NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PAPST LICENSING GMBH & CO. KG,
Appellant
v.
APPLE INC.,
Appellee
______________________
2018-1987, 2018-1988
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
01839, IPR2016-01864.
---------------------------------------------------------------------------------
PAPST LICENSING GMBH & CO. KG,
Appellant
v.
SAMSUNG ELECTRONICS CO LTD, SAMSUNG
ELECTRONICS AMERICA, INC.,
Appellees
______________________
2018-1989
______________________
2 PAPST LICENSING GMBH & CO. KG v. APPLE INC.
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00714, IPR2017-01808.
______________________
Decided: May 23, 2019
______________________
CHRISTOPHER V. GOODPASTOR, DiNovo Price LLP, Aus-
tin, TX, argued for appellant. Also represented by NICOLE
E. GLAUSER, GREGORY S. DONAHUE.
DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP,
Washington, DC, argued for all appellees. Appellee Apple
Inc. also represented by SCOTT ANTHONY MCKEOWN,
KATHRYN C. THORNTON; SAMUEL LAWRENCE BRENNER, Bos-
ton, MA; JAMES RICHARD BATCHELDER, MARTA F. BELCHER,
East Palo Alto, CA; TYLER DUTTON, MICHAEL E. JOFFRE,
WILLIAM H. MILLIKEN, Sterne Kessler Goldstein & Fox,
PLLC, Washington, DC.
PATRICK J. KELLEHER, Drinker Biddle & Reath LLP,
Chicago, IL, for appellees Samsung Electronics Co Ltd,
Samsung Electronics America, Inc. Also represented by
CARRIE ANNE BEYER; NIKOLA COLIC, Washington, DC
______________________
Before DYK, TARANTO, and CHEN, Circuit Judges.
DYK, Circuit Judge.
Papst Licensing GmbH & Co. KG (“Papst”) appeals
from three decisions of the Patent Trial and Appeal Board
(“Board”) invalidating certain claims of U.S. Patent No.
6,470,399 (“the ’399 patent”). In IPR2017-00714, the
Board held that claims 1–3, 5, 6, 11, 14, and 15 of the ’399
patent were unpatentable for obviousness over U.S. Patent
PAPST LICENSING GMBH & CO. KG v. APPLE INC. 3
5,758,081 (“Aytac”) in combination with other prior art. 1 In
IPR2016-01839 and IPR2016-01864, the Board held that
subsets of those claims were also unpatentable over differ-
ent prior art references. Because the ’399 patent is expired,
the Board construed the claims under the standard set
forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc).
The ’399 patent is generally directed towards methods
and systems for communication between a host computer
and an input/output data device. Claim 1 is illustrative:
1. An interface device for communication between
a host device, which comprises drivers for in-
put/output devices customary in a host device and
a multi-purpose interface, and a data transmit/re-
ceive device, the data transmit/receive device being
arranged for providing analog data, comprising:
a processor;
a memory;
a first connecting device for interfacing the
host device with the interface device via the
multi-purpose interface of the host device;
and
a second connecting device for interfacing
the interface device with the data trans-
mit/receive device, the second connecting
device including a sampling circuit for sam-
pling the analog data provided by the data
transmit/receive device and an analog-to-
digital converter for converting data
1 IPR2017-01808 is substantively identical to
IPR2017-00714 and was joined with IPR2017-00714 before
the Board’s final decision. We therefore treat them as a
single IPR identified as IPR2017-00714.
4 PAPST LICENSING GMBH & CO. KG v. APPLE INC.
sampled by the sampling circuit into digital
data,
wherein the interface device is configured
by the processor and the memory to include
a first command interpreter and a second
command interpreter,
wherein the first command interpreter is
configured in such a way that the command
interpreter, when receiving an inquiry
from the host device as to a type of a device
attached to the multi-purpose interface of
the host device, sends a signal, regardless
of the type of the data transmit/receive de-
vice attached to the second connecting de-
vice of the interface device, to the host
device which signals to the host device that
it is an input/output device customary in a
host device [the “inquiry and response” lim-
itation], whereupon the host device com-
municates with the interface device by
means of the driver for the input/output de-
vice customary in a host device [the “cus-
tomary driver” limitation], and
wherein the second command interpreter is
configured to interpret a data request com-
mand from the host device to the type of in-
put/output device signaled by the first
command interpreter as a data transfer
command for initiating a transfer of the
digital data to the host device.
’399 patent, col. 12 l. 42–col. 13 l. 13 (emphasis added). We
previously construed several terms of the ’399 patent in In
re Papst Licensing Digital Camera Patent Litigation, 778
F.3d 1255 (Fed. Cir. 2015), an appeal from district court
litigation.
PAPST LICENSING GMBH & CO. KG v. APPLE INC. 5
Papst raises two main arguments for setting aside the
Board’s decision in IPR2017-00714. First, Papst argues
that the Board lacked substantial evidence for its conclu-
sion that the prior art teaches the “inquiry and response”
limitation. We conclude that Papst waived the argument
that the prior art did not teach the “inquiry and response”
limitation because it did not raise the argument below at
any time. See Novartis AG v. Torrent Pharm. Ltd., 853
F.3d 1316, 1329 (Fed. Cir. 2017).
Second, Papst argues that the Board lacked substan-
tial evidence for its conclusion that Aytac teaches the “cus-
tomary driver” limitation, which requires communication
between the host device and interface device by means of a
driver associated with a customary device. We disagree.
Papst does not dispute that Aytac teaches using ASPI driv-
ers in the communication between the host PC and the in-
terface device, nor does it dispute that ASPI drivers qualify
as “customary” drivers. Papst also does not contest the
Board’s construction of this limitation, which clarified that
the limitation does not “require[] all communication be-
tween the host device and interface device to occur solely
by means of the recited driver” or “prohibit[] the use of any
software other than the recited driver.” J.A. 160. Yet
Papst nonetheless argues that Aytac does not satisfy the
claim limitation because it requires the use of specialized
software in addition to the customary, ASPI driver. This
position is contrary to the claim construction. Substantial
evidence supports the Board’s finding that Aytac discloses
the “customary driver” limitation under the Board’s claim
construction.
We have considered Papst’s remaining arguments but
conclude they lack merit.
Accordingly, the Board did not err in its obviousness
determination, and we affirm the Board’s decision in
IPR2017-00714 that claims 1–3, 5, 6, 11, 14, and 15 of the
6 PAPST LICENSING GMBH & CO. KG v. APPLE INC.
’399 patent were unpatentable. Because those claims in-
clude all claims held unpatentable by the Board in
IPR2016-01839 and IPR2016-01864, we dismiss as moot
Papst’s appeals from the decisions in IPR2016-08139 and
IPR2016-01864 and vacate the decisions of the Board.
AFFIRMED-IN-PART, DISMISSED-IN-PART AS
MOOT, VACATED-IN-PART
COSTS
No costs.