Case IPR2014-01396
`U.S. Patent No. 6,249,825
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner
`
`v .
`
`CYPRESS SEMICONDUCTOR CORPORATION
`Patent Owner
`
`Case IPR2014-01396
`Patent 6,249,825
`
`DECLARATION OF JOHN GARNEY
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`Page
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ...........................................................................................1
`
`QUALIFICATIONS........................................................................................1
`
`I.
`
`II.
`
`III. MATERIALS CONSIDERED........................................................................6
`IV.
`SUMMARY OF OPINIONS.........................................................................6
`
`V.
`
`LEGAL STANDARDS, PERSON OF ORDINARY SKILL IN
`THE ART .......................................................................................................7
`
`VI.
`
``825 PATENT TECHNOLOGY BACKGROUND........................................8
`
`VII. CLAIM CONSTRUCTION ..........................................................................13
`
`A.
`
`B.
`
`C.
`
`“Electronically [Simulate/Simulating] A Physical
`Disconnection And Reconnection Of The Peripheral Device”...........13
`
`“Computer Bus” ..................................................................................15
`
`Prosecution History.............................................................................17
`
`VIII. CLAIMS 1-3, 10-13 AND 17 ARE NOT OBVIOUS OVER
`MICHELSON, PCCEXTEND AND DAVIS ...............................................19
`
`A. Michelson Does Not Teach Electronically Simulating Physical
`Disconnection/Reconnection “Over A Computer Bus”......................19
`
`1.
`
`2.
`
`The Challenged Claims Require Electronic Simulation …
`Over A Computer Bus ..............................................................19
`
`Michelson Does Not Teach Electronic Simulation …
`Over A Computer Bus ..............................................................20
`
`B. Michelson Does Not Teach A “Second Configuration” .....................23
`
`1.
`
`2.
`
`The Challenged Claims Require First and Second
`Configurations...........................................................................23
`
`Michelson’s CIS Data Stored In The EEPROM And
`FPGA Data Are Not First And Second Configurations............24
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`C. Michelson Does Not Teach Selection Of A Second
`Configuration Based On An Identification Code Read From
`The Peripheral Device.........................................................................26
`
`D.
`
`One Of Ordinary Skill In The Art Would Not Have Combined
`The PCMCIA References....................................................................27
`
`1.
`
`A POSITA Would Not Combine Michelson And
`PCCextend ................................................................................27
`
`a.
`
`b.
`
`c.
`
`d.
`
`Michelson Is Not A Testing Board.................................29
`
`The Manipulation Of Bus Signals With PCCextend
`Is Not Applicable To Michelson ....................................29
`
`Michelson’s “Reset” Is Unrelated To PCCextend’s
`“Reset”............................................................................32
`
`Combining Michelson And PCCextend Would
`Result In An Inoperable System.....................................34
`
`2.
`
`A POSITA Would Not Combine Michelson, PCCextend
`And Davis .................................................................................35
`
`E.
`
`Claims 18 And 20 Are Not Anticipated By Davis..............................38
`
`1.
`
`Davis Does Not Teach Electrical Simulation “Over Said
`Computer Bus”..........................................................................39
`
`F.
`
`Claims 5, 7, 15 And 16 Are Not Obvious Over Michelson,
`PCCextend, Davis And The APA .......................................................40
`
`1.
`
`2.
`
`More Than “Routine Engineering” Is Required To
`Substitute A USB Bus For The PCMCIA Buses In The
`PCMCIA References ................................................................41
`
`The Substitution Of A USB Bus For A PCMCIA Bus
`Would Not Yield A Predictable Variation................................46
`
`G.
`
`H.
`
`Claim 19 Is Not Obvious Over Davis And The APA.........................47
`
`Anchor Chips And Cypress Practiced The Claimed Inventions.........47
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`IX. CONCLUSION..............................................................................................47
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`CONCLUSION .............................................................................................. 47
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`IX.
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`Case IPR2014-01396
`U.S. Patent No. 6,249,825
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`I, John Garney, declare and state as follows:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by Kaye Scholer LLP at the rate of $275 per hour
`to provide opinions in connection with the Inter Partes review of U.S. Patent Nos.
`
`6,249,825 (the “`825 patent”). My compensation is not affected by the outcome of
`
`this proceeding.
`
`2.
`
`I have no financial interest in any of the parties, or the `825 patent.
`
`II. QUALIFICATIONS
`3.
`I received a Bachelor’s of Science in Mathematics and a Bachelor’s of
`
`Science in Computer Science from Purdue University in 1978. I received a
`
`Master’s of Science in Computer Science from Purdue University in 1980.
`
`4.
`
`I was employed by Intel Corporation from 1980 through 2007 with
`
`two years (1988-1989) spent in a joint venture (BiiN) spun off by Intel/Siemens. I
`
`held a variety of positions while at Intel, starting as a Software Evaluation
`
`Engineer and finally as a Senior Staff Systems Architect in the Research and
`
`Development part of the Corporate Technology Group.
`
`5. While employed at Intel Corporation as a software architect in 1991, I
`
`was Intel’s software representative to the Personal Computer Memory Card
`
`International Association (“PCMCIA”). As part of my responsibilities as Intel’s
`
`representative, I extensively reviewed the pre release 2.0 specification and
`
`discussed and debated clarifications and corrections to the specification in several
`
`full membership meetings.
`
`6.
`
`I co-defined the Socket Services and Card Services portions of the
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`PCMCIA Release 2.01 (November 1992) and 2.1 (July 1993) specifications (200+
`
`pages)). I presented and defended the technical details of those specifications
`
`during PCMCIA working group meetings and incorporated feedback from the
`
`working meetings through several releases from 1991 thru 1993. I worked with
`
`Microsoft and got their support of Card Services in the Windows Operating
`
`System. I was the only non-Microsoft member of the Windows Chicago (aka
`
`Windows 95) Plug and Play team and ensured Microsoft support for dynamically
`
`removable, configurable PCMCIA memory and IO cards.
`
`7.
`
`I wrote and promoted the Intel Exchangeable Card Architecture
`
`(ExCA) subset specification of PCMCIA that allowed interchangeable use of cards
`
`in PC systems manufactured by different companies. This specification was
`
`subsequently adopted by the PC Industry.
`
`8.
`
`I was the software architect for two different Intel hardware product
`
`teams building two different PCMCIA host adapter chips, incorporated in 3rd party
`
`OEM laptops. I was a member of the Intel PC Enhancements Division (PCED)
`
`product group that developed the first PCMCIA modem and LAN cards and
`
`ensured these cards adhered to the PCMCIA standards.
`
`9.
`
`I built and demonstrated prototype PCMCIA Execute-In-Place (XIP)
`
`tools and drivers for converting commonly available Windows 3.x applications
`
`(such as MS Word and Powerpoint) so that the applications could be executed
`
`directly from a PCMCIA flash memory card, without needing to be loaded into
`
`DRAM.
`
`10.
`
`I provided technical leadership with the Intel Flash memory product
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`group in the development of the Flash File System 2 that was used with Intel
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`PCMCIA Flash memory cards.
`
`11.
`
`Starting in 1995, I was Intel’s technical lead and specification author
`
`for the Universal Serial Bus specification, both internal to Intel and in worldwide,
`
`international working group meetings. I co-developed the USB communication
`
`model and contributed directly to 4 of the 7 technical chapters (USB Data Model,
`
`Protocol Layer, USB Device Framework, Hub Specification). I wrote the bulk of
`
`the USB Data Flow Model (chapter 5). I updated the specification through several
`
`pre Revision 1.0 releases (V0.8, 0.9, 0.99) ultimately resulting in the publication of
`
`the official Revision 1.0 release.
`
`12.
`
`I delivered many presentations and tutorials about USB architecture,
`
`protocol and USB Hubs at other companies and at industry events such as the
`
`Windows Hardware Engineering Conference (WinHEC), Intel Architecture and
`
`Telephony Conferences.
`
`13.
`
`I provided technical and management leadership to the Intel team that
`
`developed the first USB driver software that was used to demonstrate working
`
`USB hosts and peripherals at Comdex, the Intel Architecture Conference and the
`
`USB Developers Conference II.
`
`14.
`
`I worked directly with the Microsoft Windows 9x and NT Operating
`
`System development teams to ensure proper support of USB functionality
`
`including isochrony, Plug and Play and Power Management.
`
`15.
`
`I worked directly with the earliest 3rd party USB device vendors
`
`when they brought their prototype USB devices to the Intel Peripheral Integration
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`Lab (PIL) to test their devices with the earliest USB host controllers and software.
`
`16.
`
`In 1997, I was the lead co-author of the book “USB Hardware and
`
`Software” published in 1998 (ISBN 0-929392-37-X). I wrote chapters 1
`
`(Introduction), 3 (System Architecture), 7 (Frames), and 8 (Data Transfers), and
`
`coordinated the full book review and assembly.
`
`17.
`
`Starting in 1997, I co-developed and taught several 2-day USB Rev.
`
`1.0 technical, device developer workshops. These 10-40 person workshops were
`
`taught in the US and internationally. The workshops provided training for the
`
`proper development and operation of USB devices.
`
`18.
`
`In 2000, as an Intel employee, I was the USB Revision 2.0 Hub
`
`Working Group chairperson/editor/technical-lead. This working group had
`
`responsibility for all technical details that were not electrical or mechanical. I
`
`wrote almost all high speed details in Chapter 5 (USB Data Flow Model), Chapter
`
`8 (Protocol Layer) and Chapter 11.14-11.22 (Hub Transaction Translator). I was
`
`the inventor of the transaction translator extension to USB Hubs, which was one of
`
`the central elements of USB Revision 2.0.
`
`19.
`
`I worked directly with junior engineers of the Intel Desktop Products
`
`Group to define the Enhanced Host Controller Interface (eHCI) product
`
`specification. This hardware interface has been implemented by almost all USB
`
`host controller vendors.
`
`20.
`
`In 2000 winter term, I was an Adjunct Professor at Portland State
`
`University for CS350 (an algorithm analysis course).
`
`21.
`
`In 2003, I was one of the recipients of the Intel Achievement Award
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`in recognition of our development of USB 2.0. This award is Intel’s highest
`
`Technical achievement award and few are awarded each year.
`
`22.
`
`I am the inventor of over 62 granted patents in a variety of technical
`
`areas. For at least 12 of these patents, I am the sole inventor.
`
`23.
`
`I retired from Intel in 2007 and started my own consulting company;
`
`Garney Consulting L.LC. I provide technical, computer system architecture,
`
`design and analysis services to other companies in support of their development of
`
`computer system and device products, including USB products. I also provide
`
`expert witness services for various technologies including USB.
`
`24. As a consultant, I delivered international 3-day USB 2.0 training
`
`Workshops providing in-depth material on core aspects of USB 2.0 including
`
`hand’s on USB bus trace analysis of actual USB products using 3rd party USB bus
`
`analyzers.
`
`25.
`
`In 2008, while a consultant for MCCI, I extensively reviewed the
`
`USB Rev. 3.0 draft specification and provided significant technical feedback,
`
`especially on the new SuperSpeed Streams protocol. This feedback resulted in
`
`numerous clarifications published as errata of the specification. I also reviewed the
`
`Intel USB 3.0 eXtensible Host Controller Interface (xHCI) and was listed as a
`
`contributor in the published Intel document.
`
`26. As a consultant for MCCI, I was its technical advisory representative
`
`to ANSI T10/CAP/UAS (USB Attached SCSI) working group and the USB
`
`Implementers Forum (USB-IF) UASP (USB Attached SCSI Protocol) working
`
`group. These groups defined a new USB device class and protocol for SuperSpeed
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`mass storage devices. I was the major contributor of the USB-IF UASP Device
`
`Class working group Compliance test definitions. During that time I was also a
`
`member of the USB-IF Mass Storage, OTG2, OTG3 and AV working groups.
`
`27.
`
`In 2012, as a consultant for MCCI, I was the vice-chair of the USB
`
`3.0 10G Hub Working group. I defined and analyzed several of the technical
`
`approaches of the SuperSpeedPlus extensions and wrote sections of what was
`
`finally published as the USB 3.1 specification Rev. 1.0 in July 2013.
`
`28.
`
`I have over 35 years of professional experience in computer systems
`
`architecture, design, development, evaluation and analysis. I am one of the
`
`creators of the PCMCIA and USB standards over several revisions and releases.
`
`My C.V., Ex. 2021, summarizes more details of my broader experience.
`
`III. MATERIALS CONSIDERED
`29. As a part of the process of forming my opinions, I have reviewed the
`
``825 patent and its file history (including the prosecution history of the `103 patent
`
`and `770 patent), LG’s Petition, the declaration of Mr. Knapen regarding the `825
`
`patent, Exhibit 1003 (“Michelson”), Exhibit 1004 (“PCCextend”) and Exhibit 1005
`
`(“Davis”). I have also relied on my own knowledge, expertise, and experience.
`
`IV.
`
`SUMMARY OF OPINIONS
`30.
`I disagree with Mr. Knapen’s conclusions regarding claims 1-3, 5, 7,
`
`10-13, 15-20 of the `825 patent. Mr. Knapen’s conclusions are not supported by
`
`the elements of the prior art references he identified in his declaration, and as I
`
`have set forth below, do not render the claims obvious in view of the references.
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`V.
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`Case IPR2014-01396
`U.S. Patent No. 6,249,825
`LEGAL STANDARDS, PERSON OF ORDINARY SKILL IN THE
`ART
`31.
`
`I have been instructed concerning and/or reviewed 35 U.S.C. 102 and
`
`103; Graham v. John Deere Co., 383 U.S. 1 (1966); KSR Int’l Co. v. Teleflex, Inc.,
`
`550 U.S. 398 (2007).
`
`32.
`
`I have been informed that a prior art reference must be considered in
`
`its entirety, i.e., as a whole, including portions that would lead away from the
`claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
`
`1550 & 1552 (Fed. Cir. 1983). Thus, if a reference, as a whole, criticizes,
`
`discredits, or otherwise discourages the solution that is the claimed invention, the
`
`reference is deemed to teach away from the claimed invention and cannot be
`properly used to support a prima facie case of obviousness.
`
`33.
`
`I have been informed that claims should be given their “broadest
`
`reasonable interpretation in light of the specification in which it appears” and that
`
`claim terms should be given their plain and ordinary meaning as would be
`
`understood by a person of ordinary skill at the time of the invention (“POSITA”) in
`
`the context of the entire patent disclosure except in instances where the patentee
`
`either sets out his or her own definition, acting as his or her own lexicographer, or
`
`when the patentee disavows the full scope of a claim term either in the
`
`specification or during prosecution. I further understand that the “broadest
`
`reasonable interpretation” standard is different than the standard used in litigation
`
`in courts.
`
`34.
`
`I have also been informed that the prosecution history of one patent is
`
`relevant to an understanding of the scope of a common term in a second patent
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`stemming from the same parent application.
`
`35.
`
`I have been informed that claims can recite elements as a means for
`
`performing a specified function. I have further been informed that to construe a
`
`term that has been recited as such a “means-plus-function” claim element, one
`
`must first identify that function recited by the claim. I have also been informed
`
`that once the recited function has been identified, the claim element is construed to
`
`cover the structure disclosed in the specification of the patent that performs the
`
`recited function.
`
`36.
`
`It is my opinion, based on my experience both working as a design
`
`engineer and managing engineers, that a person of ordinary skill in the art in the
`
`field of the `825 patent would have at least the equivalent of a Bachelor of Science
`
`degree in computer or electrical engineering and 2-4 years of industry experience
`
`in the field of computer peripheral device interfaces and configuration, including
`extensive experience with both USB and PCMCIA interfaces.1 Note that I believe
`PCMCIA experience is necessary because most of the prior art Petitioner is relying
`
`on is directed to PCMCIA, not USB.
`
`VI.
`
``825 PATENT TECHNOLOGY BACKGROUND
`37.
`The `825 patent is directed to an improvement to the Universal Serial
`
`Bus (USB) standard. USB is a widely used industry standard that was developed
`
`1
`
`PCMCIA stands for Personal Computer Memory Card International
`
`Association and is defined by standards. See Exs. 1018, 1019 and 2016, 1:18-25.
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`to create a single standardized peripheral device connection system that provides a
`
`simplified consistent user experience for the connection of computers with
`computer peripherals. Ex. 2001, 1:39-54. 2
`38. Before USB, the many different kinds of peripheral devices that could
`
`connect to a personal computer, such as a printer, modem, keyboard or a mouse,
`
`each had unique electrical characteristics and needed different kinds of connectors
`
`with different kinds of cables to connect with a personal computer. Ex. 2001 at
`
`1:9-28. The different characteristics and connections of the different peripheral
`
`devices required that multiple unique kinds of plugs or “ports” be installed in the
`
`personal computer to allow connection and communication with the personal
`
`computer. Ex. 2001 at 1:16-30. Also, these unique connections often shared the
`
`common drawback of requiring that a personal computer be turned off and then
`
`back on in order to disconnect, connect or update a peripheral device. Ex. 2001 at
`
`1:28-34. Failure to do so could permanently damage the peripheral, the port or the
`
`personal computer itself. Id.
`
`39.
`
`The USB standard solved many (but not all) of these problems. USB
`
`provided for a common cable and connector type, reducing the need for separate
`
`power cords and simplifying connectivity to and communication with peripheral
`
`2
`
`Because the USB Patents share the same specification, for the Board’s
`
`convenience, I have cited to the specification of U.S. Patent No. 6,012,103, Ex.
`
`2001.
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`devices. Ex. 2001 at 1:34-46.
`
`40. USB also addressed the problem of multiple cables, cards and
`
`connector types previously required, which in turn allowed use of a common type
`of port on personal computers for many peripherals. Id.
`
`41. USB also permitted the physical connection and disconnection of
`
`USB-compatible peripheral devices while a computer remains turned on. Ex. 2001
`
`at 1:50-54. This eliminates the old practice of requiring the user to manually turn
`
`off and reboot the computer and peripheral devices in order to disconnect, connect,
`
`or update a peripheral device. Id.
`
`42.
`
`The personal computer to which a USB-capable peripheral may be
`
`connected is known as a “host” or “host computer.” Ex. 2001 at 1:46-48. When a
`
`USB-capable peripheral is first connected to a USB-capable host, software on the
`
`host and peripheral engage in a configuration process known as “enumeration,”
`
`during which the host requests information from the peripheral and the peripheral
`
`provides information that allows the host to identify the peripheral. Ex. 2001 at
`
`1:55-60.
`
`43.
`
`The host uses configuration information received from the USB
`
`peripheral device to identify device driver software to load in its (the host’s)
`
`memory that will permit the host to communicate with the peripheral and allow the
`
`peripheral to communicate with the host. Ex. 2001 at 1:60-66, 2: 3-7.
`
`44.
`
`Prior to the patented invention, at the conclusion of this USB
`
`enumeration process, the association of the peripheral with the host could not be
`
`subsequently changed. Ex. 2001 at 2:3-17. When that peripheral was physically
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`disconnected and a different peripheral with its own configuration information was
`
`then connected to the personal computer, a new enumeration process would begin
`
`for the new peripheral. As part of that subsequent enumeration process, the new
`
`peripheral’s device driver software would be loaded into the memory of the host
`
`computer to allow for connectivity and communication between the host and the
`
`new peripheral. Ex. 2001 at 4:45-49.
`
`45. Although USB provides a number of advantages over standard
`
`peripheral device connection techniques, prior to the patented inventions it did not
`
`provide a means for easily altering the configuration and changing the software
`
`associated with a particular peripheral device on a host computer without
`
`physically disconnecting the device from the host. Ex. 2001 at 2:18-25. The
`
`inventors of the challenged patent recognized that such features would be useful to
`
`allow the peripheral devices and associated software to be updated and features
`
`improved, thus extending the life of the peripheral hardware and improving
`
`functionality. Ex. 2001 at 2:38-43.
`
`46.
`
`The inventions disclosed in the `825 patent are directed to overcoming
`
`these inherent shortcomings and provide a system and method for easily updating
`
`the configuration of peripheral devices over a USB connection. The `825 patent
`
`enables USB peripheral devices to be dynamically modified with new
`
`configurations and new characteristics while allowing host computers to still
`
`communicate with the peripheral devices. Advantageously, this is achieved
`
`without the need for a user to physically disconnect and then reconnect the USB
`
`cable in order to effectuate the change. Ex. 2001 at 2:48-57.
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`47.
`
`In an exemplary embodiment, Figure 2 of the USB Patents illustrates
`
`this improved system and method of USB peripheral device modification. Rather
`
`than the peripheral device (shown as element 54) having fixed configuration data,
`
`the peripheral device is initially configured as a generic device with a generic
`
`configuration. Ex. 2001 at 3:1-6; 5:33-37; 8:35-40. Upon connection of the
`
`peripheral device to the host (element 52) the host will enumerate the device in the
`
`normal way using the generic configuration and the devices will then be able to
`
`communicate. As further shown in Figure 2, once communication is established
`
`the new desired configuration information (element 70) for the peripheral device
`
`that resides in the host computer is subsequently downloaded to the peripheral
`
`device. Ex. 2001 at 3:4-13; 5:37-43; 8:35-40.
`
`48. A new enumeration process (or re-enumeration, Ex. 2001 at 5:43-46)
`
`then occurs in order to effectuate the change of configuration data and may trigger
`
`the use of a different device driver (element 68) in the host with the newly-
`
`configured peripheral. Cypress’s USB Patents teach a system and method that
`
`facilitates re-enumeration without the need to physically disconnect and then
`
`reconnect the USB cable.
`
`49. When a USB-enabled peripheral device is attached to a USB-enabled
`
`host, the peripheral makes available to the host a small voltage (3.3V in this
`
`example) on the USB cable that can be detected by the host. When the host detects
`
`the voltage, the host starts an enumeration with the USB peripheral. Ex, 2001 at
`
`6:14-32. The patent, at Figure 4, describes a software-controllable electronic
`
`switch that is configured in series with a resistor connected to a data line, e.g., D+
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`in Figure 4. The switch (which can include a transistor) is illustrated in Figure 4 as
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`element 130.
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`50. By controlling the off and on status of the switch, the host can be
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`“tricked” into detecting a disconnection and reconnection of the peripheral device
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`(element 120) even though the peripheral device has not actually been physically
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`disconnected and reconnected. Ex. 2001 at 6:65-7:14.
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`51.
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`The control of the switch may be accomplished by software resident
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`on the peripheral device (element 120) but that such control can also originate
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`from software on the host computer such that the peripheral device or the host can
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`control the switch. Ex. 2001 at 6:56-63. This in turn means that re-enumeration
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`of the peripheral device with the new configuration information can be
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`accomplished without additional human interaction, allowing the configuration of
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`the peripheral devices to be changed easily without a physical disconnection and
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`reconnection of the peripheral device. Ex. 2001 at 2:51-67; 3:14-23; 7:14-19.
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`VII. CLAIM CONSTRUCTION
`A.
`“Electronically [Simulate/Simulating] A Physical Disconnection
`And Reconnection Of The Peripheral Device”
`In my opinion, a person having ordinary skill in the art would
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`52.
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`understand that a method or device falls within the scope of the disputed phrase if,
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`as a substitute for the physical act of disconnecting and reconnecting a device, such
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`a physical act is replaced by electronic simulation. This is a simple concept, and
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`thus, in my opinion, no construction is necessary.
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`53.
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`Should the Board determine a construction is necessary, I believe the
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`broadest reasonable construction for this phrase is “electronically mimicking
`physical disconnection and reconnection of the peripheral device.” This
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`construction captures the ordinary meaning and, unlike Petitioner’s construction,
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`neither broadens the construction beyond the ordinary meaning nor introduces
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`extraneous limitations.
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`54.
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`I understand that Petitioner and Mr. Knapen propose the following
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`definition: “using an electronic circuit to perform an action, such as an electronic
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`reset, associated with physical disconnection and reconnection of a peripheral
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`device.” Petition, p. 7. I believe this construction is wrong because use of the
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`word “associated” broadens the plain meaning of the term in a way that
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`substantively changes the phrase’s meaning.
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`55. As I discussed above, the claim language requires simulation of an
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`event, i.e., simulation of a physical disconnection and reconnection. In contrast to
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`the plain meaning of the claimed phrase, Petitioner’s construction encompasses
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`using an electronic circuit to perform any action merely “associated with” the
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`physical disconnection and reconnection.
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`56.
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`In other words, while the claim language requires the act of simulating
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`a physical event, Petitioner’s construction expands the breadth of the claim to any
`act that is in any way “associated with” the simulation. Petitioner’s definition puts
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`no limit on the kinds of actions that are “associated” with the simulated physical
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`disconnection and reconnection other than that they be performed with an
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`electronic circuit.
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`57.
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`That Petitioner’s construction is wrong is seen by the fact that any
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`action described in patent specification might be considered “associated with
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`physical disconnection and reconnection” since the simulation of the disconnection
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`and reconnection is a key aspect of the claimed invention.
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`58.
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`I believe a person having ordinary skill in the art would also find
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`Petitioner’s construction wrong because of its inclusion of an exemplary “action …
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`associated with physical disconnection and reconnection of a peripheral device.”
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`Petitioner’s exemplary action “associated with physical disconnection and
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`reconnection of a peripheral device” is an “electronic reset.” I see nothing in the
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`plain language of the disputed claim phrase that uses an electronic reset. The claim
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`phrase requires simulation of physical connection and reconnection. A reset
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`function is, by its own terms, something else since one can electronically simulate
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`physical disconnection and reconnection without performing a reset.
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`59.
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`In addition, I note that dependent claim 10 recites use of a “reset
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`circuit,” thus demonstrating that a system can simulate physical disconnection and
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`reconnection without performing a reset. Thus, an “electronic reset” reads
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`limitations into the claims, which I understand is never appropriate.
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`60.
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`Finally, nothing in the language of the disputed phrase requires “using
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`an electronic circuit.” All the claim requires is that the action be performed
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`“electronically.” Indeed, claim 1 already recites a “second circuit,” while claim 11
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`is directed to a method. Thus, there is no reason the disputed phrase needs to
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`include reference to an electronic circuit.
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`“Computer Bus”
`B.
`61. A person having ordinary skill in the art would understand that the
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`broadest reasonable construction of the term “computer bus” in view of its use in
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`the specification is “a physical medium of transfer between a host computer and a
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`peripheral device.”
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`62.
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`The term “computer bus[es]” is used only once in the Detailed
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`Description. The term is used to describe a physical medium of transfer between a
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`host computer and a peripheral device:
`[t]he invention is particularly applicable to a universal serial bus
`interface system and method. It is in this context that the invention
`will be described. It will be appreciated, however, that the system and
`method in accordance with the invention has greater utility, such as
`with other different computer buses and standardized interfaces.
`Ex. 2001 at 3:64-4:4 (emphasis added).
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`63.
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`The Detailed Description also refers to a “bus” generally (Ex. 2001 at
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`4:13) in the prior art and illustrates it as a physical
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`medium of transfer between a host computer and a
`peripheral device. See Figure 1 (shown here with a
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`double-sided arrow representing the medium of transfer,
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`which is circled in red for ease of location). Every
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`additional reference to “bus” in the specification
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`similarly uses the term in reference to the medium of transfer between a host
`computer and a peripheral device. See, e.g., “bus” (Ex. 2001 at 1:1-7); “peripheral
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`device bus” (Ex. 2001 at 1:9-12); “serial bus (USB)” Ex. 2001 at 4:55-57; “USB
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`bus” (Ex. 2001 at 7:27-32 and 9:6-11).
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`64.
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`In sum, the broadest reasonable construction of the term “computer
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`bus” in view of its use in the specification is “a physical medium of transfer
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`between a host computer and a peripheral device.”
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`C.
`65.
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`Prosecution History
`In my review of the prosecution history, I have noted that Patent
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`Owner disclaimed coverage of PCMCIA devices during prosecution. Thus, any
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`construction of the challenged claims cannot encompass PCMCIA technology.
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`During the prosecution of the `103 patent, which is the parent of the `825 patent
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`and the subject of IPR2041-01386, the Examiner rejected the pending claims based
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`on U.S. Patent No. 5,687,346 (Ex. 2016, referred to herein as “Shinohara”). See
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`Exhibit 1006 at 56-63, February 16, 1999 Office Action R