Trials@uspto.gov
`571-272-7822
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` Paper 15
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` Entered: March 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01839
`Patent 6,470,399 B1
`____________
`
`
`
`
`
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 15
`
`
`
` Entered: March 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01839
`Patent 6,470,399 B1
`____________
`
`
`
`
`
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-01839
`Patent 6,470,399 B1
`
`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1, 3, 5, 11, and 14 (“the challenged claims”) of U.S. Patent
`No. 6,470,399 B1 (Ex. 1001, “the ’399 patent”). Paper 2 (“Pet.”). Papst
`Licensing GmbH & Co., KG (“Patent Owner”), filed a Preliminary
`Response. Paper 12 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we determine that, on this record, Petitioner has established a reasonable
`likelihood that it would prevail with respect to the challenged claims. We
`hereby institute an inter partes review as to the challenged claims.
`
`A. Related Matters
`
`The parties indicate that the ’399 patent is involved in Papst Licensing
`GmbH & Co. KG v. Apple Inc., Case No. 6-15-cv-01095 (E.D. Tex.) and
`other proceedings. Pet. 2–3; Paper 11, 2–5.
`
`B. The ’399 Patent
`
`The ’399 patent describes interface devices for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1201, 1:9–13,
`1:48–51. According to the ’399 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
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`systems. Id. at 1:65–2:12. Several solutions to this problem were known in
`the art. Id. at 2:16–3:21. 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 2:19–24. The plug-in card provided a
`printer interface for enhancing data transfer rates. Id. at 2:24–28. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:6–10. The interface appeared as a floppy
`disk drive to the host, allowing a floppy disk drive and another peripheral
`device to be connected to the host device. Id. at 3:13–15.
`The ’399 patent indicates that its “invention is based on the finding
`that both a high data transfer rate and host device-independent use can be
`achieved if a driver for an input/output device customary in a host device” is
`utilized. Id. at 4:23–27. Figure 1 of the ’399 patent, reproduced below,
`illustrates a block diagram of an interface device.
`
`
`As shown in Figure 1 above, interface device 10 connects to a host
`device via host line 11, and to a data transmit/receive device via output
`line 16. Id. at 5:47–63. Interface device 10 includes first connecting
`3
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`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”)—which includes both an interface card
`and the driver for the interface card. Id. at 4:40–46, 8:29–32. According to
`the ’399 patent, SCSI interfaces were known to be present on most host
`devices or laptops. Id. at 8:29–32. 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 12:23–29.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 11, and 14 are independent. Each
`of claims 3 and 5 depends directly from claim 1. Claim 1 is illustrative:
`1. An interface device for communication between a host device,
`which comprises drivers for input/output devices customary in a
`host device and a multi-purpose
`interface, and a data
`transmit/receive device, the data transmit/receive device being
`arranged for providing analog data, comprising:
`a processor;
`a memory;
`a first connecting device for interfacing the host device with the
`interface device via the multi-purpose interface of the host
`device; and
`a second connecting device for interfacing the interface device
`with the data transmit/receive device, the second connecting
`device including a sampling circuit for sampling the analog data
`provided by the data transmit/receive device and an analog-to-
`digital converter for converting data sampled by the sampling
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`
`circuit into digital data,
`wherein the interface device is configured by the processor and
`the memory to include a first command interpreter and a second
`command interpreter,
`wherein the first command interpreter is configured in such a
`way that the command interpreter, when receiving an inquiry
`from the host device as to a type of a device attached to the
`multi-purpose interface of the host device, sends a signal,
`regardless of the type of the data transmit/receive device attached
`to the second connecting device of the interface device, to the
`host device which signals to the host device that it is an
`input/output device customary in a host device, whereupon the
`host device communicates with the interface device by means of
`the driver for the input/output device customary in a host device,
`and
`wherein the second command interpreter is configured to
`interpret a data request command from the host device to the type
`of input/output device signaled by the first command interpreter
`as a data transfer command for initiating a transfer of the digital
`data to the host device.
`Ex. 1001, 12:42–13:12.
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the prior art references listed below.
`Kawaguchi
`JP H4-15853
`Jan. 21, 1992
`(Ex. 1006)1
`Murata
`
`US 5,506,692
`Apr. 16, 1996
`(Ex. 1008)
`FRIEDHELM SCHMIDT, THE SCSI BUS AND IDE INTERFACE PROTOCOLS,
`APPLICATIONS AND PROGRAMMING, (J. Michael Schultz trans., Addison-
`Wesley Publishing Company 1995) (Ex. 1007, “Schmidt”).
`MICROSOFT COMPUTER DICTIONARY (3rd ed. 1997) (Ex. 1014).
`
`1 Citations to Kawaguchi are to the English translation (Ex. 1005).
`5
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`
`PAUL HOROWITZ, THE ART OF ELECTRONICS 246–47, 254–
`55, 421 (Cambridge University Press 1980) (Ex 1017, “Horowitz”).
`Principles of Data Acquisition and Conversion, Burr-Brown
`Application Bulletin (1994) (Ex. 1021, “Burr-Brown”).
`Principles of Data Acquisition and Conversion, Intersil application
`Note (1986) (Ex. 1022, “Intersil”).
`Sample-and-Hold Amplifiers, Analog Devices MT-090 Tutorial
`(2009) (Ex. 1023, “MT-090”).
`Alan V. Oppenheim and Ronald W. Schafer, Discrete-Time Signal
`Processing (Prentice-Hall 1989) (Ex. 1025, “Oppenheim”).2
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 5)3:
`
`Challenged Claims
`
`Basis
`
`1, 3, 5, 11, and 14
`
`§ 103(a)
`
`References
`Kawaguchi, Schmidt, and the
`“sampling circuit” references
`(Horowitz, Burr-Brown, Intersil,
`MT-090, and Oppenheim)4
`
`
`2 Petitioner relies upon Horowitz, Burr-Brown, Intersil, MT-090, and
`Oppenheim for their teachings of a sampling circuit and a digital signal
`processor. Pet. 26–29, 47. In this Decision, we refer these references
`collectively as the “sampling circuit” references, unless otherwise indicated.
`3 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103 in this Decision.
`
`4 For clarity, we include the “sampling circuit” references in this statement
`of the asserted ground because they are relied upon by Petitioner and
`discussed in its analysis (see, e.g., Pet. 26–29, 47). To the extent that Patent
`Owner may argue that Petitioner did not identify this ground in the Petition,
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`Patent 6,470,399 B1
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`
`Challenged Claims
`
`Basis
`
`References
`
`1, 3, 5, 11, and 14
`
`
`§ 103(a) Murata and Schmidt
`
`II. DISCUSSION
`
`A. Claim Construction
`
`Claims of an expired patent are given their ordinary and customary
`meaning in accordance with Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005) (en banc). See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012); see also Black & Decker, Inc. v. Positec USA, Inc., 646 F. App’x.
`1019, 1024 (non-precedential) (applying the Phillips standard to construe the
`claims of an expired patent in an inter partes review).
`Petitioner indicates that the U.S. Court of Appeals for the Federal
`Circuit has construed certain terms under the Phillips standard in connection
`with a related district court proceeding involving the ’399 patent. Pet. 9–11
`(citing In re Papst Licensing GmbH & Co. KG Litig. v. Fujifilm corp., 778
`F.3d 1255 (Fed. Cir. 2015); Ex. 1016). Furthermore, Patent Owner indicates
`that it believes the ’399 patent will expire on March 3, 2018 (20 years from
`the ’399 patent’s March 3, 1998 filing date, Ex. 1001 at [22])—most likely,
`before the entry of a final written decision in this proceeding. Paper 14, 2.
`Therefore, for purposes of this Decision, we apply those claim constructions
`
`we exercise our discretion to set forth this ground explicitly, thereby clearly
`placing Patent Owner on notice of the asserted combination of references,
`upon which review is instituted. See Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2140–2041 (2016).
`
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`set forth in the Federal Circuit decision in Papst (reproduced in the table
`below), and, on this record, we decline to make any modification to those
`constructions, as urged by Petitioner (Pet. 11–12). But see Power
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015) (“There is no
`dispute that the board is not generally bound by a prior judicial construction
`of a claim term.”).
`
`
`Claim term
`
`District Court
`Construction
`
`“interface
`device”
`
`“second
`connecting
`device”
`
`“data transmit/
`receive device”
`
`may not be “a permanent
`part of either the data
`transmit/receive device or
`the host device/computer.”
`Papst, 778 F.3d at 1262.
`
`CAFC Holding
`
`“is not limited to… a
`device that is physically
`separate and apart from,
`and not permanently
`attached to, a data device
`(or a host computer).” Id.
`
`“a physical plug or socket
`for permitting a user readily
`to attach and detach the
`interface device with a
`plurality of dissimilar data
`transmit/receive devices.”
`Id. at 1264.
`
`does not require “a
`physical plug, socket, or
`other structure that
`permits a user to readily
`attach and detach
`something else.” Id. at
`1265.
`
`“a device that is capable of
`either (a) transmitting data to
`or (b) transmitting data to
`and receiving data from the
`host device when connected
`to the host device by the
`interface device.” Id. at
`1265.
`
`8
`
`“need not be capable of
`communicating ‘when
`connected to the host
`device by the interface
`device.’” Id. at 1266.
`
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`Claim term
`
`District Court
`Construction
`
`CAFC Holding
`
`“virtual files”
`
`“input/output
`device
`customary in a
`host device”
`
`
`
`“files that appear to be but
`are not physically stored;
`rather they are constructed
`or derived from existing data
`when their contents are
`requested by an application
`program so that they appear
`to exist as files from the
`point of view of the host
`device.” Id. at 1267.
`“data input/output device
`that was normally present
`within the chassis of most
`commercially available
`computers at the time of the
`invention.” Id. at 1270.
`
`B. Principles of Law
`
`not limited to a file
`“whose content is stored
`off the interface device,
`though it includes such
`files.” Id. at 1268.
`
`not limited to a device
`“‘normally present within
`the chassis’ of a
`computer.” Id. (emphasis
`in original).
`
`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;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner’s
`declarant, Erez Zadok, Ph.D., testifies that a person with ordinary skill in the
`art at the time of the invention “would have had at least a four-year degree in
`electrical engineering, computer science, computer engineering, or related
`field of study, or equivalent experience, and at least two years’ experience in
`studying or developing computer interfaces or peripherals and storage
`related software.” Ex. 1003 ¶ 29. Dr. Zadok further testifies that such an
`artisan also would have been “familiar with operating systems (e.g.,
`MS-DOS, Windows, Unix), their associated file systems (e.g., a FAT, UFS,
`FFS), device drivers for computer components and peripherals (e.g., mass
`storage device drivers), and communication interfaces (e.g., SCSI, USB,
`PCMCIA).” Id. Patent Owner confirms that Petitioner’s statements
`regarding the level of ordinary skill in the art are partially consistent with
`
`
`5 Patent Owner does not present arguments regarding objective evidence of
`nonobviousness in the Preliminary Response.
`10
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`Patent Owner’s view, but, nonetheless, Patent Owner contends that an
`ordinarily skilled artisan would have at least three years of experience, or,
`alternatively, five or more years of experience without a bachelor’s degree.
`Prelim. Resp. 7.
`We do not observe a meaningful differences between the parties’
`assessments of a person of ordinary skill in the art. We further note that
`either assessment appears consistent with the level of ordinary skill in the art
`at the time of the invention as reflected in the prior art in the instant
`proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001). Moreover, Dr. Zadok appears to satisfy either assessment. Our
`analysis in this Decision is supported by either assessment, but, for purposes
`of this Decision, we adopt Petitioner’s assessment.
`
`D. Obviousness over Kawaguchi in view of Schmidt and
`the “Sampling Circuit” References
`
`Petitioner asserts that claims 1, 3, 5, 11, and 14 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Kawaguchi in combination with Schmidt
`and the “sampling circuit” references. Pet. 12–62. Patent Owner opposes.
`Prelim. Resp. 9–22.
`At this juncture, we determine that Petitioner has established that
`there is reasonable likelihood that Petitioner would prevail with respect to
`this ground of unpatentability. In our discussion below, we address the
`parties’ contentions in turn, focusing on certain disputed limitations.
`
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`Overview of Kawaguchi
`Kawaguchi discloses a SCSI device converter for connecting a
`plurality of peripheral devices to an engineering workstation. Ex. 1005, 2.
`Figure 1 of Kawaguchi is reproduced below.
`
`
`
`As shown in Figure 1 of Kawaguchi, SCSI device converter 3
`includes: SCSI interface 7 for connecting to engineering workstation 1;
`personal computer input/output bus interfaces 8, 9 for connecting to output
`device (plotter) 4 and input device (CD-ROM) 5, respectively; and
`bi-directional parallel bus interface 10 for connecting to interrupt control
`device (sequencer) 6. SCSI device converter 3 can be adapted to
`accommodate any other type of device interface, including analog-to-digital
`converter 19 to receive analog data from an analog sensor 18. Id. at 5. SCSI
`device converter 3 also implements data writing unit 11, data reading unit
`12, control data writing 13, interrupt data reading unit 14, code converting
`12
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`Patent 6,470,399 B1
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`unit 15, control unit 16, and interrupt control unit 17, by using a
`microcomputer, ROM, and RAM. Id.
`The engineering workstation has a SCSI interface “as standard
`equipment for connecting with the hard disk.” Id. at 5. According to
`Kawaguchi, “the SCSI device converter is able to input and output data to a
`SCSI interface of an [engineering workstation] using the same standards as
`SCSI interface for a hard disk.” Id. at 4. The SCSI driver of the engineering
`workstation is used as a driver for connecting a hard disk, performing
`operations in accordance with the SCSI standards. Id. at 7.
`Figure 2 of Kawaguchi is reproduced below.
`
`
`As shown in Figure 2 of Kawaguchi, the processing procedure
`includes an initialization process which includes: “Inquiry” that represents
`reporting of attribute information of a target and logical units (identification
`code of a device type); “Start/Stop Unit” that represents start/stop of the
`logical unit; “Test Unit Ready” that represents testing whether or not the
`
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`logical unit is available; and “Mode Sense” that represents reporting of
`various parameter values (data format and storage medium configuration).
`Id. at 7. The initialization process allows the writing and reading units of the
`SCSI device converter to be activated for the host engineering workstation.
`After the initialization process, the host engineering workstation “performs
`writing to or reading from the writing units and reading units.” Id.
`Specifically, “Read Extended” represents “reading data from a designated
`block, i.e., the data reading unit (12) or the interrupt data reading unit (14).”
`Id. And “Write Extended” presents “writing data to a designated block, i.e.,
`the data writing unit (11) or the control data writing unit (13).” Id.
`
`Overview of Schmidt
`
`Schmidt describes the SCSI bus and IDE (Integrated Drive
`Electronics) interface, which both are ANSI (American Nation Standards
`Institute) standards. Ex. 1007, Preface. According to Schmidt, these
`interfaces are two of the most important interfaces for computer peripherals
`in use at that time, and almost all computers at that time, from PCs to
`workstations to mainframes, were equipped with a SCSI interface. Id. The
`SCSI bus is designed for hard drives, as well as tape drives, CD-ROM,
`scanners, and printers. Id.
`
`Sampling circuit
`Each of the challenged claims requires an interface device for
`communication between a host device and a data transmit/receive device.
`See, e.g., Ex. 1001, 12:42–46. The challenged claims also require the
`interface device to include a processor, a memory, a first connecting device,
`
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`and a second connecting device. Id. at 12:48–60. The claims further require
`the second connecting device to include: (1) “a sampling circuit for
`sampling the analog data provided by the data transmit/receive device,” and
`(2) “an analog-to-digital converter for converting data sampled by the
`sampling circuit into digital data.” Id. at 12:55–60 (emphasis added). In this
`regard, the parties’ dispute centers on whether the prior art combination
`teaches or suggests a “sampling circuit.”
`Petitioner asserts that Kawaguchi, in combination with Schmidt and
`the general knowledge of a person of ordinary skill in the art regarding
`sampling circuits, as evidenced by the “sampling circuit” references, teaches
`or suggests the disputed limitations. Pet. 18–29. First, Petitioner argues that
`Kawaguchi describes a communication connection between an engineering
`workstation (a host device) and an analog sensor (a data transmit/receive
`device). Id. at 18–20. As support, Petitioner proffers annotated Figure 1 of
`Kawaguchi, reproduced below, mapping certain claim features to
`Kawaguchi’s system.
`
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`Annotated Figure 1 of Kawaguchi above illustrates Petitioner’s assertion
`that: SCSI device converter 3 discloses an interface device; engineering
`workstation EWS 1 discloses a host device; analog sensor 18 discloses a
`data transmit/receive device; and SCSI interface 2 discloses a multi-purpose
`interface. Id. at 18; Ex. 1005, 10. Petitioner also asserts that Kawaguchi’s
`implementation of various modules of SCSI device converter 3 discloses a
`microcomputer (a processor), ROM, and RAM (memory). Pet. 24;
`Ex. 1005, 5. Petitioner alleges that SCSI interface 7 in SCSI device
`converter 3 of Kawaguchi teaches a “first connecting device” (Pet. 24), and
`analog-to-digital converter 19 teaches or suggests a “second connecting
`device” (id. at 2627).
`
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`As to the “sampling circuit” limitation, Petitioner confirms that
`Kawaguchi does not disclose explicitly that the analog-to-digital converter
`includes a sampling circuit. Id. at 27. Nevertheless, Petitioner contends that
`a person with ordinary skill in the art would have understood that
`analog-to-digital converters typically include a sampling circuit, and that it
`would have been obvious to such an artisan to include a sampling circuit as
`part of Kawaguchi’s analog-to-digital converter for improving the efficiency
`of the conversion process. Id. at 27–29 (citing Ex. 1003 ¶¶ 84–85; Ex. 1025,
`114; Ex. 1021, 1, 2; Ex. 1022, 1, Fig. 1; Ex. 1023; Ex. 1017, 421, Fig. 9.47).
`Patent Owner counters that Petitioner does not provide a reference
`that teaches a sampling circuit, nor does Petitioner provide any reason for an
`ordinarily skilled artisan to add a sampling circuit to Kawaguchi’s analog-to-
`digital converter. Prelim. Resp. 20–21. According to Patent Owner,
`because Kawaguchi uses a single analog-to-digital converter to handle only
`one analog channel, one with ordinary skilled in the art would have had no
`reason to modify Kawaguchi to include a sampling circuit. Id. at 21–23.
`Based on the evidence in this record, we determine that Petitioner has
`demonstrated sufficiently for purposes of this Decision that the combination
`of prior art teachings at least suggests a second connecting device that
`includes an analog-to-digital converter and a sampling circuit, as recited in
`the challenged claims. We have considered Patent Owner’s arguments to
`the contrary and find them unpersuasive at this juncture.
`In particular, Patent Owner’s argument that Petitioner fails to cite a
`reference to teach a sampling circuit is unavailing. Notably, Petitioner cites
`to Dr. Zadok’s testimony (Ex. 1003 ¶¶ 84–85), as well as five prior art
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`references—namely, Horowitz (Ex. 1017), Burr-Brown (Ex. 1021), Intersil
`(Ex. 1022), MT-090 (Ex. 1023), and Oppenheim (Ex. 1025)—to show that
`using a sampling circuit with, or in, an analog-to-digital converter was
`well-known at the time of the invention. For instance, citing to Oppenheim
`(Ex. 1025, 114), Petitioner submits that a person with ordinary skill in the art
`would have understood that analog-to-digital converters typically included a
`sampling circuit and that using a sampling circuit is beneficial because the
`conversion of an analog voltage to a quantized binary code does not take
`place instantaneously—“the sampling circuit holds the voltage at a single
`value for a short time period to allow conversion to complete before
`converting the next value.” Pet. 27–28 (citing Ex. 1025, 114; Ex. 1003
`¶¶ 84–85). Dr. Zadok testifies that an analog-to-digital system typically
`“includes not only an analog-to-digital converter but also a sample and hold
`circuit, which are included to help improve the operations of the
`analog-to-digital converter,” by providing the “constant input voltage (or
`current) required by the A/D converter.” Ex. 1003 ¶ 84 (citing Ex. 1025,
`115). On this record, we determine that Petitioner has provided at least one
`prior art reference, e.g., Oppenheim, to teach a sampling circuit with an
`analog-to-digital converter. See, e.g., Ex. 1025, 114–115; Ex. 1023, 1–2.
`We also are not persuaded by Patent Owner’s argument that an
`ordinarily skilled artisan would have had no reason to modify Kawaguchi
`because Kawaguchi uses a single analog-to-digital converter to handle only
`one analog channel. Prelim. Resp. 21–22. At the outset, Patent Owner
`attempts to import a limitation from a preferred embodiment disclosed in the
`Specification, by requiring the prior art to teach multiple analog channels.
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`Patent Owner’s argument is not commensurate with the scope with the
`claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It is well
`established that limitations not appearing in the claims cannot be relied upon
`for patentability). Nothing in the claims require more than one analog
`channel. In fact, each challenged claim merely recites only a single “data
`transmit/receive device.”
`In addition, Patent Owner’s argument rests on the premise that the
`references must be combined for the same reason contemplated by the
`patentee. Prelim. Resp. 21–22. As our reviewing court has held repeatedly,
`the reason “to modify a prior art reference to arrive at the claimed invention
`need not be the same motivation that the patentee had.” Alcon Research Ltd.
`v. Apotex Inc., 687 F.3d, 1362, 1369 (Fed. Cir. 2012); In re Beattie, 974 F.2d
`1309, 1312 (Fed. Cir. 1992) (explaining that “the law does not require that
`the references be combined for the reasons contemplated by the inventor”).
`“The question is not whether the combination was obvious to the patentee
`but whether the combination was obvious to a person with ordinary skill in
`the art.” KSR, 550 U.S. at 420. Further, regarding whether Petitioner’s
`proffered rationale to use a sampling circuit in Kawaguchi is sufficient, as
`stated above and on this record, Petitioner has articulated a sufficient
`reason—namely, improving the efficiency of the conversion process. More
`significantly, Petitioner’s articulated reasoning is supported by Dr. Zadok’s
`testimony (Ex. 1003 ¶¶ 84–85) and the cited prior art references. See, e.g.,
`Ex. 1023, 1 (explaining that “[t]he sample-and-hold amplifier, or SHA is a
`critical part of most data acquisition systems[, capturing] an analog signal
`and holds it during some operation (most commonly analog-digital
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`conversion),” and “[w]hen the SHA is used with an ADC (either externally
`or internally), the SHA performance is critical to the overall dynamic
`performance of the combination”); Ex. 1025, 114 (observing that “the
`conversion is not instantaneous, and for this reason a high-performance A/D
`system typically includes a sample and hold” circuit). At this juncture, we
`are persuaded that Petitioner has shown sufficiently for purposes of this
`Decision that one with ordinary skill in the art would have added a sampling
`circuit to Kawaguchi’s analog-to-digital converter, in view of the cited
`“sampling circuit” references, for improving the efficiency of the conversion
`process.
`For the foregoing reasons, we determine that Petitioner has
`demonstrated sufficiently for the purposes of this Decision that Kawaguchi,
`in combination with the teachings of Schmidt and the “sampling circuit”
`references, teaches or suggests a second connecting device that includes a
`sampling circuit and an analog-to-digital converter, as recited in the
`challenged claims.
`
`An inquiry and a responding signal
`Each challenged claim requires that, upon receiving an inquiry from
`the host device as to a type of a device attached to the multi-purpose
`interface of the host device, the interface device (or a first command
`interpreter of the interface device) sends a signal to the host device,
`
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`indicating to the host device that it is an input/out device customary in a host
`device. See, e.g., Ex. 1001, 12:64–13:8.
`Petitioner takes the position that Kawaguchi, in combination with the
`teachings of Schmidt and the “sampling circuit” references, teaches or
`suggest this claim limitation. Pet. 12–16, 29–38. In particular, Petitioner
`alleges that Kawaguchi describes “a procedure as provided in the SCSI
`standards” for connecting the SCSI device converter (an interface device) to
`the SCSI interface of the engineering workstation (a host device), so that the
`SCSI device converter emulates a hard disk (an input/out device customary
`in a host device). Id. at 31–34 (citing Ex. 1005, 7, Fig. 2). Kawaguchi’s
`procedure includes sending an “inquiry” that “represents reporting of
`attribute information of a target and logical units (identification code of a
`device type).” Ex. 1005, 7, Fig. 2.
`Petitioner acknowledges that Kawaguchi does not disclose specific
`details of the “inquiry” step. Pet. 31. Nevertheless, Petitioner explains that
`Schmidt discloses that the SCSI standard provides a number of mandatory
`commands including the INQUIRY command. Id. at 32; Ex. 1007, 79, 138,
`Table 12.10. Schmidt further discloses that the initiator (host) sends a SCSI
`INQUIRY command to request information regarding parameters of the
`target (the interface device) and its attached peripheral devices, and that, in
`response to the INQUIRY command, the SCSI target (the interface device)
`provides a response including a five-bit device class or device type (e.g.,
`disk drives). Pet. 16, 33–38; Ex. 1007, 88, 132–33, 139–40, Table 12.1.
`Additionally, Petitioner asserts that, in light of Schmidt, a person with
`ordinary skill in the art would have recognized that Kawaguchi’s “inquiry”
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`step includes a SCSI INQUIRY command issued from the engineering
`workstation (host), and that it would have been obvious to such an artisan
`that, in response to an INQUIRY command, the SCSI device converter of
`Kawaguchi would respond as a hard disk. Pet. 31–36. Petitioner also argues
`that “[t]he combination of Kawaguchi and Schmidt is therefore nothing
`more than an application of a known technique (SCSI signaling as in
`Schmidt) to a known device (Kawaguchi’s SCSI device converter) to yield
`predictable results (the device converter identifies and acts as a SCSI hard
`disk).” Id. at 15.
`Patent Owner counters that Petitioner’s reason to combine the
`references is conclusory. Prelim. Resp. 19 (citing Pet. 15). However, Patent
`Owner’s argument narrowly focuses on one sentence in the Petition, and
`does not consider the Petition as a whole. For example, Patent Owner’s
`argument ignores the supporting evidence provided by Petitioner that shows
`the general knowledge of an ordinarily skilled artisan at the time of the
`invention, regarding SCSI interfaces and the SCSI standard. See Ariosa
`Diagnostics v. Verinata Health, Inc., 805 F.
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