Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: April 27, 2017
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`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 IPR2016-01842
`Patent 9,189,437 B2
`____________
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`

`IPR2016-01842
`Patent 9,189,437 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes review
`of claims 1, 4–6, 9–16, 18, 30, 32, 34, 43, and 45 (“the challenged claims”)
`of U.S. Patent No. 9,189,437 B2 (Ex. 1001, “the ’437 patent”). Paper 2
`(“Pet.”), 1. Papst Licensing GmbH & Co., KG (“Patent Owner”), filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”). Under 35 U.S.C. § 314,
`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 institute an inter partes review of each
`of the challenged claims.
`
`A. Related Matters
`Petitioner indicates that the ’437 patent is involved in Papst Licensing
`GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-01095 (E.D. Tex.); Papst
`Licensing GmbH & Co., KG v. LG Electronics, Inc., Case No. 6-15-cv-
`01099 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. ZTE Corp., Case
`No. 6-15-cv-01100 (E.D. Tex.); Papst Licensing GmbH & Co., KG v.
`Samsung Electronics Co. Ltd., Case No. 6:15-cv-01102 (E.D. Tex.); and
`Papst Licensing GmbH & Co., KG v. Lenovo (United States) Inc., Case No.
`6-15-cv-01111 (E.D. Tex.). Pet. 2; see Paper 8, 4–5. In addition to the
`instant Petition, various petitioners have filed at least seven other petitions
`seeking inter partes review of claims of the ’437 patent:
`
`
`2
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`IPR2016-01842
`Patent 9,189,437 B2
`
`
`Proceeding1
`IPR2016-01733
`
`Status
`Review Instituted
`
`Petitioner
`Samsung Electronics
`Co. Ltd.
`Apple Inc.
`Apple Inc.
`Apple Inc.
`Apple Inc.
`ZTE Corp.
`LG Electronics, Inc.
`
`IPR2016-01840
`IPR2016-01841
`IPR2016-01844
`IPR2017-00156
`IPR2017-00712
`IPR2017-01038
`
`Review Denied
`Review Denied
`Review Denied
`Review Denied
`Pending
`Review Instituted;
`Joined with IPR2016-
`01733
`See Pet. 2; Paper 8, 2–4. More than forty petitions have been filed by
`various petitioners challenging claims of five related patents: U.S. Patent
`Nos. 6,470,399 B1; 6,895,449 B2; 8,504,746 B2; 8,966,144 B2; and
`9,189,437 B2, owned by Patent Owner. See LG Electronics, Inc. v. Papst
`Licensing GmbH & Co., Case IPR2017-01038, Paper 5, 1–2.
`
`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. 1001, 1:18–22,
`1:54–57. According to the ’437 patent, using a specific driver to match very
`
`
`1 As an initial matter, Patent Owner argues that the grounds asserted here are
`redundant in view of other petitions asserting challenges to the claims of the
`’437 patent, but relying on different combinations of references. Prelim.
`Resp. 13–14. We note that institution was denied in each of the other four
`petitions: IPR2016-01840, IPR2016-01841, IPR2016-01844, and IPR2017-
`00157, identified by Patent Owner. We have considered the merits of each
`of these petitions. Thus, we are not persuaded to deny institution here by
`Patent Owner’s redundancy arguments. Id. at 9–10, 12–17.
`3
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`IPR2016-01842
`Patent 9,189,437 B2
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`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 offered 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 (i.e.,
`IEEE 1284). Id. at 2:20–29. 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.
`
`
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`IPR2016-01842
`Patent 9,189,437 B2
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`
`As shown in Figure 1, 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. Output line 16 connects interface 10 to a data
`transmit/receive device and implements an analog input, for example, with a
`sampling rate of 1.25 MHz and quantization of 12 bits, such as by means of
`the blocks 1505-1535, as depicted in Figure 2. Id. at 9:41–44. By means of
`programmable amplifier 1525, depicted in Figure 2 of the ’437 patent,
`multiple channels can be programmed independently of each other, for
`example, in voltage ranges up to a maximum of ±10 V. Id. at 9:45–48. 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 the 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 and 43 are independent. Claims 4–
`6, 9–16, 18, 30, 32, and 34 depend directly from claim 1; and claim 45
`depends directly from claim 43. Claims 1 and 43 are illustrative:
`1. An analog data generating and processing device (ADGPD),
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`IPR2016-01842
`Patent 9,189,437 B2
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`
`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 as 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;
`and
`
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`IPR2016-01842
`Patent 9,189,437 B2
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`
`wherein the processor is further adapted to be involved in an
`automatic file transfer process in which, when the i/o port is
`operatively interfaced with the multi-purpose interface of the
`computer, and after the at least one parameter has been 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.
`43. An analog data generating and processing method for
`acquiring analog data and for communicating with a host
`computer comprising:
`operatively interfacing an analog data device including a
`digital processor, a program memory and a data storage memory,
`to a multi-purpose interface of the host computer;
`acquiring analog data on each respective analog
`acquisition channel of a plurality of independent analog
`acquisition channels, converting the acquired analog data to
`digitized acquired analog data, and coupling the digitized
`acquired analog data into the digital processor for processing by
`the digital processor;
`automatically generating and transmitting to the host
`computer via the multipurpose interface an identification
`parameter which identifies the analog data generating and
`processing device to the host computer as a digital storage device
`but which is different than an analog data device, and
`independent of analog data source, and the analog data
`generating and processing device communicating with the host
`computer through the multi-purpose interface as if the analog
`
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`IPR2016-01842
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`
`data generating and processing device were the digital storage
`device including transferring the digitized acquired analog data
`acquired from at least one of the analog acquisition channels,
`wherein the identification parameter is consistent with the
`ADGPD being responsive to commands issued from a customary
`device driver, using the customary device driver present for the
`customary digital storage device in the host computer without
`requiring the user to load the device driver.
`Ex. 1001, 11:57–12:42 (claim 1 with disputed limitations emphasized),
`16:47–17:10.
`
`
`
`1024
`1030
`
`1041
`
`D. Applied References
`Petitioner relies upon the references and declarations listed below.
`Exhibit
`References and Declarations
`1003
`Declaration of Dr. Erez Zadok
`1007
`FRIEDHELM SCHMIDT, THE SCSI BUS AND IDE INTERFACE
`PROTOCOLS, APPLICATIONS AND PROGRAMMING (J. Michael
`Schultz trans., Addison-Wesley Publishing Co. 1995)
`(“Schmidt”)2
`Declaration of Mr. Scott Bennett
`Misc. Action No. 07-493 (RMC), MDL No. 1880, Order
`Regarding Claims Construction
`Marc F. Pucci, Configurable Data Manipulation in an
`Attached Multiprocessor, 4 COMPUTING SYSTEMS 217
`(Summer 1991) (“Pucci”)
`U.S. Patent No. 4,790,003 to Kepley et al., issued on
`December 6, 1988 (“Kepley”)
`U.S. Patent No. 5,081,454 to Campbell, Jr. et al., issued on
`January 14, 1992 (“Campbell”)
`U.S. Patent No. 5,353,374 to Wilson et al., issued on October
`4, 1994 (“Wilson”)
`
`1042
`
`1043
`
`1044
`
`
`2 See Ex. 1024 ¶¶ 23–28.
`
`8
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`IPR2016-01842
`Patent 9,189,437 B2
`
`
`Exhibit
`1045
`
`References and Declarations
`U.S. Patent No. 4,065,644 to Shinosky et al., issued on
`December 27, 1977 (“Shinosky”)
`Pet. v–vi, 4–5.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5–6):3
`
`Challenged
`Claim(s)
`
`1, 4–6, 9–12, 14,
`15, 30, and 34
`
`Basis
`
`References
`
`35 U.S.C. § 103(a)
`
`Pucci, Kepley, and Schmidt
`
`16
`
`35 U.S.C. § 103(a)
`
`13 and 18
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`Pucci, Kepley, Schmidt, and
`Shinosky
`
`Pucci, Kepley, Schmidt, and
`Campbell
`
`Pucci, Kepley, Schmidt, and
`Wilson
`
`32
`
`43
`
`45
`
`35 U.S.C. § 103(a)
`
`Pucci and Schmidt
`
`35 U.S.C. § 103(a)
`
`Pucci, Schmidt, and
`Campbell
`
`
`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.
`
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`IPR2016-01842
`Patent 9,189,437 B2
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`
`II. ANALYSIS
`A. Overview
`Petitioner argues that claims 1, 4–6, 9–16, 18, 30, 32, and 34 of the
`’437 patent are unpatentable under 35 U.S.C. § 103(a) as rendered obvious
`over Pucci, Kepley, and Schmidt, alone or in combination with another
`reference, and that claims 43 and 45 of the ’437 patent are unpatentable
`under 35 U.S.C. § 103(a) as rendered obvious over Pucci and Schmidt, alone
`or in combination with another reference. Pet. 10–67. Petitioner argues,
`however, that challenged independent claim 1 is unpatentable based solely
`on the combined teachings of Pucci, Kepley, and Schmidt and challenged
`independent claim 43 is unpatentable based solely on the combined
`teachings of Pucci and Schmidt. Id. at 12–42 (claim 1), 60–66 (claim 43).
`Petitioner does not rely on the other applied references to teach any of the
`limitations of these independent claims. Id. at 10–12, 42–60, 66–67.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and (4) objective evidence of non-obviousness,
`i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). Nevertheless, the Court cautions us against “the temptation to
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`Patent 9,189,437 B2
`
`read into the prior art the teachings of the invention in issue.” Graham, 383
`U.S. at 36. On this record and for the reasons set forth below, we are
`persuaded that Petitioner demonstrates a reasonable likelihood of prevailing
`in its challenges to claims of the ’437 patent.
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner’s
`declarant, Erez Zadok, Ph.D., testifies that a person of ordinary skill in the
`art at the time of the invention “would have had at least a four-year
`undergraduate 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 ¶ 28 (emphasis added).
`Dr. Zadok further testifies that such a person 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 Patent Owner’s view,
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`IPR2016-01842
`Patent 9,189,437 B2
`
`but, nonetheless, Patent Owner contends that “the field of the invention
`relates to ‘the transfer of data and in particular to interface devices for
`communication between a computer or host device and a data
`transmit/receive device from which data is to be acquired or with which two-
`way communication is to take place’” (Prelim. Resp. 6) and that a person
`ordinarily skilled in the art would have at least three years of experience, or,
`alternatively, five or more years of experience without a bachelor’s degree
`(id. at 6–7). Patent Owner currently does not provide declarant testimony in
`support of its assessment of the level of ordinary skill in the art.
`On this record, we do not discern a meaningful difference 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).4 Moreover, Dr. Zadok appears to satisfy either assessment. See
`
`4 See, e.g., Ex. 1041, 217 (Abstract) (“The ION Data Engine is a
`multiprocessor tasking system that provides data manipulation services for
`collections of workstations or other conventional computers. It is a back-
`end system, connecting to a workstation via the Small Computer Systems
`Interface (SCSI) disk interface.”); Ex. 1042, 3:29–36 (“The voice mail
`message exchange between the voice mail service systems is accomplished
`by a computer-to-computer data file transfer via a data call connection. A
`computer data file transfer operation uses well-known data integrity and data
`correction arrangements to preserve the quality of the transmitted encoded
`and compressed voice mail message.”); Ex. 1007, v (“The SCSI bus, on the
`other hand, is designed not only for hard drives but also for tape drives,
`CDROM, scanners, and printers. Almost all modern computers, from PCs
`to workstations to mainframes, are equipped with a SCSI interface.”).
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`Patent 9,189,437 B2
`
`Ex. 1004. Our analysis in this Decision is supported by either assessment,
`but, for purposes of this Decision and to the extent necessary, we adopt
`Petitioner’s assessment.
`
`C. 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.5 See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest
`reasonable interpretation standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`
`
`5 We note that the ’437 patent is subject to a Terminal Disclaimer, filed
`October 30, 2007, disclaiming the terminal part of the statutory term of the
`’437 patent which would extend beyond the expiration date of U.S. Patent
`No. 6,470,399 B1. Ex. 3001. In a related proceeding, Patent Owner
`indicated that it believes U.S. Patent No. 6,470,399 B1 will expire on March
`3, 2018—most likely, before the entry of a final written decision in this
`proceeding. Apple Inc. v. Papst Licensing GmbH & Co., KG, Case
`IPR2016-01839, slip op. at 7 (PTAB March 27, 2017) (Paper 15) (citing
`IPR2016-01839, Paper 14, 2). Therefore, to the extent that either party
`believes (1) that the ’437 patent shall expire prior to the statutory deadline to
`issue a final written decision in this proceeding, (2) that the construction of
`any claim term is necessary to resolve any controversy in this proceeding,
`and (3) that the construction of any claim term may be different under the
`broadest reasonable interpretation standard and under the standard applied
`by U.S. district courts that the Board applies to expired patents (see, e.g., Ex.
`1030); the parties shall present arguments and evidence for the appropriate
`construction of such claim terms under both standards. Pursuant to this
`instruction, claim construction arguments alleging a difference in
`construction due to the applied standard, but not presented, shall be deemed
`waived.
`
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`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
`term must be set forth with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes the construction of two claim terms:
`“multi-purpose interface of the host computer” and “customary device
`driver.” Pet. 8–11. In particular, Petitioner argues that “the broadest
`reasonable interpretation and Philips constructions are the same” (id. at 9)
`and that we should adopt the constructions of these terms approved by the
`U.S. Court of Appeals for the Federal Circuit (see, e.g., In re Papst
`Licensing Digital Camera Patent Litigation, 778 F.3d 1255, 1270 (Fed. Cir.
`2015)). See Ex. 1030.
`1. “multi-purpose interface” (Independent Claims 1 and 43)
`Petitioner argues that “multi-purpose interface of the host computer”
`means “a communication interface designed for use with multiple devices
`that can have different functions from each other.” Pet. 9. Patent Owner
`does not oppose Petitioner’s construction of “multi-purpose interface of the
`host computer.” Prelim. Resp. 8.
`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.” Ex. 1001, 3:51–56 (emphases
`added). The Specification also indicates that SCSI interfaces are present on
`
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`most host devices or laptops. Id. at 8:45–46. Petitioner’s declarant, Erez
`Zadok, Ph.D., testifies that:
`It was well known at the time prior to the earliest priority
`date of the ’437 patent that when a host computer detects that a
`device has been connected to it, the host inquires as to what type
`of device it is and the connected device responds. The host then
`determines whether it already possesses drivers for the identified
`type of device, and if not, the host must obtain device-specific
`drivers before it can fully operate with the new device. This
`concept is perhaps best illustrated by two well-known hard disk
`interface technologies that existed prior to the earliest priority
`date of the ’437 patent, in particular, Advanced Technology
`Attachment (“ATA”) and Small Computer Systems Interface
`(“SCSI”) bus.
`Ex. 1003 ¶ 43 (emphasis added).
`On this record and for purposes of the Decision, we find it sufficient
`to construe a “multi-purpose interface” to encompass a “SCSI interface.”
`See Samsung Electronics Co., Ltd. v. Papst Licensing GmbH & Co., KG,
`Case IPR2016-01733, slip op. at 8–9 (PTAB February 8, 2017) (Paper 7).
`2. “customary device driver” (Independent Claims 1 and 43)
`Petitioner argues that “customary device driver” means “a driver for a
`device normally present in most commercially available host devices at the
`time of the invention.” Pet. 10. Patent Owner contends that the term
`“customary device driver” means “the driver for the data device normally
`part of commercially available computer systems.” Prelim. Resp. 8.
`Although both Petitioner and Patent Owner agree that the term “customary
`device driver” describes drivers normally present in or part of “most
`commercially available” computer systems or host devices, Patent Owner
`contends (1) that the driver is for a “data device,” rather than merely a
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`“device,” and (2) that the addition of the phrase “at the time of the
`invention” in Petitioner’s proposed construction of the term “customary
`device driver” is inappropriate. Id.
`The Specification of the ’437 patent indicates that “both a high data
`transfer rate and host device-independent use can be achieved if a driver for
`an input/output device customary in a host device, normally present in most
`commercially available host devices, is utilized.” Ex. 1001, 3:33–37
`(emphases added). The Specification further explains that “[d]rivers for
`input/output devices customary in a host device which are found in
`practically all host devices are, for example, drivers for hard disks, for
`graphics devices or for printer devices.” Id. at 3:37–40 (emphases added).
`The Specification also indicates that SCSI interfaces are present on most
`host devices or laptops, and SCSI drivers are “normally included by the
`manufacturer of the multi-purpose interface.” Id. at 10:23–33; see id. at
`8:45–46. Thus, on this record and for purposes of this Decision, we are
`persuaded that the drivers are more broadly directed to “devices,” rather than
`“data devices,” and that the drivers are those present in commercially
`available host devices,” rather than only “computer systems.” See Prelim
`Resp. 6 (“the field of the invention relates to ‘the transfer of data and in
`particular to interface devices for communication between a computer or
`host device and a data transmit/receive device” (emphasis added)).
`With regard to Patent Owner’s objection to the inclusion of “at the
`time of the invention” in Petitioner’s construction, we note that “the ordinary
`and customary meaning of a claim term is the meaning that the term would
`have to a person of ordinary skill in the art in question at the time of the
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`invention, i.e., as of the effective filing date of the patent application.”
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)
`(emphasis added); see also PC Connector Solutions LLC v. SmartDisk
`Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005) (meaning of claim “must be
`interpreted as of [the] effective filing date” of the patent application).
`Moreover, in this proceeding, we will determine the patentability of the
`challenged claims based on prior art that was available before or at the time
`of the invention. Therefore, it is not necessary to recite expressly “at the
`time of the invention” in our claim construction. See Canon Inc. v. Papst
`Licensing GmbH & Co., KG, Case IPR2016-01199, slip op. at 11 (PTAB
`December 15, 2016) (Paper 8).
`On this record and for purposes of the Decision, we find it sufficient
`to construe a “customary device driver” to encompass “a driver for a device
`normally present in most commercially available host devices (e.g., a hard
`disk driver or a SCSI driver).”
`3. Other Claim Terms
`Only terms which are in controversy in this proceeding need to be
`construed, and then only to the extent necessary to resolve the controversy.
`See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`2011) (explaining that “claim terms need only be construed ‘to the extent
`necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this
`Decision, no other claim terms require express construction.
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`D. Obviousness of Claims 1, 4–6, 9–12, 14, 15, 30, and 34 Over
`Pucci, Kepley, and Schmidt
`
`1. Claim 1
`We begin our analysis of Petitioner’s asserted ground for
`unpatentability with an overview of the references applied against
`independent claim 1, from which each of claims 4–6, 9–12, 14, 15, 30, and
`34 depends.
`a. Pucci (Ex. 1041)
`Pucci describes that:
`The ION Data Engine is a multiprocessor tasking system that
`provides data manipulation services
`for collections of
`workstations or other conventional computers. It is a back-end
`system, connecting to a workstation via the Small Computer
`Systems Interface (SCSI) disk interface. ION appears to the
`workstation as a large, high speed disk device, but with user
`extensible characteristics. By mapping an application’s
`functionality into simple disk read and write accesses, ION
`achieves a high degree of application portability, while providing
`enhanced performance via dedicated processors closely
`positioned to I/O devices and a streamlined tasking system for
`device control.
`Ex. 1041, 217. Pucci describes the interaction between ION and the
`workstation as the workstation transmitting “a small list of data
`manipulation directives” to the ION node. Id. The ION node returns results
`only, although, in the extreme case, the ION system generates all output data
`requiring no processing in the workstation. Id. Pucci further describes
`“ION [] being used as an experimental platform for voice mail services in a
`user[-]programmable telephone switch prototype.” Id. at 218.
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`In particular, Pucci partitions an application into “hardware dependent
`and independent components.” Id. at 219. The “hardware independent
`components” reside in the workstation to “easily port[]” the application to
`new architectures. Id. The “hardware dependent components” are in a
`separate backplane-based environment. Id. These components are
`connected using the SCSI disk interface. Id. Accordingly, each workstation
`accesses ION using its local disk system, and sees ION as “though it were
`physically a local disk drive.” Id. at 219-20. The basic structure of an ION
`system is shown in Figure 1, reproduced below.
`
`
`Figure 1 depicts an ION node interconnected with workstations, private disk,
`ION disks, and other hardware, including analog to digital (A-to-D)
`converters. In connection with the voice messaging service for the prototype
`telephone switch, the “bulk of the application resides in a conventional
`workstation.” Id. at 221. The peripheral devices, such as the A-to-D
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`converters “are located within ION.” Id. The application at the workstation
`interfaces with the A-to-D converters by implementing “actions,” which are
`application specific functions. Id. To obtain converted data, the controlling
`program within the workstation reads from a designated disk block address
`corresponding to one of the 5 analog channels available. Id. Pucci describes
`the interaction as a “standard disk read and write” access, such as by using
`the “lseek()” command followed by the “read()” command in the Unix
`domain. Id.
`b. Kepley (Ex. 1042)
`Kepley describes
`business communication systems and, in particular, to a message
`service system network that interconnects a plurality of message
`service systems and provides a voice mail message transfer
`capability between voice mail message service systems. The
`voice mail message transfer is performed as a computer-to-
`computer data file transfer operation over high speed data lines.
`The data file consists of the digitally encoded and compressed
`voice mail message to which is appended the message sender's
`name and telephone number as well as the message recipient's
`telephone number.
`Ex. 1042, Abstract (emphasis added); see id., Claim 1 (“transmitting, as a
`computer-to-computer file transfer operation, said stored encoded message
`from said first message service system to said other message service
`system”). Kepley further describes that:
`Since the voice mail message is