PTAB

IPR2016-01842

Apple Inc v. Papst Licensing GmbH & Co KG

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Analog Data Generating and Processing Device
  • Brief Description: The ’437 patent describes an analog data generating and processing device (ADGPD) that acquires, digitizes, and processes analog data. The device's purported novelty is its ability to interface with a host computer by emulating a standard digital storage device (e.g., a hard disk), thereby allowing data transfer using the host computer's customary, pre-existing device drivers without needing new software.

3. Grounds for Unpatentability

Ground 1: Obviousness over Pucci, Kepley, and Schmidt - Claims 1, 4-6, 9-12, 14, 15, 30, and 34 are obvious over Pucci in view of Kepley and Schmidt.

  • Prior Art Relied Upon: Pucci ("Configurable Data Manipulation in an Attached Multiprocessor," 1991), Kepley (Patent 4,790,003), and Schmidt ("The SCSI Bus and IDE Interface," 1995).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Pucci disclosed a multiprocessor system (the "ION node") that performed the core functions of the claimed ADGPD: it acquired analog data from A-to-D converters, processed it, and connected to a workstation via a SCSI interface, specifically "appear[ing] to [a] workstation as a large, high speed disk device." Petitioner contended that while Pucci taught disk emulation, it did not explicitly disclose storing the digitized voice data as a "file." This limitation was supplied by Kepley, which described a voice mail system that stored digitized messages as files to enable computer-to-computer file transfer. Petitioner asserted that Schmidt, a textbook on interface protocols, provided the well-known implementation details for the SCSI device recognition process that Pucci mentioned but did not fully detail. Specifically, Schmidt taught the mandatory "INQUIRY" command, where a peripheral device identifies its device class (e.g., "hard disk") to the host, achieving the claimed automatic recognition.
    • Motivation to Combine: A POSITA would combine Pucci with Kepley because Pucci described its ION node as an ideal platform for a voice messaging application, and Kepley provided a known, conventional design for such an application, including the use of file storage. The benefit was enabling robust, computer-to-computer data file transfers. A POSITA implementing Pucci's SCSI-based disk emulation would naturally consult a standard reference like Schmidt to implement the well-known and mandatory device initialization and identification protocols.
    • Expectation of Success: The combination involved applying known technologies for their intended purposes. Integrating Kepley's file storage into Pucci's voice messaging application was a simple substitution of one known element for another to gain a predictable benefit. Likewise, using Schmidt's standard SCSI protocol to achieve the disk emulation described by Pucci would have been a routine implementation with a high expectation of success.

Ground 2: Obviousness over Pucci, Kepley, Schmidt, and Campbell - Claims 13 and 18 are obvious over the combination for Ground 1 in view of Campbell.

  • Prior Art Relied Upon: Pucci, Kepley, Schmidt, and Campbell (Patent 5,081,454).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of claims 13 and 18, which required "independently programmable" analog acquisition channels and corresponding "sample and hold amplifiers for simultaneous sampling." Petitioner argued Campbell taught an A-to-D conversion system with these exact features, describing programmable sample times for each input channel and the use of sample-and-hold circuits to allow adjacent channels to be sampled simultaneously.
    • Motivation to Combine: Pucci suggested its system was "user programmable" to provide greater functionality. A POSITA seeking to implement this feature in Pucci's A-to-D converters would have been motivated to incorporate the teachings of Campbell. Campbell explicitly stated its design allows for improved conversion throughput and operational flexibility, providing a clear reason for its inclusion.
    • Expectation of Success: Incorporating Campbell's advanced, but known, A-to-D converter features into the system of Pucci would have been a predictable design choice to achieve the enhanced programmability and performance suggested by Pucci.

Ground 3: Obviousness over Pucci, Kepley, Schmidt, and Wilson - Claim 32 is obvious over the combination for Ground 1 in view of Wilson.

  • Prior Art Relied Upon: Pucci, Kepley, Schmidt, and Wilson (Patent 5,353,374).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claim 32's limitation of processing the digitized data by "performing a fast Fourier transform" (FFT). The primary combination processed data using mu-law compression. Petitioner pointed to Wilson, which taught a voice encoding technique that first applied mu-law compression and then used a "transform coder," such as an FFT, to achieve further compression.
    • Motivation to Combine: A POSITA would combine Wilson's teaching with the Pucci system to achieve greater data compression. The advantages of further compression—such as lower storage requirements and faster data transmission—were well-known and would have provided a strong motivation to add this additional, known processing step.
    • Expectation of Success: The combination involved a straightforward application of a known technique (transform coding) to a known system to obtain a predictable result (a more compressed data signal).

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds against claim 16 using Shinosky (Patent 4,065,644) to teach a sensor as an analog source, and against claims 43 and 45 based on combinations of the same core references.

4. Key Claim Construction Positions

  • "multi-purpose interface of the host computer": Petitioner proposed the construction "a communication interface designed for use with multiple devices that can have different functions from each other." This construction supported the argument that a standard SCSI interface qualifies as the claimed interface.
  • "customary device driver": Petitioner proposed the construction "driver for a device normally present in most commercially available host devices at the time of the invention." This was central to the argument that the invention merely leveraged existing, common drivers (like a hard disk driver) already present on a host computer, reinforcing obviousness.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-6, 9-16, 18, 30, 32, 34, 43, and 45 as unpatentable.