Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`
` Entered: June 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`HUAWEI TECHNOLOGIES CO., LTD,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00449
`Patent 8,504,746 B2
`_______________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`1
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`
` Entered: June 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`HUAWEI TECHNOLOGIES CO., LTD,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00449
`Patent 8,504,746 B2
`_______________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`1
`
`
`
`
`
`
`
`IPR2017-00449
`Patent 8,504,746 B2
`
`
`
`
`I.
`
`INTRODUCTION
`
`
`
`Huawei Technologies Co., Ltd. (“Petitioner”) filed a Petition requesting
`
`inter partes review of claims 1, 4, 6–8, 10, 11, 14, 15, 17, 18, 20, 21, 23, 30,
`
`31, 34, and 35 (“the challenged claims”) of U.S. Patent No. 8,504,746 B2
`
`(Ex. 1001, “the ’746 patent”). Paper 2 (“Pet.”). Papst Licensing GmbH &
`
`Co., KG (“Patent Owner”) filed a Preliminary Response. Paper 6 (“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 set forth
`
`below, we determine that, on this record, Petitioner has not established a
`
`reasonable likelihood that it would prevail with respect to any of the
`
`challenged claims. We hereby decline to institute an inter partes review in
`
`this proceeding.
`
`A. Related Matters
`
`The parties indicate that the ’746 patent is involved in Papst Licensing
`
`GmbH & Co. KG v. Huawei Technologies Co., Ltd., Case No. 6-15-cv-
`
`01115 (E.D. Tex.) and other proceedings. Pet. 2–3; Paper 4, 2–5.
`
`B. The ’746 Patent
`
`The ’746 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, 1:20–24,
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`1:56–59. According to the ’746 patent, using a specific driver to match very
`
`closely to an individual host system would achieve high data transfer rates
`
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`2
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`IPR2017-00449
`Patent 8,504,746 B2
`
`across the interface, but the specific driver cannot be used with other host
`
`systems. Id. at 2:6–21. Several solutions to this problem were known in the
`
`art. Id. at 2:22–3:24. 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 2:25–30. The plug-in card provided a printer
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`interface for enhancing data transfer rates. Id. at 2:30–34. 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 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 3:10–19.
`
`The ’746 patent indicates that the “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 3:32–36. Figure 1 of the ’746 patent, reproduced below,
`
`illustrates a block diagram of an interface device.
`
`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.
`
`
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`3
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`IPR2017-00449
`Patent 8,504,746 B2
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`at 4:59–5:7. Interface device 10 includes first connecting device 12, second
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`connecting device 15, digital signal processor 13, and memory means 14.
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`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 3:49–55, 8:37–41. According to the ’746 patent,
`
`SCSI interfaces were known to be present on most host devices or laptops.
`
`Id. at 8:37–41. By using a standard interface of a host device and by
`
`simulating an input/output device to the host device, the interface device “is
`
`automatically supported by all known host systems without any additional
`
`sophisticated driver software.” Id. at 11:29–35.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 31, and 34 are independent. Each
`
`of claims 4, 6–8, 10, 11, 14, 15, 17, 18, 20, 21, 23, and 30 depends directly
`
`or indirectly from claim 1; claim 35 depends directly from claim 34.
`
`Claim 1 is illustrative:
`
`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;
`
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`4
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`IPR2017-00449
`Patent 8,504,746 B2
`
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`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
`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.
`
`Ex. 1001, 11:48–12:26.
`
`
`
`
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`5
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`IPR2017-00449
`Patent 8,504,746 B2
`
`
`D.
`
`Asserted Ground of Unpatentability
`
`Petitioner asserts the sole ground that the challenged claims are
`
`unpatentable, as anticipated under 35 U.S.C. 102(b)1 by PCT Publication
`
`No. WO 98/39710 (“the PCT Publication,” Ex. 1008).2
`
`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable interpretation standard, claim terms generally are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. See In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`
`claim terms that are in controversy need to be construed, and only to the
`
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this
`
`Decision, we do not find it necessary to construe any claim term.
`
`B. Whether Tasler’s PCT Publication is Prior Art
`
`On its face, the ’746 patent claims under 35 U.S.C. §§ 120 and 365(c),
`
`through a series of continuation applications, the benefit of the filing date—
`
`March 3, 1998—of International Application No. PCT/EP98/01187 (“the
`
`
`1 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 102(b) in this Decision. See Pet. 5.
`
`2 Citations to the PCT Publication are to the English translation (Ex. 1004).
`
`
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`6
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`IPR2017-00449
`Patent 8,504,746 B2
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`PCT ’187 application”) that entered the national stage, U.S. Patent
`
`Application No. 09/331,002 (“the ’002 application”), after compliance with
`
`35 U.S.C. § 371. Ex. 1001, [30], [63]; Ex. 3001, [21], [22], [86]. The PCT
`
`’187 application was published as International Patent Publication No. WO
`
`98/39710 (Ex. 1004), which is the PCT Publication upon which Petitioner
`
`relies in its sole asserted ground of unpatentability (Pet. 1, 4–5). The ’746
`
`patent lists the following benefit claims:
`
`Continuation of application No. 11/928,283, filed on Oct. 30,
`2007, now abandoned, which is a continuation of application No.
`11/467,073, filed on Aug. 24, 2006, and a continuation of
`application No. 11/078,778, filed on Mar. 11, 2005, now
`abandoned, and a continuation of application No. 10/219,105,
`filed on Aug. 15, 2002, now Pat. No. 6,895,449, and a
`continuation of application No. 09/331,002, [which is the
`national stage of PCT/EP98/01187, filed on Mar. 3, 1998], now
`Pat. No. 6,470,399.
`
`Ex. 1001, [63]; Ex. 3001, [21], [22], [86] (emphases added).
`
`In its Petition, Petitioner argues that “the patentee failed to perfect its
`
`claim of priority [through] all of the intervening applications.” Pet. 7. In
`
`particular, Petitioner contends that, in U.S. Patent Application No.
`
`11/078,778 (“the ’778 application”), Applicant “failed to claim priority to
`
`the earlier-filed U.S. Patent Application No. 09/331,002” because Applicant
`
`did not submit a specific reference to the earlier-filed application in the
`
`Patent Application Utility Transmittal, the first sentence of the specification
`
`following the title, or an Application Data Sheet, during the course of
`
`prosecution of the ’778 application, as required by 35 U.S.C. § 120. Id. at
`
`7–8. Although Petitioner confirms that, on November 10, 2016, Patent
`
`Owner filed a Petition under 37 C.F.R. §§ 1.55 and 1.78 (Ex. 1005) to accept
`
`an unintentionally delayed benefit claim, Petitioner argues that the earliest
`
`
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`7
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`IPR2017-00449
`Patent 8,504,746 B2
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`effective filing date of the ’746 patent is August 15, 2002, the filing date of
`
`U.S. Patent Application No. 10/219,105, because Patentee expressly
`
`abandoned the ’778 application. Id. at 8–15. According to Petitioner, the
`
`PCT Publication published on September 11, 1998, is prior art under 35
`
`U.S.C. § 102(b) with respect to the claims of the ’746 patent. Id.
`
`Patent Owner counters that Petitioner has not shown that the PCT
`
`Publication, to which the ’746 patent claims priority, is prior art. Prelim.
`
`Resp. 8–16. Patent Owner notes that, on February 9, 2017, the Office issued
`
`a Decision (Ex. 2001) granting Patent Owner’s Petition (Ex. 1005) to accept
`
`the unintentionally delayed benefit claim. PO Resp. 12–13. In Patent
`
`Owner’ view, the ’746 patent now contains a proper benefit claim to the
`
`’002 application, which is the national stage of the PCT ’187 application
`
`filed on March 3, 1998. We agree with Patent Owner.
`
`Notably, 37 C.F.R. § 1.78(e) sets forth the following requirements for
`
`submitting an unintentionally delayed benefit claim under 35 U.S.C. §§ 120
`
`and 365(c):
`
`(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c)
`for the benefit of a prior-filed nonprovisional application,
`international application, or international design application.
`
`If the reference required by 35 U.S.C. 120 and paragraph (d)(2)
`of this section is presented after the time period provided by
`paragraph (d)(3) of this section, the claim under 35 U.S.C. 120,
`121, 365(c),or 386(c) for the benefit of a prior-filed copending
`nonprovisional application, international application designating
`the United States, or international design application designating
`the United States may be accepted if the reference required by
`paragraph(d)(2) of this section was unintentionally delayed.
`
`A petition to accept an unintentionally delayed claim under 35
`U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed
`application must be accompanied by:
`
`
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`8
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`IPR2017-00449
`Patent 8,504,746 B2
`
`
`(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2)
`of this section to the prior-filed application, unless previously
`submitted;
`
`(2) The petition fee as set forth in § 1.17(m); and
`
`(3) A statement that the entire delay between the date the benefit
`claim was due under paragraph (d)(3) of this section and the date
`the benefit claim was filed was unintentional. The Director may
`require additional information where there is a question whether
`the delay was unintentional.
`
`The Decision (Ex. 2001) granting Patent Owner’s Petition (Ex. 1005)
`
`to accept an unintentionally delayed claim for the benefit of the ’002
`
`application clearly states that these requirements set forth in 37 C.F.R.
`
`§ 1.78(e) have been satisfied, including “a proper reference to the prior-filed
`
`application(s) has been included in an application data sheet (or in an
`
`amendment to the first sentence of the specification) as required by 37 CFR
`
`1.78(d)(2).” Ex. 2001, 2. Therefore, we decline to revisit the Office’s
`
`Decision (Ex. 2001) on Patent Owner’s Petition (Ex. 1005), and we find that
`
`the record before us does not support Petitioner’s argument that Patent
`
`Owner failed to submit a proper specific reference under 35 U.S.C. § 120 to
`
`the ’002 application in the ’778 application. As a result, Petitioner does not
`
`establish that the PCT Publication is prior art under 35 U.S.C. § 102(b)
`
`against the challenged claims of the ’746 patent.
`
`For the foregoing reasons, we determine that Petitioner fails to
`
`establish sufficiently that the challenged claims are not entitled to the benefit
`
`of the ’002 application’s filing date. Consequently, Petitioner fails to make
`
`a threshold demonstration that the PCT Publication, to which the ’746 patent
`
`claims priority, is prior art against the challenged claims of the ’746 patent
`
`in this proceeding. 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2).
`
`
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`9
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`IPR2017-00449
`Patent 8,504,746 B2
`
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`Accordingly, we conclude that Petitioner has not established a
`
`reasonable likelihood of prevailing on its assertion that claims 1, 4, 6–8, 10,
`
`11, 14, 15, 17, 18, 20, 21, 23, 30, 31, 34, and 35 of the ’746 patent are
`
`unpatentable, as anticipated by the PCT Publication.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has not
`
`establish a reasonable likelihood of prevailing on its assertion that any of
`
`claims 1, 4, 6–8, 10, 11, 14, 15, 17, 18, 20, 21, 23, 30, 31, 34, and 35 of the
`
`’746 patent are unpatentable.
`
`For the foregoing reasons, it is
`
`IV. ORDER
`
`ORDERED that the Petition is denied, and no trial is instituted.
`
`10
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`IPR2017-00449
`Patent 8,504,746 B2
`
`For PETITIONER:
`
`David Garr
`Gregory Discher
`dgarr@cov.com
`gdishcher@cov.com
`COVINGTON & BURLING LLP
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`11
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