UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`CANON INC.; CANON USA, INC.;
`CANON FINANCIAL SERVICES, INC.; FUJIFILM CORPORATION;
`FUJIFILM HOLDINGS AMERICA CORPORATION;
`FUJIFILM NORTH AMERICA CORPORATION; JVC KENWOOD
`CORPORATION; JVCKENWOOD USA CORPORATION;
`NIKON CORPORATION; NIKON INC.; OLYMPUS CORPORATION;
`OLYMPUS AMERICA INC.; PANASONIC CORPORATION;
`PANASONIC CORPORATION OF NORTH AMERICA;
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`
`Case IPR2016-01200
`Patent 8,504,746
`____________________
`
`DECLARATION OF THOMAS A. GAFFORD
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 1
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`CANON INC.; CANON USA, INC.;
`CANON FINANCIAL SERVICES, INC.; FUJIFILM CORPORATION;
`FUJIFILM HOLDINGS AMERICA CORPORATION;
`FUJIFILM NORTH AMERICA CORPORATION; JVC KENWOOD
`CORPORATION; JVCKENWOOD USA CORPORATION;
`NIKON CORPORATION; NIKON INC.; OLYMPUS CORPORATION;
`OLYMPUS AMERICA INC.; PANASONIC CORPORATION;
`PANASONIC CORPORATION OF NORTH AMERICA;
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`
`Case IPR2016-01200
`Patent 8,504,746
`____________________
`
`DECLARATION OF THOMAS A. GAFFORD
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 1
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction .......................................................................................... 1
`I.
`Background And Qualifications ........................................................... 2
`II.
`III. Materials Considered ............................................................................ 7
`IV. Person Of Ordinary Skill In The Art .................................................... 8
`V. Applicable Legal Standards .................................................................. 9
`VI. Overview Of The ’746 Patent ............................................................ 14
`VII. Overview Of Aytac ............................................................................. 16
`VIII. Claim Construction ............................................................................. 27
`IX. The ’746 Patent’s Claims Are Not Obvious Over Aytac In View
`Of The SCSI Specification And Alleged Admitted Prior Art ............ 28
`Conclusion .......................................................................................... 33
`
`X.
`
`
`
`
`
`
`i
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 2
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`
`
`I.
`
`Introduction
`
`I, Thomas A. Gafford, declare as follows:
`
`1.
`
`I have been retained on behalf of Papst Licensing GmbH & Co.
`
`KG (“Papst”), and its counsel, Fitch Even Tabin & Flannery LLP, as an
`
`expert in this proceeding. I am personally knowledgeable about the matters
`
`stated herein and am competent to make this declaration.
`
`2.
`
`I understand that Petitioners filed a Petition for Inter Partes
`
`Review regarding certain claims of United States Patent No. 8,504,746 (“the
`
`’746 patent”), which was accompanied by the Declaration of Paul F.
`
`Reynolds, Ph.D. I am aware that, after Papst submitted its Preliminary
`
`Response, the Patent Trial & Appeal Board (“Board”) issued a Decision on
`
`December 15, 2016 instituting trial as to claims 1, 6, 15, 17, 18, 31, and 34. I
`
`understand that the trial will address issues of alleged unpatentability under
`
`35 U.S.C. § 103(a) over U.S. Patent No. 5,758,081 to Aytac (Ex. 1004) in
`
`combination with the American National Standard for Information Systems,
`
`Small Computer System Interface-2, ANSI X3.131-1994 (1994) (“SCSI
`
`Specification”) (Ex. 1005) and alleged Admitted Prior Art. I understand that
`
`the Decision did not institute trial on any other grounds asserted in the
`
`Petition.
`
`1
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`
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`3.
`
`I have been asked to provide my conclusions and bases thereof
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`regarding several aspects of the issues in dispute. Based on my investigation
`
`in this matter, I conclude that Petitioners and Dr. Reynolds have not shown
`
`that the challenged claims of the ’746 patent are unpatentable over Aytac in
`
`combination with the SCSI Specification and the alleged admitted prior art.
`
`4.
`
`I receive compensation at my standard hourly rate of $550 per
`
`hour for my time working on this matter, plus expenses. I have no financial
`
`interest in Papst or in the ’746 patent, and my compensation is not dependent
`
`on the outcome of this trial or any of the related district court proceedings
`
`involving the ’746 patent. The conclusions I present are due to my own
`
`judgment.
`
`II. Background And Qualifications
`
`5. My qualifications as an expert in the field of computer
`
`peripherals and data transfer between a computer and peripheral devices,
`
`relevant to the subject matter of the analog data generating and processing
`
`devices (“ADGPD”) claimed in the ’746 patent, are provided in the
`
`paragraphs below. A copy of my latest curriculum vitae (CV) is attached as
`
`Appendix A, which provides further details regarding my background and
`
`qualifications. This CV identifies a list of all cases in which I have testified at
`
`trial or at deposition.
`
`2
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`6.
`
`I have over forty years of experience with electronics and
`
`electrical engineering, including extensive knowledge and experience with
`
`analog and digital electronic circuitry, digital computer technology, computer
`
`peripherals, control systems, digital communications, operating systems, and
`
`related software and hardware components. My technical expertise relevant
`
`to the subject matter of the ADGPD claimed in the ’746 patent includes my
`
`understanding of computer peripherals, analog and digital circuitry, interface
`
`devices, device drivers, file systems, SCSI standards, data buses, and
`
`operating systems.
`
`7.
`
`As a summary of my employment and education history, I
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`worked as a Sergeant and Instructor for the United States Air Force as a
`
`maintenance technician for air defense computer systems from 1967-1970.
`
`After leaving the Air Force, I earned my Bachelor of Science in Electrical
`
`Engineering in 1972 from the University of Washington. After graduating, I
`
`was a candidate for a Master of Science degree in Electrical Engineering at
`
`Stanford University from 1972–1973, and I worked from 1973–1976 as an
`
`Engineer at Stanford University’s Artificial Intelligence Laboratory. My
`
`duties included the design, construction, and debugging of motor controls and
`
`sensor electronics for robotics and computer interfaces.
`
`8.
`
`After leaving Stanford, I founded G Systems in 1976 which
`
`3
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 5
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`
`
`managed the hardware and software design and development of computer
`
`transaction processing systems for a variety of applications and customers.
`
`Projects included writing communications software and device drivers, design
`
`of hardware and software interfaces for disk controllers, designing peripheral
`
`switches incorporated into system products, communications controllers, co-
`
`design of mainframe computers, and other projects.
`
`9.
`
`In 1983 I co-founded and served as head of engineering of Softix
`
`Incorporated. Softix designed and produced systems to control and sell
`
`entertainment tickets by ticket agencies and large arenas in the United States,
`
`Canada, Australia, and Hong Kong. My duties at Softix included managing
`
`software development efforts; developing architecture, design, sales,
`
`contracting, production, and field support of large-scale software and
`
`hardware systems; analyzing, debugging and writing software application and
`
`driver programs for feature enhancements and system integration. I was also
`
`responsible for selecting, evaluating, integrating, and training customer staff
`
`and repair support for all hardware components of minicomputer systems;
`
`developing peripheral switch equipment for evolving system requirements;
`
`and manufacturing and selling peripheral switching equipment. In 1986 I
`
`founded Gafford Technology. 1988–89, I and a colleague at Gafford
`
`Technology designed a switch and repeater for the SCSI bus which required
`
`4
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 6
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`
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`intimate knowledge of the bus protocol and general familiarity with the bus
`
`commands and device interface design. I applied for, received, and
`
`successfully licensed four patents covering this work.
`
`10.
`
`I currently own and operate the consulting firm of Gafford
`
`Technology. The firm provides computer system-related services and offers
`
`analysis and presentation services to assist clients in litigation efforts. Specific
`
`services include consulting in computer system design, software selection,
`
`and network configuration and providing expert factual analysis, claim
`
`interpretation assistance, prior art investigation and testimony in patent and
`
`hardware / software systems litigation.
`
`11.
`
`I am generally familiar with the analysis of patents. I am the
`
`inventor of the following U.S. patents:
`
` Switch for Distributed Arbitration Digital Data Buses, United
`
`States Patent No. 5,621,899, issued April 15, 1997;
`
` Method for Operating a Repeater for Distributed Arbitration
`
`Digital Data Buses, United States Patent No. 5,684,966, issued
`
`November 4, 1997;
`
` Repeater/Switch for Distributed Arbitration Digital Data Buses,
`
`United States Patent No. 5,758,109, issued May 26, 1998; and
`
` Repeater/Switch for Distributed Arbitration Digital Data Buses,
`
`5
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 7
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`
`
`United States Patent No. 6,154,799, issued November 28, 2000.
`
`These patents relate to digital data buses used for communicating
`
`signals between different functional components of digital
`
`computers.
`
`12. Each of the patents listed above are directed to a repeater switch
`
`and related systems and methods for distributed arbitration digital data buses,
`
`and particularly applicable to a SCSI bus that I developed in the late 80s. The
`
`repeater permits many devices to be placed near each other at the end of a
`
`SCSI cable without signal quality problems, and the switch permits sharing a
`
`device among several computers. Relevant to the Tasler patent, both provide
`
`their features in a way that is transparent to the standard SCSI communications
`
`protocol and commands passed between initiator computers and target
`
`peripherals connected to the SCSI bus. All commands, including the common
`
`READ, WRITE, TEST UNIT READY, MODE SENSE, and FORMAT
`
`DEVICE were supported. Target behavior was supported
`
`including
`
`disconnect/reconnect pass through my switch and repeater as though the
`
`switch or repeater was not present. Through this work and my work in
`
`connection with other projects, I am very familiar with SCSI.
`
`13. The opinions expressed in this declaration are mine and they
`
`were developed after studying the ’746 patent, relevant portions of the
`
`6
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 8
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`
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`prosecution history, relevant prior art publications, the Petition, the Institution
`
`Decision, and the declaration of Dr. Reynolds. (Ex. 1001.)
`
`14. The ’746 patent concerns data acquisition systems for generating
`
`analog data, processing, storing, and transferring the acquired data to a host
`
`computer without requiring a user to install any drivers or specialized software
`
`on the host computer. I recognize this technology as being well within the
`
`sphere of my experience and expertise, and I understand the technology
`
`described in the ’746 patent fully. I believe my experience and education in
`
`this industry qualifies me to explain this technology and to address the issues
`
`of patent validity from the perspective of a person of ordinary skill in the art.
`
`I am qualified to submit expert analyses in this proceeding.
`
`III. Materials Considered
`15.
`I have reviewed and considered the following documents:
`
` U.S. Patent No. 8,504,746 to Tasler (“the ’746 patent”) (Ex.
`
`1003);
`
` U.S. Patent No. 5,758,081 to Aytac. (“Aytac”) (Ex. 1004);
`
` American National Standard for Information Systems, Small
`
`Computer System Interface-2, ANSI X3.131-1994 (1994)
`
`(“SCSI Specification”) (Ex. 1005);
`
` Prosecution History of Aytac (Ex. 1006);
`
`7
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 9
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`
` The prosecution history file for the ’746 patent;
`
` The Petition for Inter Partes Review of the ’746 patent (Paper 1),
`
`including the exhibits cited therein;
`
` Declaration of Dr. Paul F. Reynolds, Ph.D. (Ex. 1001);
`
` Decision – Granting Institution of Inter Partes Review in
`
`IPR2016-01199 (Paper 8); and
`
` The additional background materials mentioned below in this
`
`declaration.
`
`16. Naturally, my review of these materials was informed by my
`
`education, my experience in and knowledge of industry, and my work as both
`
`as an engineer and a consultant.
`
`IV. Person Of Ordinary Skill In The Art
`
`17.
`
`I have been asked to address the issues raised in the Petition
`
`from the perspective of a person of ordinary skill in the field of the ’746
`
`patent (“POSITA”). As stated in the ’746 patent, the field of the invention
`
`relates to “the transfer of data and in particular to interface devices for
`
`communication between a computer or host device and a data transmit/receive
`
`device from which data is to be acquired or with which two-way
`
`communication is to take place.” (See Ex. 1003 at 1:20–24.) A POSITA would
`
`have at least a bachelor’s degree in a related field such as computer engineering
`
`8
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`
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`or electrical engineering and at least three years of experience in the design,
`
`development, and/or testing of hardware and software components involved
`
`with data transfer or in embedded devices and their interfaces with host
`
`systems. Alternatively, a POSITA may have five or more years of experience
`
`in these technologies, without a bachelor’s degree. I consider myself to have
`
`at least the credentials of a person of ordinary skill in the art, and I am
`
`capable of addressing the issues from the perspective of such a person. As
`
`a result of my education, academic experience, and industrial experience, I am
`
`familiar with interface device and peripheral technology and also with the
`
`state of that technology in March of 1997, when the first application to which
`
`the ’746 patent claims priority was first filed.
`
`V. Applicable Legal Standards
`
`18. As a technical expert, I am not offering any legal opinions.
`
`Rather I am offering technical assessments and opinions. In rendering my
`
`analysis, I have been informed by counsel regarding various legal standards
`
`for determining patentability. I have applied those standards informing my
`
`technical opinions expressed in this report.
`
`19.
`
`The patent claims describe the invention made by the inventor
`
`and describe what the patent owner owns and what the owner may prevent
`
`others from doing. I understand that an independent claim sets forth all the
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`9
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`
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`requirements that must be met in order to be covered by that claim. I further
`
`understand that a dependent claim does not itself recite all of the requirements
`
`of the claim but refers to another claim and incorporates all of the
`
`requirements of the claim to which it refers.
`
`20.
`
`It is my understanding that a claimed invention is unpatentable if
`
`the differences between the invention and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made
`
`to a person having ordinary skill in the art to which the subject matter pertains.
`
`Obviousness, as I understand it, is based on the scope and content of the prior
`
`art, the differences between the prior art and the claim, and the level of
`
`ordinary skill in the art.
`
`21.
`
`I understand that when evaluating obviousness, one must not
`
`consider whether the claimed invention would have been obvious to a layman
`
`or to an expert; not use hindsight when comparing the prior art to the claimed
`
`invention; not consider what was learned from the teachings of the patent; or
`
`use the patent as a road map for selecting and combining items of prior art. In
`
`other words, one should avoid using the challenged patent as a guide through
`
`the maze of prior art references, combining the right references in the right
`
`way so as to achieve the result of the claims at issue. Instead, one must put
`
`oneself in the place of a person of ordinary skill at the time the invention was
`
`10
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 12
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`
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`made and consider only what was known before the invention was made and
`
`not consider what is known today.
`
`22.
`
`I understand that obviousness should be considered in light of the
`
`problem facing the inventor and the complexity of the alternatives for solving
`
`the problem. That individual elements of the claimed invention are disclosed
`
`in the prior art is not alone sufficient to reach a conclusion of obviousness.
`
`23.
`
`I also understand that when considering the obviousness of a
`
`patent claim, one should consider whether a teaching, suggestion or
`
`motivation to combine the references exists so as to avoid impermissibly
`
`applying hindsight when considering the prior art. I understand that a previous
`
`approach to the motivation to combine required a teaching, suggestion, or
`
`motivation to be found explicitly or implicitly: (1) in the prior art; (2) in the
`
`knowledge of those of ordinary skill in the art; or (3) from the nature of the
`
`problem to be solved. However, I understand that a more expansive and
`
`flexible approach is now used when determining obviousness and the
`
`motivation to combine references. I understand that the legal determination of
`
`the motivation to combine references allows recourse to logic, judgment, and
`
`common sense, but that any such motivation to combine references must still
`
`avoid the improper application of hindsight or reliance on the patentee’s
`
`11
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`disclosure of his invention as found in the patent specification, drawings, and
`
`claims.
`
`24.
`
`I understand that if the teachings of a prior art reference would
`
`lead one skilled in the art to make a modification that would render that prior
`
`art device, system, or method inoperable, then such a modification would
`
`generally not be obvious. I also understand that if a proposed modification
`
`would render the prior art device, system, or method unsatisfactory for its
`
`intended purpose, then there is strong evidence that no suggestion or
`
`motivation existed at the time of the subject invention to make the proposed
`
`modification.
`
`25.
`
`I understand that it is improper to combine references where the
`
`references teach away from their combination. I understand that a reference
`
`may be said to teach away when a person of ordinary skill, upon reading the
`
`reference, would be discouraged from following the path set out in the
`
`reference, or would be led in a direction divergent from the path that was taken
`
`by the applicant. It is also my understanding that the degree of teaching away
`
`will depend on the particular facts; in general, a reference will teach away if
`
`it suggests that the line of development flowing from the reference’s
`
`disclosure is unlikely to be productive of the result sought by the applicant. I
`
`understand that a reference teaches away, for example, if (1) the combination
`
`12
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`would produce a seemingly inoperative device, or (2) the references leave the
`
`impression that the product would not have the property sought by the
`
`applicant or would no longer achieve the intended purpose(s) of the references
`
`being modified or combined.
`
`26.
`
`I understand that the first step in determining either validity or
`
`infringement is to properly construe the claims. The Board’s Decision
`
`addressed the meanings of certain claim limitations. I am advised that the
`
`claims are construed in an IPR proceeding using their broadest reasonable
`
`construction in light of the specification of the patent in which they appear. I
`
`understand that, under this standard, claim terms 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. The claim language should be read in
`
`light of the specification as it would be interpreted by one of ordinary skill in
`
`the art. I am further advised that the broadest reasonable meaning given to
`
`claim language should take into account any definitions presented in the
`
`specification. I understand that any special definitions for claim terms must
`
`be set forth with reasonable clarity, deliberateness, and precision.
`
`27. My opinions regarding the broadest reasonable meaning that a
`
`person of ordinary skill in the art would give to certain disputed claim terms
`
`are also addressed below.
`
`13
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`
`VI. Overview Of The ’746 Patent
`28. The ’746 patent is the result of breakthrough work by inventor
`
`Michael Tasler. Mr. Tasler created a unique method for achieving high data
`
`transfer rates for data acquisition systems (e.g., imaging data, measurement
`
`data)) to a general-purpose computer, without requiring a user to purchase,
`
`install, and/or run specialized software for each system. (Ex. 1003 at 3:32–
`
`36.) At the time of the invention, there were an increasing number and variety
`
`of data acquisition systems with the ability to capture high volumes of
`
`information. (Id. at 1:44–55.) As such, there was an increasing demand to
`
`transfer that information to commercially-available, general purpose
`
`computers. (Id. at 1:31–43.) But at that time, performing that data transfer
`
`operation required either loading specialized, sophisticated software onto a
`
`general purpose computer, which increases the risk of error and the level of
`
`complexity for the operator, or specifically matching interface devices for a
`
`data acquisition system to a host system that may maximize data transfer rates
`
`but lacks the flexibility to operate with different devices. (Id. at 1:26–3:24.)
`
`29. Mr. Tasler recognized that the existing options were wasteful and
`
`inefficient and sought a solution that would achieve high data transfer rates,
`
`without specialized software, while being sufficiently flexible to operate
`
`independent of device or host manufacturers. (Id. at 2:22–41, 3:28–31.) The
`
`14
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`resulting invention would allow a data acquisition system to identify itself as
`
`a type of common device so as to leverage the inherent capabilities of general-
`
`purpose, commercially-available computers. (Id. at 4:13–27.) Accordingly,
`
`by using Mr. Tasler’s invention, users could avoid loading device-specific
`
`software; improve data transfer efficiency; save time, processing power, and
`
`memory space; and avoid the waste associated with purchasing specialized
`
`computers or loading specific software for each device. (Id. at 3:28–45, 7:32–
`
`65, 8:29–36, 9:16–20, 11:29–46.) The ’746 patent claims variations of this
`
`concept and provides a crucial, yet seemingly simple, method and apparatus
`
`for a high data rate, device-independent information transfer. (Id. at 3:28–
`
`31.)
`
`30. Tasler discloses that his interface device could leverage “drivers
`
`for input/output device[s] customary in a host device which reside in the BIOS
`
`system of the host device.” (Id. at 10:16–17; see also id. at 4:20–24 (“The
`
`interface device according to the present invention therefore no longer
`
`communicates with the host device or computer by means of a specially
`
`designed driver but the means of a program which is present in the BIOS
`
`system . . .”); 5:13–20 (describing the use of “usual BIOS routines” to issue
`
`INQUIRY instructions to the interface); 7:51–58 (describing use of BIOS
`
`routines).) Similarly, the written description describes also using drivers
`
`15
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`included in the operating system. (See, e.g., id. at 5:8–11 (“Communication
`
`between the host system or host device and the interface device is based on
`
`known standard access commands as supported by all known operating
`
`systems (e.g., DOS, Windows, Unix).”).) Alternatively, if the required
`
`specific driver or drivers for a multi-purpose interface (such as a SCSI
`
`interface) are already present in a host device, such drivers could be used with
`
`Tasler’s interface device instead of, or in addition to customary drivers which
`
`reside in the BIOS. (Id. at 10:14–20.) Accordingly, Tasler contemplated a
`
`universal interface device that could operate independent of the manufacturer
`
`of the computer. (See id. at 11:29–46.) Indeed, the preferred embodiment
`
`discloses that the interface device includes three different connectors, a 50 pin
`
`SCSI connector 1240, a 25 pin D-shell connector 1280, and a 25 pin connector
`
`1282, to allow Tasler’s interface device to connect to a variety of different
`
`standard interfaces that could be present in a host computer. (Id. at 8:37–54,
`
`FIG. 2.) A POSITA would understand this to mean that OS-provided file
`
`operations, common to the operating systems he mentions and to practically
`
`any other disk-based OS, for reading and writing could be used to access the
`
`device.
`
`VII. Overview Of Aytac
`
`31. The title of the Aytac patent is “Computing and communications
`
`16
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 18
`
`
`
`transmitting, receiving system, with a push button interface, that is
`
`continuously on, that pairs up with a personal computer and carries out mainly
`
`communications related routine tasks.” (Ex. 1004.) As the title suggests,
`
`Aytac generally relates to a telecommunications apparatus or “Personal
`
`Communicator” in the form of an embedded computer called “CaTbox” (so
`
`named because
`
`the device “sits between a Computing and a
`
`Telecommunications apparatus”). (Id. at 4:8–20.) Aytac discloses the
`
`disadvantages associated with trying to integrate telephones, answering
`
`machines, fax machines, and the like with a PC, including the fact that a PC
`
`is not always on and is not push button driven. (Id. at 3:52–60.) Accordingly,
`
`Aytac’s CaTbox
`
`provides
`
`a
`
`simplified
`
`computer
`
`to
`
`handle
`
`telecommunications tasks and free up resources and external interfaces of the
`
`PC. (Id. at 5:28–35.)
`
`32. Aytac discloses that the CaTbox may be connected to a SCSI
`
`interface of a PC via a cable. Aytac states that “CaTbox would look like a hard
`
`disk to the PC” and particularly a SCSI disk. (Id. at 4:49–51.) Aytac further
`
`explains that the CaTbox actually appears to the host as a plurality of devices.
`
`As “[v]iewed from the host PC, CaTbox looks like a. a SCSI hard disk
`
`(CaTdisc) b. a print server c. a remote data/voice/fax modem(s) (CaTmodem)
`
`d. a remote fax device(s) implementing the CAS protocol.” (Id. at 8:1–6.)
`
`17
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 19
`
`
`
`33. This suggests that rather than the CaTbox itself appearing to be
`
`a single hard disk, the CaTbox’s hard disk appears to the PC as a SCSI hard
`
`disk, and at the same time, the CaTbox also appears to be at least three other
`
`separate devices: a separate print server, modem, and a remote fax device.
`
`Other portions of Aytac’s specification are consistent on this point. (See id. at
`
`5:42–45 (“These files would be transferred to a special directory on the
`
`CaTdisc (the term we use to emphasize that CaTbox has a hard disk that
`
`looks like a SCSI disk to the PC).”) (emphasis added), 6:20–21, 10:28–30.)
`
`The preferred embodiment of CaTbox uses an IDE hard disk for data storage,
`
`but Aytac notes that a SCSI disk could be used instead. (Id. at 6:16–31.)
`
`Accordingly, Aytac does not suggest that the CaTbox itself in all cases
`
`emulates a SCSI hard drive, rather that CaTbox emulates a SCSI drive when
`
`its internal hard drive is implemented as an IDE drive.
`
`34. Aytac discloses that:
`
`As a standalone unit, CaTbox implements the following
`functions:
`a. print files found in a spool directory and pointed to in a queue
`b. receive faxes and print them or store them on CaTdisc
`c. send faxes driven by keypad
`d. receive voice mail and store them on CaTdisc
`e. play voice mail back driven by keypad
`f. copy from scanner to printer
`
`18
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 20
`
`
`
`g. other functions that may be programmed such as email
`retrieval, faxback and data modem based TCP/IP/PPP node, dial
`a phone number.
`(Id. at 8:7–19.)
`
`35. To achieve these functions, CaTbox will be accessing its local
`
`“CaTdisc” nearly every time it performs one of these functions. Thus to act as
`
`the multitasking device that Aytac intended, the CaTbox necessarily will be
`
`repeatedly accessing its CaTdisc. To adequately manage the frequent
`
`accessing of the CaTdisc by the CaTbox and the host PC, Aytac discloses that
`
`a number of specialized software drivers and programs are needed for both
`
`the host PC and the CaTbox, as shown in Figure 5 below and described
`
`starting at 10:52 of Aytac.
`
`19
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 21
`
`
`
`
`
`36.
`
`In particular, the PC runs Windows 95 as its operating system
`
`and includes a number of additional programs needed to work properly with
`
`CaTbox, including ASPIDISK.SYS, ASPI2DOS.SYS, CATSYNC.VXD,
`
`WINFAXPRO, CATCAS.EXE, and CATSER.VXD. (Id. at 10:52–66.)
`
`37. Each of CATSYNC.VXD, CATCAS.EXE, and CATSER.VXD
`
`are specialized software and drivers specifically created for operation of the
`
`CaTbox. (Id. at 10:52–11:64.) These drivers would have to be loaded by an
`
`end user because they are specific to the CaTbox and were developed by the
`
`inventor Aytac and were not customary drivers that were typically present on
`
`most computers at the time of the invention of the ’746 patent. For example,
`
`20
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 22
`
`
`
`CATSYNC.VXD is a program written by the inventor of the Aytac patent and
`
`is included in the source code submitted with the Aytac patent application.
`
`(See, e.g., Ex. 1006 at 77, 502.)
`
`38. According
`
`to Aytac, CATSYNC.VXD “implements
`
`the
`
`synchronization between the operating system of PC 101 and that of CaTbox
`
`102 that access the same CaTdisc 301.” (Id. at 10:60–63.) Aytac discloses that
`
`CATCAS.EXE implements the remote CAS modem function (id. at 11:6–37),
`
`and CATSER.VXD is a virtual device driver program that “implements the
`
`remote modem (CaTmodem) function.” (Id. at 11:38–40.) Accordingly, Aytac
`
`teaches that each of these specific programs are needed to be installed on the
`
`host PC for the CaTbox to operate.
`
`39. Aytac
`
`specifically discloses
`
`that
`
`“[i]n
`
`tandem with
`
`[ASPIDISK.SYS], a virtual device driver called CATSYNC.VXD 523
`
`implements the synchronization between the operating system of PC 101 and
`
`that of CaTbox 102 that access the same CaTdisc 301.” (Id. at 10:58–63.)
`
`Aytac further discloses that CATSYNC.VXD is directly involved in every file
`
`transfer from the CaTbox to the host computer:
`
`CATSYNC.VXD 523 hooks the File I/O calls from the PC
`operating system (in this case Windows 95 520) and replaces the
`original call with the following:
`if File I/O for CaTdisc
`
`21
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2006, p. 23
`
`
`
`notify CaTdisc of beginning of File I/O receive
`acknowledgment
`flush File I/O caches for CaTdisc
`make the intended File I/O call (LUN=0)
`notify CaTdisc of end of File I/O
`(Ex. 1004 at 10:67–11:5). A POSITA understands that “hooks” means that the
`
`call for File I/O service is first processed by the CATSYNC software, and then
`
`by Windows.
`
`40.
`
`In the below table, I include explanation of each step of the
`
`CATSYNC.VXD pseudo-code:
`
`Disclosure at 10:67-11:5
`
`If File I/ O for CaTdisc
`
`notify CaTdisc of beginning of
`File I/O
`
` receive acknowledgment
`
`flush File I/O caches for
`
`22
`
`Explanation of program
`
`steps
`
`The host computer OS tests
`to see if the request is for a
`CaTdisc file
`If so, the host computer
`notifies the CaTdisc that file I/O is
`beginning. This is part of the
`synchronization process, in which
`the CaTbox ceases to modify any
`of its files and once ceased, sends
`the acknowledgement shown in
`the next step.
`When the OS receives
`acknowledgement from
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