Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc.

• Decision Date: 23 May 2019
• Docket Number: 2018-1777
• Citation: 924 F.3d 1243
• Parties: PAPST LICENSING GMBH & CO. KG, Appellant v. SAMSUNG ELECTRONICS AMERICA, INC., Samsung Electronics Co., Ltd., Appellees
• Court: U.S. Court of Appeals — Federal Circuit

924 F.3d 1243

PAPST LICENSING GMBH & CO. KG, Appellant

v.SAMSUNG ELECTRONICS AMERICA, INC., Samsung Electronics Co., Ltd., Appellees

2018-1777

United States Court of Appeals, Federal Circuit.

Decided: May 23, 2019

Gregory S. Donahue, DiNovo Price LLP, Austin, TX, argued for appellant. Also represented by Nicole E. Glauser, Christopher V. Goodpastor.

Patrick J. Kelleher, Drinker Biddle & Reath LLP, Chicago, IL, argued for appellees. Also represented by Carrie Anne Beyer ; Nikola Colic, Washington, DC.

Before Dyk, Taranto, and Chen, Circuit Judges.

Taranto, Circuit Judge.

Papst Licensing GMBH & Co. KG owns U.S. Patent No. 9,189,437. Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. (collectively, Samsung) successfully petitioned the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office to institute an inter partes review (IPR) of all claims of the ’437 patent. In its final written decision, the Board determined that claims 1–38 and 43–45 are unpatentable for obviousness based on a combination of U.S. Patent No. 5,758,081 (Aytac), a publication setting forth standards for the Small Computer System Interface-2 (SCSI), and "admitted prior art" (what the ’437 patent specification describes as prior art). Samsung Electronics Co., Ltd. v. Papst Licensing GmbH & Co. KG , No. IPR2016-01733, 2018 WL 813014 (P.T.A.B. Feb. 2, 2018) ( ’437 Patent Decision ). Papst appeals. We affirm, relying in the alternative on issue preclusion and our review of the merits of Papst’s challenges.

I

A

The ’437 patent is entitled "Analog Data Generating and Processing Device Having a Multi-Use Automatic Processor" and names Michael Tasler as the sole inventor. Issued in 2015, it claims priority to a 1999 application through continuations of applications that issued as U.S. Patent Nos. 6,470,399 and 6,895,449, which are owned by Papst and were before this court in Papst Licensing GmBH & Co. v. Fujifilm Corp. , 778 F.3d 1255 (Fed. Cir. 2015). Of significance here, that same specification also gave rise to Papst’s U.S. Patent Nos. 8,966,144 and 8,504,746.

The specification describes an interface device for communication between a data device (on one side of the interface) and a host computer (on the other). The interface device achieves high data transfer rates, without the need for a user-installed driver specific to the interface device, by using fast drivers that are already standard on the host computer for data transfer, such as a hard-drive driver. ’437 patent, col. 2, lines 4–29; id. , col. 3, lines 10–40. The interface device signals to the host device that the interface device is an input/output device for which the host already has such a driver. Id. , Abstract.

Claim 1 is illustrative for present purposes. It recites:

1. An analog data generating and processing device (ADGPD), 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 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

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 .

Id. , col. 11, line 56 through col. 12, line 42 (emphases added).

B

After Papst sued several companies for infringement of various patents in the Tasler family, including the ’437 patent, various combinations of companies filed numerous petitions for IPRs to review many claims of the patents. Samsung requested the present IPR, which the Board instituted on February 8, 2017.

The key piece of prior art of relevance is the Aytac patent. Aytac describes connecting a personal computer to an interface device that would in turn connect to (and switch between) various other devices, such as a scanner, fax machine, or telephone. The interface device includes the "CaTbox," which is "connected to a PC via SCSI cable, and to a telecommunications switch." Aytac, Abstract. CaTbox "runs an operating system, CaTOS, and contains a hard disk" accessible "as a SCSI disk" known as "CaTdisc." Id. ; id. , col. 8, line 63 through col. 9, line 4; Figure 1. While the main PC is off, CaTbox, which uses less energy, "receives faxes, voicemail, email and stores them on CaTdisc." Id. , Abstract. Aytac points to SCSI as performing some of the functions involving the CaTdisc in the overall CaTbox system. See, e.g. , id. ; id. , col. 8, lines 1-14, col. 10, lines 8-12, 36-37, 52-58; Figure 1. Papst explains in this court that "[t]he ’437 Patent indicates that SCSI interfaces and SCSI drivers were known in the art at the time of the invention. SCSI interfaces were present on most host devices or laptops, and SCSI drivers were ‘normally included by the manufacturer of the multi-purpose interface.’ " Papst Br. at 13 (citations omitted).

In its determination of obviousness, the Board adopted a claim construction that is central to Papst’s appeal. Claim 1 requires an automatic recognition process to occur "without requiring any end user to load any software onto the computer at any time" and an automatic file transfer process to occur "without requiring any user-loaded file transfer enabling software to be loaded on or installed in the computer at any time." See also ’437 patent, col. 17, lines 9–10 ("without requiring the user to load the device driver"). The Board interpreted the "without requiring" limitations to mean "without requiring the end user to install or load specific drivers or software for the ADGPD beyond that included in the operating system, BIOS, or drivers for a multi-purpose interface or SCSI interface ." ’437 Patent Decision at *6. In adopting that construction, the Board made clear that SCSI interface drivers are among those that can be required to be installed for the processes to occur, relying on the specification and claims as making clear that the invention contemplates use of SCSI drivers to carry out the processes. See id. at *5–*6. The Board also rejected Papst’s contention that "the ‘without requiring’ limitations prohibit an end user from installing or loading other drivers." Id. at *6. Relying on Celsis In Vitro, Inc. v. CellzDirect, Inc. , 664 F.3d 922, 926–27 (Fed. Cir. 2012), the Board concluded that "[t]he claim language, under a plain reading, means that the end user is ‘not required’ to load or install the recited software for transferring a file or recognizing a device," but the language "does not prohibit the end user" from doing so. Id. "[I]f the software is not required [for the claimed function], then it does not matter whether the end user loaded or installed the software." Id.¹

Regarding the application of the construed claim language to the prior art, there is no material issue before us about the motivation to combine the three prior-art sources—Aytac, SCSI, and admitted prior art. As already noted, Aytac expressly refers to SCSI. The sole issue on which this appeal turns concerns what Aytac teaches about the host computer’s ability to use the SCSI driver, even without additional CaTbox software, to accomplish an automatic file transfer.

The Board found that Aytac does teach that the automatic file transfer can take place using only the PC-resident SCSI drivers. Id. at *13–*16. The Board noted that Papst’s argument relied on the presence of CATSYNC software in the CaTbox system together with the contention that the claim language prohibits user loading of any other software. Id. at *14. The Board, having already rejected the "prohibits" claim construction, found that, although CATSYNC is used for some purposes (such as synchronizing different demands for access to the CaTdisc), Aytac teaches that an automatic file transfer can indeed occur using only the SCSI...