Trials@uspto.gov
`571-272-7822
`
`
`Paper 35
`Entered: April 13, 2018
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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 IPR2016-01863
`Patent 8,504,746 B2
`____________
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`

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`IPR2016-01863
`Patent 8,504,746 B2
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`I.
`
`INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 134,
`
`Apple Inc. (“Petitioner”) challenges the patentability of certain claims of
`
`U.S. Patent No. 8,504,746 B2 (Ex. 1001, “the ’746 patent”), owned by Papst
`
`Licensing GMBH & Co. KG (“Patent Owner”). We have jurisdiction under
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`35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
`
`Petitioner has not shown by a preponderance of the evidence that claims 1,
`
`4, 68, 10, 11, 14, 20, 21, 23, 30, 34, and 35 of the ’746 patent are
`
`unpatentable.
`
`A. PROCEDURAL HISTORY
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`
`
`Petitioner filed a Petition to institute inter partes review of claims 1,
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`4, 68, 10, 11, 14, 20, 21, 23, 30, 34, and 35 of the ’746 patent (“challenged
`
`claims”). Paper 2 (“Pet.”). Patent Owner filed a Preliminary Response.
`
`Paper 9 (“Prelim. Resp.”). On April 17, 2017, we instituted inter partes
`
`review as to all the challenged claims. Paper 10 (“Institution Decision” or
`
`“Dec.”).
`
`
`
`After institution, Patent Owner filed a Patent Owner Response.
`
`Paper 16 (“PO Resp.”). In addition, Petitioner filed a Reply. Paper 18
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`(“Reply”). We heard oral arguments on January 16, 2018. A transcript of
`
`the hearing has been entered into the record. Paper 30 (“Tr.”).
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`B. RELATED MATTERS
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`The parties indicate that the ’746 patent is involved in Papst Licensing
`
`GmbH & Co. KG v. Apple, Inc., Case No. 6-15-cv-01095 (E.D. Tex.) and
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`other proceedings. Pet. 2–3; Paper 8, 2–5. The ’746 patent has also been the
`
`subject of three concluded inter partes reviews, Cases IPR2016-01200,
`
`IPR2016-01211, and IPR2016-01213, all of which have issued to Final
`
`Written Decision.
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`C. REAL PARTIES-IN-INTEREST
`
`
`
`Petitioner asserts that Apple Inc. is the only real party-in-interest.
`
`Pet. 2.
`
`D. THE ’746 PATENT (EX. 1001)
`
`
`
`The ’746 patent is titled, “Analog Data Generating and Processing
`
`Device for use With a Personal Computer.” Ex. 1001, (54). It relates
`
`generally to the transfer of data, and, in particular, to interface devices for
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`communication between a computer or host device and a data
`
`transmit/receive device from which data is to be acquired or with which two-
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`way communications is to take place. Id. at 1:20–24. Figure 1, reproduced
`
`below, illustrates a general block diagram of interface device 10. Id. at
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`4:5960.
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`According to Figure 1, first connecting device 12 is attached to a host
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`device (not shown), to digital signal processor (DSP) 13 and memory means
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`14. Id. at 4:6065. DSP 13 and memory means 14 are also connected to
`
`second connecting device 15. Id. at 4:6467. The interface device
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`“simulates a hard disk with a root directory whose entries are ‘virtual’ files
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`which can be created for the most varied functions.” Id. at 5:1114.
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`“Regardless of which data transmit/receive device at the output line 16 is
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`attached to the second connecting device, the digital signal processor 13
`
`informs the host device that it is communicating with a hard disk drive.” Id.
`
`at 5:3134. In one embodiment, the interface device is automatically
`
`detected when the host system is “booted,” resulting in the user “no longer
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`[being] responsible for installing the interface device 10 on the host device
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`by means of specific drivers which must also be loaded.” Id. at 7:1320.
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`E. REPRESENTATIVE CLAIM
`
`There are two independent claims in the set of challenged claims (1
`
`and 34). Claim 1 is reproduced below, and is representative of the subject
`
`matter claimed.
`
`1. An analog data acquisition device operatively connectable to
`a computer through a multipurpose interface of the computer,
`the computer having an operating system programmed so that,
`when the computer receives a signal from the device through
`said multipurpose interface of the computer indicative of a class
`of devices, the computer automatically activates a device driver
`corresponding to the class of devices for allowing the transfer
`of data between the device and the operating system of the
`computer, the analog data acquisition device comprising:
`
`a) a program memory;
`
`b) an analog signal acquisition channel for receiving a
`signal from an analog source;
`
`c) a processor operatively interfaced with the
`multipurpose interface of the computer, the program memory,
`and a data storage memory when the analog data acquisition
`device is operational;
`
`d) wherein the processor is configured and programmed
`to implement a data generation process by which analog data is
`acquired from the analog signal acquisition channel, the analog
`data is processed and digitized, and the processed and digitized
`analog data is stored in a file system of the data storage
`memory as at least one file of digitized analog data;
`
`e) wherein when the analog acquisition device is
`operatively interfaced with the multipurpose interface of the
`computer, the processor executes at least one instruction set
`stored in the program memory and thereby automatically causes
`at least one parameter indicative of the class of devices to be
`sent to the computer through the multipurpose interface of the
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`computer, independent of the analog source, wherein the analog
`data acquisition device is not within the class of devices; and
`
`f) wherein the processor is further configured and
`programmed to execute at least one other instruction set stored
`in the program memory to thereby allow the at least one file of
`digitized analog data acquired from the analog signal
`acquisition channel to be transferred to the computer using the
`device driver corresponding to said class of devices so that the
`analog data acquisition device appears to the computer as if it
`were a device of the class of devices;
`
`whereby there is no requirement for any user-loaded file
`transfer enabling software to be loaded on or installed in the
`computer in addition to the operating system.
`
`
`F. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`We instituted inter partes review of all challenged claims as follows
`
`(Dec. 1920):
`
`Challenged Claims
`
`Basis
`
`References
`
`1, 4, 68, 10, 11, 20, 21,
`30, 34, 35
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`14
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`
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`§ 103(a) Pucci,1 Kepley,2 and Schmidt3
`
`§ 103(a)
`
`Pucci, Shinosky,4 Kepley, and
`Schmidt
`
` 1
`
` Marc F. Pucci, Configurable Data Manipulation in an Attached
`Multiprocessor, Vol. 4 COMPUTING SYSTEMS, p. 217 (1991) (“Pucci”) (Ex.
`1041).
`
` US Patent No. 4,790,003 (“Kepley”) (Ex. 1042).
`
` 2
`
` 3
`
` Friedhelm Schmidt, THE SCSI BUS AND IDE INTERFACE (Addison-Wesley
`1995) (“Schmidt”) (Ex. 1007).
`
`4 US Patent No. 4,065,644 (“Shinosky”) (Ex. 1045).
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`Challenged Claims
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`Basis
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`References
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`23
`
`§ 103(a)
`
`Pucci, Kepley, Schmidt, and
`Wilson5
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`In addition to the supporting argument for these grounds in the
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`Petition, Petitioner also presents expert testimony. Ex. 1003, First
`
`Declaration of Erez Zadok, Ph.D. (“Zadok Declaration I”); Ex. 1054, Second
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`Declaration of Erez Zadok, Ph.D. (“Zadok Declaration II”). Patent Owner
`
`supports its arguments of patentability with expert testimony. Ex. 2006,
`
`Declaration of Thomas A. Gafford (“Gafford Declaration”).
`
`II. ANALYSIS
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`A. CLAIM INTERPRETATION
`
`The Board interprets claims in an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[they] appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have
`
`their ordinary and customary meaning. See In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is
`
`the meaning that the term would have to a person of ordinary skill in the art
`
`in question.’”) (Citation omitted).
`
`In our Decision on Institution we noted Patent Owner’s disagreement
`
`with Petitioner’s contentions regarding the phrase “whereby there is no
`
`requirement for any user-loaded file transfer enabling software to be loaded
`
`or installed” (the “whereby” clause). Dec. 78. We invited the parties to
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`
`
` US Patent No. 5,353,374 (“Wilson”) (Ex. 1044).
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`address the construction of the phrase during the trial phase of this
`
`proceeding. Id. Patent Owner proffers the following two contentions:
`
`(1) The ’746 patent expires on March 3, 2018, and, thus, the Board
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`should construe the terms according to Phillips v. AWH
`
`Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc); and
`
`(2) The district court issued a claim construction for the “whereby”
`
`clause, in addition to other terms of the ’746 patent. PO Resp. 89
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`(pointing to Ex. 2007).
`
`Petitioner does not dispute the first contention. Reply 2. Petitioner,
`
`however, explains that because the prosecution history does not contain any
`
`disclaimers, there is no meaningful difference between the claim
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`construction under Phillips and the broadest reasonable interpretation
`
`standard. Id. As to the second contention, Petitioner does not address the
`
`construction of the “whereby” clause, but proffers that for the recited “data
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`transmit/receive device” the Board should rely on the district court’s
`
`construction under Phillips. Id. at 3.
`
`Turning to the district court’s construction of the “whereby” clause,
`
`we note that the dispute before that court was whether the claim language
`
`precludes “‘pre-loaded software,’ such as software loaded at a factory prior
`
`to a computer device being sold.” Ex. 2007, 42. The court noted that the
`
`“whereby” clause precludes requiring “user-loaded” software, further noting
`
`the nature of the dispute: whether the user is precluded from loading any
`
`software. Id. The court went on to construe “user-loaded” to mean “loaded
`
`by a user other than as necessary to load or maintain an operating system.”
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`Id. (noting that defendants to the litigation, of which Petitioner is a part,
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`“endorsed” construing the court’s construction of the “user-loaded” phrase)
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`(emphasis omitted).
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`Neither party briefed the claim construction issue for us to ascertain
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`with sufficient confidence that it is proper for us to adopt the district court’s
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`claim construction. At best, we have the parties’ tacit agreement that the
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`district court construction should be adopted here. However, we do not need
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`to construe any term expressly in order to determine whether the claims are
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`unpatentable under the asserted grounds. Accordingly, and notwithstanding
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`the parties’ invitation for us to adopt the district court construction, we
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`conclude that no terms of the ’746 patent need to be construed expressly.
`
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
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`1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`
`that are in controversy, and only to the extent necessary to resolve the
`
`controversy.”)
`
`B. SUMMARY OF APPLICABLE LEGAL PRINCIPLES
`
`A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if
`
`the differences between the claimed subject matter and the prior art are such
`
`that the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`In inter partes review, it is petitioner’s “burden to demonstrate both
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`that a skilled artisan would have been motivated to combine the teachings of
`
`the prior art references to achieve the claimed invention, and that the skilled
`
`artisan would have had a reasonable expectation of success in doing so.” In
`
`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
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`(quotations omitted). Accordingly, the petitioner must “articulate[]
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” KSR, 550 U.S. at 418 (citation omitted). The “factual
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`inquiry” into the reasons for “combin[ing] references must be thorough and
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`searching, and the need for specificity pervades.” In re Nuvasive, Inc., 842
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`F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). An obviousness
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`determination cannot be reached where the record lacks “explanation as to
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`how or why the references would be combined to produce the claimed
`
`invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
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`2016) (emphasis added).
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`C. LEVEL OF ORDINARY SKILL IN THE ART
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`Consistent with the Graham factors, we first determine the level or
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`ordinary skill in the art applicable to this proceeding. In our Institution
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`Decision we stated,
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`Petitioner’s declarant, Erez Zadok, Ph.D., testifies that a person
`having 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 ¶¶ 28–29; Pet. 8. 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
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`(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, but nonetheless contends
`that an ordinarily skilled artisan would have one more year of
`experience, or, alternatively, five or more years of experience
`without a bachelor’s degree. Prelim. Resp. 5–7. We do not
`observe 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). Moreover,
`Dr. Zadok appears to satisfy either assessment. See Ex. 1004.
`Our analysis in this Decision is supported by either assessment,
`but, for purposes of this Decision, we adopt Petitioner’s
`assessment.
`
`
`Dec. 910. Patent Owner in its Response reiterates the same level of
`
`ordinary skill that it proffered in the Preliminary Response. PO Resp. 67.
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`Patent Owner agrees that “there are no[] meaningful differences between the
`
`parties’ definitions of a POSITA for purposes of this proceeding.” Id. at 7.
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`More importantly, no argument presented hinges on whether either party’s
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`proposed level of ordinary skill in the art is adopted.
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`We find the Zadok testimony in this regard persuasive as it presents
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`more than just the educational level of a person of ordinary skill in the art.
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`Petitioner’s proposal is more helpful as it identifies the familiar objects of
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`the technology used by a person of ordinary skill at the time of the
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`invention: operating systems (e.g., MS-DOS, Windows, Unix) and their
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`associated file systems (e.g., a FAT file system), device drivers for computer
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`components and peripherals (e.g., mass storage device drivers), and
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`communication interfaces (e.g., SCSI and PCMCIA interfaces). Ex. 1003
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`¶ 28. We, therefore, determine that Petitioner’s level of ordinary skill in the
`
`art is appropriate.
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`D. FACTUAL ANALYSIS OF ASSERTED GROUNDS
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`The three asserted grounds rely primarily on Pucci as disclosing all
`
`the claim limitations of the challenged claims, except for transducers, a file
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`system, a “device recognition” process, and a fast Fourier transform. Pet.
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`1263. Petitioner relies on the other asserted references as disclosing the
`
`missing limitations. For example, Shinosky is alleged to disclose
`
`transducers designed to transmit data. Id. at 5761. Schmidt is alleged to
`
`disclose the details of a SCSI adapter and its functionality, in particular with
`
`regard to the INQUIRY command. Id. at 18–22. Further, Kepley is relied
`
`upon for its teachings of a voice mail system that stores a “digitally encoded
`
`and compressed voice mail message” as a file. Id. at 13 (citing Ex. 1042,
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`Abstract). And Wilson is relied upon for its disclosure of a transform coder,
`
`such as a Fourier transform. Id. at 6163.
`
`Given our discussion that follows, a short overview of Pucci and
`
`Kepley are in order.
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`1. Overview of Pucci (Ex. 1041)
`
`Pucci is entitled “Configurable Data Manipulation in an Attached
`
`Multiprocessor.” Ex. 1041, 217. According to Pucci,
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`[t]he 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
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`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.
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`Id. Pucci describes the interaction between ION and the workstation as the
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`workstation transmitting “a small list of data manipulation directives” to the
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`ION node. Id. The ION node returns results only, although, in the extreme
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`case, the ION system generates all output data requiring no processing in the
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`workstation. Id. Pucci further describes “ION . . . being used as an
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`experimental platform for voice mail services in a user[ ] programmable
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`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
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`components” reside in the workstation to “easily port[]” the application to
`
`new architectures. Id. The “hardware dependent components” are in a
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`separate backplane-based environment. Id. These components are
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`connected using the Small Computer Systems Interface (SCSI) disk
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`interface. Id. Accordingly, each workstation accesses ION using its local
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`disk system, and sees ION as “though it were physically a local disk drive.”
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`Id. at 219–220. The basic structure of an ION system is shown in Figure 1,
`
`reproduced below.
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`Figure 1 depicts an ION node interconnected with workstations,
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`private disk, ION disks, and other hardware, including analog-to-digital (A-
`
`to-D) converters. In connection with the voice messaging service for the
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`prototype telephone switch, the “bulk of the application resides in a
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`conventional workstation.” Id. at 221. The peripheral devices, such as the
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`A-to-D converters “are located within ION.” Id. The application at the
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`workstation interfaces to the A-to-D converters by implementing “actions,”
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`which are application-specific functions. Id. To obtain converted data, the
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`controlling program within the workstation reads from a designated disk
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`block address corresponding to one of the five analog channels available.
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`Id. Pucci describes the interaction as a “standard disk read and write”
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`access, such as by using the “lseek()” command followed by the “read()”
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`command in the Unix domain. Id. (emphasis omitted).
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`2. Kepley (Exhibit 1042)
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`Kepley is entitled “Message Service System Network,” and is directed
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`to a message service system network that provides a voice mail message
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`transfer capability between voice mail message service systems. Ex. 1042,
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`[54], [57]. According to Kepley, existing voice mail systems had multiple
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`telephone switching systems, each associated with a voice mail system, and
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`it was difficult to network the voice mail service system together without
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`incurring a significant transmission cost and degradation of the quality of the
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`voice transmissions. Id. at 1:5460. In practice, when a voice mail message
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`received at one voice mail system is transmitted to a distant voice mail
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`system; the message, which is stored in digital form, is reconverted to analog
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`form for transmission over standard voice-grade trunks. Id. at 1:6568. The
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`transmitted voice mail message then is reconverted to digitally encoded form
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`and stored in the distant voice mail system. Id. at 2:12.
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`Kepley solves these problems by improving the message transfer
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`capability between the voice mail message service systems, such as by
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`performing the message transfer as a “computer-to-computer data file
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`transfer over high speed data lines which provides error correction
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`capability.” Id. at 2:5163. Kepley describes the voice mail message
`
`systems in connection with Figure 1, reproduced below.
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`Figure 1 depicts two telephone switching systems 100, 140, each with
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`a voice mail service system 110, 150, (annotated with a red outline)
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`respectively. Kepley describes that, when telephone station set T100 creates
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`a voice mail message for delivery to a message recipient at telephone station
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`set T160, the feature processor of voice mail service system 110 places the
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`message in a queue. Ex. 1042, 5:5056. At the scheduled delivery time,
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`feature processor 112 retrieves the stored voice mail message and originates
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`a data call to the destination voice mail service system 150 to transfer the
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`voice message. Id. at 5:5665. “The transfer of a voice mail message is
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`accomplished as a computer-to-computer data file transfer.” Id. at 5:6667.
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`This data call is originated from voice mail service system 110 to telephone
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`switching system 100, over communication line 104, and then further
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`through central exchange office 130, telephone switching system 140, and
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`over communication line 154 to destination voice mail service system 150.
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`Id. at 6:15.
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`Kepley further describes that the voice mail messages are stored as
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`digitally encoded voice signals, which feature processor 112 formats for
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`transmission over the data call. Ex. 1042, 5:4142, 6:810. This formatting
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`includes reading the telephone number of the message sender from the voice
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`mail message, appending the message sender to the retrieved voice mail
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`message and adding data file transfer header information to form the data
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`file that is transmitted over the data call to destination voice mail service
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`system 150. Id. at 6:1020.
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`3. Differences Between the Prior Art and Claimed Subject Matter:
`Claim 1 and Claim 34
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`Petitioner proffers arguments and evidence supporting the contention
`
`that Pucci discloses:
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`a) A program memory (Pucci’s resident memory within ION)
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`(Pet. 22);
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`b) An analog signal acquisition channel for receiving a signal from an
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`analog source (input to each of Pucci’s A-to-D converters
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`receiving signals from a telephone switch) (id. at 2324);
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`c) A processor (Pucci’s application CPU and interface SBC CPUs, in
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`combination) (id. at 24); and
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`d) Data storage memory (local ION storage and large buffer memory)
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`(id.).
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`In addition to the above-listed limitations, claim 1 requires a file
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`system of the data storage memory, because it recites that the “digitized
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`analog data is stored in a file system of the data storage memory as at least
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`one file of digitized analog data.” Ex. 1001, 12:24. Petitioner
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`acknowledges that Pucci “does not explicitly disclose that the converted data
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`is stored as a file on the ION node.” Pet. 13. Petitioner relies instead on
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`Kepley as disclosing a “voice mail system that stores a ‘digitally encoded
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`and compressed voice mail message’ as a file.” Id. (citing Ex. 1042,
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`Abstract, claim 1). According to Petitioner, the combined Pucci and Kepley
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`teachings may be illustrated in its annotated Figure 2 of Pucci, reproduced
`
`below and presented in page 23 of the Petition.
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`
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`Petitioner describes the above-annotated Figure 2 of Pucci as
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`illustrating the combination of “Pucci’s ION node with an exemplary switch
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`described by Kepley that implements the voice messaging service A-to-D
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`conversion application.” Pet. 23 (citing Ex. 1003 ¶¶ 8996, 97). We note
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`that Petitioner’s annotations depict telephone switching system 100 as
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`providing the analog data (voice) over communication line 104 for input to
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`the A-to-D channels of Pucci.
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`i.
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`File System Limitation
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`At the heart of the parties’ dispute concerning this “file system”
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`limitation is whether Petitioner has presented a reasonable rationale for
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`combining the teachings of Pucci and Kepley, as asserted. Petitioner asserts
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`that digital storage of voice message data, in the form of a file or otherwise,
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`was well known in the art as taught by Pucci and Kepley. Id. at 14
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`(asserting that Pucci discloses a file system at page 222), 28 (citing Ex. 1003
`
`¶ 108). The Petition states three general rationales for combining the
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`teachings of Pucci and Kepley:
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`a) a person of ordinary skill in the art would have been motivated to
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`look to Kepley’s “voice messaging application” because Pucci
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`discloses that its analog-to-digital services are for “a voice
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`messaging application of a prototype programmable telephone
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`switch system called GARDEN;”
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`b) a person of ordinary skill in the art would have found it obvious to
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`store the digitized A-to-D converted data as a file in Pucci’s voice
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`messaging service application to enable “computer-to-computer
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`data file transfer” between the ION-enabled voice messaging
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`service system and other messaging service systems as taught by
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`Kepley; and
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`c) the modification of Pucci with Kepley’s teachings would have
`
`involved a simple substitution of one known element (Kepley’s
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`analog voice message processing) for another (Pucci’s analog
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`voice message processing) to obtain predictable results.
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`Pet. 1314 (citing Ex. 1003 ¶¶ 6669; Ex. 1041, 222, 231); see also id.
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`at 2830.
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`Petitioner further argues that Pucci temporarily stores the converted
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`voice data in large buffer memory of the ION node, but that Pucci,
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`nevertheless, suggests storing as a file, because Pucci states that data can be
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`stored as “traditional file system data” in the ION node Pet. 28 (citing
`
`Ex. 1041, 221). Petitioner repeats the substitution rationale, stated above in
`
`(c), referring to substitution of Pucci’s “voice message processing” (which
`
`includes storage of the digitized voice message as a file) with Kepley’s
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`“voice message processing” (“which includes storage of digitized voice
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`message as a file). Id. at 30 (citing Ex. 1003 ¶ 113). Petitioner further
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`asserts that the “results of such substitution would have been predictable
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`because the digitized voice message data would have been stored like any
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`other file in Pucci’s file system.” Id.
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`Patent Owner challenges Petitioner’s proffered rationales for the
`
`asserted combination on five bases:
`
`a) it would not have been obvious for a person of ordinary skill in the
`
`art to replace the first in/first (FIFO) out data writing and reading
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`approach of Pucci with a file format approach because of the
`
`differences between buffering and storing data as a file (PO
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`Resp. 1416);
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`b) the combination would change the principle of operation of Pucci
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`because the alleged substitution prevents Pucci from performing
`
`the data flow into the host as the data is acquired (id. at 17, 3334);
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`c) implementing Kepley’s file system storage in systems taught by
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`Pucci would require a major redesign of the ION Node embedded
`
`software and the ION Node host software, so that files, and not
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`dynamically allocated buffers, would be used (id. at 17, 34);
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`d) it is pure hindsight to propose changing a design paradigm, such as
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`substituting memory buffers with named files (id. at 3435); and
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`e) Pucci teaches away from storing digitized analog data as a file (id.
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`at 3033).
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`Petitioner reiterates in response to these arguments that Pucci
`
`discloses storing “traditional file system data,” and, therefore, Pucci
`
`provides an express motivation to use file storage as disclosed in Kepley and
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`does not teach away from using a file system. Reply 46, 89. Petitioner
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`further responds that Pucci’s system “could store the file as data blocks in its
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`buffer and transfer the data blocks to the host in a manner similar to a FIFO
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`transfer.” Id. at 6. Finally, as modified by the teachings of Kepley, Pucci
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`would continue to offer portability—the objective of Pucci, according to
`
`Petitioner—because the combined teachings would provide file transfer
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`between voice messaging service systems, as taught in Kepley. Id. at 7.
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`
`
`In view of Patent Owner’s arguments and evidence, we are not
`
`persuaded that a person of ordinary skill in the art would have had reason to
`
`combine the teachings of Pucci and Kepley, as asserted by Petitioner, to
`
`achieve the challenged claims. Our determination is based on two findings:
`
`a) First, we determine that Pucci does not teach or suggest a reason for
`
`the use of a file system for storing digitized voice messages at the
`
`ION node; and
`
`b) Second, we determine that achieving computer-to-computer file
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`transfer, as taught by Kepley, and the “traditional” nature of the
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`substitution proffered by Petitioner, are not sufficient motivations to
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`modify Pucci, in light of the changes to Pucci that would
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`impermissibly alter Pucci’s principle of operation.
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`A discussion of each of these findings follows. In determining
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`obviousness, we are mindful that the references must be considered as a
`
`whole. Thus, picking and choosing from a reference only the favorable parts
`
`and ignoring the rest is prohibited. In re Hedges, 783 F.2d 1038, 1041 (Fed.
`
`Cir. 1986). The court in Hedges elaborates:
`
`It is impermissible within the framework of section 103 to pick
`and choose from any one reference only so much of it as will
`support a given position, to the exclusion of other parts
`necessary to the full appreciation of what such reference fairly
`suggests to one of ordinary skill in the art.
`
`Id. (internal quotes and citation omitted). In this proceeding, Petitioner’s
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`contentions regarding the obviousness rationale do not reflect the entire
`
`scope of the teachings of the applied references. For instance, Petitioner’s
`
`rationales do not take into account the importance of Pucci’s wo