`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.