7–8.
`
`17
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`Because we agree that Patent Owner’s argument is, at least partially,
`an argument regarding the construction of the term “an analog to digital
`converter . . . simultaneously acquir[ing] analog data from each respective
`analog source,” we address the issue here.
`At oral argument, Patent Owner clarified its proposed construction of
`this limitation, explaining that there has to be a single analog to digital
`converter that is “configured to [simultaneously] acquire analog data from
`each respective analog acquisition channel of a plurality of analog
`acquisition channels.” Tr. 11:26–12:4 (emphasis added). Further, Patent
`Owner does not disagree that “an analog to digital converter” means “one or
`more” analog to digital converters, however, according to Patent Owner
`each of the potential multiple converters “would need to be configured to
`[simultaneously] acquire analog data from each of the plurality of analog
`sources.” Id. at 12:9–13.
`Petitioner disagrees, pointing out that the claim uses the phrase “an
`analog to digital converter,” which normally means “at least one” or “one or
`more.” Reply 7–9. Petitioner adds that the claim language does not require
`each analog to digital converter to acquire data from multiple analog
`sources, but instead each converter can acquire data from one analog source,
`and working in parallel, meet the requirement for simultaneously acquiring
`from multiple analog sources. Tr. 17:4–7.
`The answer to this dispute clearly lies in the language of the claim
`itself. The question being, whether the phrase “configured to simultaneously
`acquire analog data from each respective analog source” is so tightly
`coupled to the phrase “analog to digital converter” that the article “an,”
`18
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`while allowing for more than one converter per ADGPD, requires each such
`converter to be configured in the recited manner. We are persuaded that,
`while this is a close issue, Patent Owner’s reading is the more natural.
`We see at least two reasons for this conclusion. First, as conceded by
`Petitioner, “an analog to digital converter” means “at least one” converter.
`See Reply 7–9. By definition, then, the claim encompasses the circumstance
`when there is only one converter. In that case, it is indisputable that the one
`converter would be required to “acquire analog data from each respective
`analog source of a plurality of analog sources.” Thus, both of the proposed
`readings encompass a circumstance when one analog to digital converter is
`required to simultaneously acquire analog data from multiple sources.
`Second, to get to Petitioner’s proposed interpretation, we must read at least
`one word into the claim that is not there. Specifically, Petitioner’s
`interpretation would require the claim language to include more than one
`converter “coupled to the digital processor and [together] configured to
`simultaneously acquire analog data from multiple analog sources.”
`Second, Petitioner appears to agree that the clause preceding the
`“and” in the language at issue means that if the ADGPD includes more than
`one analog to digital converter, each of the multiple converters is
`“operatively coupled to the digital processor.” See Pet. 68 (“A POSITA
`would know this and that the ADC converters must be ‘coupled’ to the
`processor.”). However, according to Petitioner, the clause following the
`“and” does not require each of the multiple converters to be “configured to
`simultaneously acquire analog data from each respective analog source.”
`Reply 7–9; Tr. 17:4–7. Instead, according to Petitioner, the multiple
`19
`
`

`

`Case IPR2016-01733
`Patent 9,189,437 B2
`
`converters can be read as a group to be “configured to simultaneously
`acquire analog data from each respective analog source.” Petitioner does not
`point to any portion of the Specification that would support such a reading.
`See Reply 7–9. We decline to read words into the claim without any
`indication from the Specification that we should do so. See Source
`Vagabond Sys. Ltd. V. Hydrapak, Inc., 753 F.3d 1291, 1299–1300 (Fed. Cir.
`2014) (“[A]n ‘analysis’ that adds words to the claim language . . . does not
`follow standard cannons of claim construction.”) (internal quotation marks
`omitted).
`Thus, we agree with Patent Owner and interpret “an analog to digital
`converter operatively coupled to the digital processor and configured to
`simultaneously acquire analog data from each respective analog source” to
`require at least one analog to digital converter that is configured to
`simultaneously acquire analog data from multiple analog sources. Our
`interpretation also is the one that more naturally comports with the
`Specification’s only embodiment of the ADGPD, where an ADC (coupled to
`the digital signal processor) is fed eight different inputs, each input
`corresponding to an analog source. Ex.

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket