UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Canon Inc., et al.,
`Petitioners
`
`v.
`
`
`
`Papst Licensing GMBH & CO. KG,
`Patent Owner
`
`Case No: IPR2016-01211
`U.S. Patent No. 8,504,746
`
`
`PETITIONERS’ REPLY TO PATENT OWNER RESPONSE
`OF MARCH 15, 2017
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
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`
`Page
`
`
`V.
`
`Introduction ..................................................................................................... 1
`I.
`II. Kawaguchi In View Of Matsumoto Discloses Three Teachings That
`Would Have Motivated A POSITA To Use A File System ........................... 3
`A. Kawaguchi’s Disclosure Of A Hard Disk Suggests Using A File
`System .................................................................................................. 3
`B. Kawaguchi’s SDC Details Further Suggest Use Of A File
`System .................................................................................................. 6
`C. Matsumoto Discloses Off-Host Storage Of Digitized Analog
`Data In A File System That Would Have Further Motivated A
`POSITA To Use A File System In Kawaguchi .................................... 9
`III. Patent Owner’s Kawaguchi Interpretation Is Not The Way One Of
`Ordinary Skill In The Art Would Have Read Kawaguchi ........................... 11
`IV. Patent Owner’s Complaints About A Kawaguchi System That Uses A
`File System Are Unfounded ......................................................................... 14
`A. Kawaguchi’s File System Does Not Result In A Conflict ................. 14
`B.
`Patent Owner’s Argument Regarding Loss Of Operating Speed
`Ignores The Primary Advantage Of Kawaguchi ................................ 15
`C. Kawaguchi Teaches Communicating With Peripherals Via A
`SCSI Interface .................................................................................... 17
`Patent Owner’s Other Arguments Regarding The Independent Claims
`Are Also Unpersuasive ................................................................................. 18
`A.
`The Combination Of Kawaguchi And Matsumoto Includes A
`Processor That Implements A Data Generation Process ................... 18
`The Kawaguchi-Matsumoto Combination Includes The
`Processor Transferring At Least One File .......................................... 20
`The Proposed Combination Does Not Require Loading Of Any
`File Transfer Enabling Software ........................................................ 21
`Patent Owner’s Arguments Regarding Independent Claims 31
`And 34 Are Substantively Identical To Those Made For Claim
`1 .......................................................................................................... 21
`VI. Patent Owner’s Dependent Claim Arguments Are Also Insufficient .......... 22
`
`B.
`
`C.
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`D.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
`
`Claim 2 ............................................................................................... 22
`A.
`Claims 7 and 26 .................................................................................. 24
`B.
`Claim 10 ............................................................................................. 25
`C.
`Claim 19 ............................................................................................. 27
`D.
`Claim 35 ............................................................................................. 28
`E.
`VII. Conclusion .................................................................................................... 29
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`-ii-
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`TABLE OF AUTHORITIES
`
`
`Page
`
`
`CASES
`
`Alarm.com Inc. v. Vivint, Inc.,
`IPR2015-01965, Final Written Decision, Paper 36 (PTAB, Mar.
`29, 2017) ............................................................................................................... 4
`
`In re Preda,
`401 F.2d 825, 159 USPQ 342 (CCPA 1968) .................................................... 3, 4
`
`Plas-Pak Indus. v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) .................................................................. 17
`
`Unified Patents Inc. v. Convergent Media Solutions, LLC,
`IPR2016-00047, Final Written Decision, Paper 23 (PTAB, Mar.
`29, 2017) ............................................................................................................. 17
`
`OTHER AUTHORITIES
`
`MPEP § 2112 ............................................................................................................. 4
`
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`-i-
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`I.
`
`Introduction
`
`Kawaguchi and the ’746 patent address the same problem in nearly an
`
`identical manner. Both disclose an interface device having a data processor (red)
`
`and memory (blue) that connects peripheral devices of dissimilar types, via a
`
`connecting device (yellow), to a host system through a connecting device such as a
`
`SCSI interface (green). See Ex. 1201, ’746 Patent, 1:63-2:5; Ex. 1207, Kawaguchi,
`
`3:25-29.
`
`’746 Patent Fig. 1
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`-1-
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`Kawaguchi Fig. 1
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`
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`Kawaguchi was published over five years before the ’746 patent’s earliest priority
`
`date. Consequently, the ’746 patent is unpatentable.
`
`
`
`In its Patent Owner Response (the “Response”), Patent Owner asserts only
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`one primary difference between Kawaguchi’s disclosure and the challenged claims
`
`of the ’746 patent:1 that Kawaguchi allegedly fails to disclose that its “processed
`
`and digitized analog data is stored in a file system of the data storage memory as at
`
`
`1 Petitioners and Patent Owner agree with the claim constructions as set out in the
`
`Institution Decision. See Response, 13.
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`-2-
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`least one file of digitized analog data.” Response, 3, 19-35. Patent Owner presents
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`an artificial, undisclosed, Kawaguchi implementation that would not utilize a file
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`system. Patent Owner then argues that a person of ordinary skill in the art (a
`
`“POSITA”) would not have been inclined to augment that strawman configuration.
`
`
`
`The Petition provides evidence in the prior art of multiple suggestions to a
`
`POSITA to implement Kawaguchi’s device with a file system. Patent Owner’s one,
`
`flawed, file-system-less design argument does not negate the substantial teachings in
`
`the prior art to the contrary. Because a POSITA would have been motivated to use a
`
`file system with Kawaguchi’s system, the claims of the ’746 patent are obvious and
`
`unpatentable.
`
`II. Kawaguchi In View Of Matsumoto Discloses Three Teachings That
`Would Have Motivated A POSITA To Use A File System
`
`
`
`The Petition identifies three reasons why a POSITA would have been
`
`motivated to use a file system in the SCSI device converter (SDC) of Kawaguchi.
`
`Each of these reasons alone provides a sufficient basis for finding the claims
`
`obvious, and their cumulative effect leaves no doubt of this result.
`
`A. Kawaguchi’s Disclosure Of A Hard Disk Suggests Using A File
`System
`
`
`
`Kawaguchi, itself, implies the use of a file system. “[I]n considering the
`
`disclosure of a reference, it is proper to take into account not only specific
`
`teachings of the reference but also the inferences which one skilled in the art would
`
`
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`-3-
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`reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159
`
`USPQ 342, 344 (CCPA 1968); Alarm.com Inc. v. Vivint, Inc., IPR2015-01965,
`
`Final Written Decision, Paper 36 at 23 (PTAB, Mar. 29, 2017). “The express,
`
`implicit, and inherent disclosures of a prior art reference may be relied upon in the
`
`rejection of claims under 35 U.S.C. 102 or 103.” MPEP § 2112.
`
`In Kawaguchi, the SDC presents the data reading unit 12 to the engineering
`
`workstation (EWS) as a hard disk. Petition, 20-21; Ex. 1204, ¶ 48, citing Ex. 1207
`
`page 6 (“[T]he EWS(1) can identify, in appearance, the data writing unit (11), the
`
`data reading unit (12), the control data writing unit (13), and the interrupt data
`
`reading unit (14) as four hard disk devices. In other words, the EWS (1) writes or
`
`reads data to each writing unit or from each reading unit using the same method as
`
`that for four hard disks.”) Kawaguchi unvaryingly describes units 11-14 as
`
`emulated hard disks on a microcomputer. See Ex. 1207, 7:7-9; and 5:8-15.
`
`At the earliest priority date of the Tasler patent, it was well known and
`
`customary for hard disks in microcomputers to use a file system. Ex. 1215, ¶ 2. The
`
`MS-DOS Encyclopedia (1988) describes this basic fact in Exhibit 1204C (Appendix
`
`3 to the Reynolds Declaration):
`
` Page 30: The hierarchical file system was standard on all hard disks
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`accessible by MS-DOS starting with MS-DOS 2.0.
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`-4-
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` Page 51: “A traditional microcomputer operating system is built on top
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`of a ROM monitor, or BIOS (basic input/output system) and provides
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`additional features such as a file system and logical access to
`
`peripherals.”
`
` Page 54: “The file system is one of the largest portions of an operating
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`system. A file system is built on the storage medium of a block device
`
`(usually a floppy disk or a fixed disk) by mapping a directory structure
`
`and files onto the physical unit of storage. A file system on a disk
`
`contains, at a minimum, allocation information, a directory, and space
`
`for files.”
`
`See also, Ex. 1204C, 85, 93. Patent Owner’s proffered expert, Mr. Gafford, further
`
`confirmed that, at the earliest priority date of the patent, a “conventional,” hard disk
`
`included a “file allocation table,” and that “the presence on a hard disk of the file
`
`allocation table… is indicative that the hard drive has a file system.” Ex. 1216,
`
`Gafford Deposition Transcript, 62:19-23; 63:15-18.
`
`
`
`In describing an interface device that emulates a hard drive, Kawaguchi
`
`suggests to a POSITA that the disclosed hard drive is a “traditional” or
`
`“conventional” hard drive. A POSITA reading Kawaguchi would have understood
`
`that Kawaguchi’s data reading unit 12 “operat[ing] in a manner emulating the hard
`
`disk” would utilize a file system -- because a POSITA knew that a hard disk
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`
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`-5-
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`
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`included a file system by default. Ex. 1204, ¶¶ 113-114; Ex. 1215, ¶ 2. Thus, a
`
`POSITA would have understood Kawaguchi to have been using the default
`
`understanding of hard disk, which includes a file system, in the Kawaguchi
`
`interface device. Petition, 19-22; Ex. 1204, ¶¶ 48; 108-118; 131-134; Ex. 1215, ¶
`
`2; Ex. 2011, Reynolds Deposition Transcript, 118:24-119:11.
`
`B. Kawaguchi’s SDC Details Further Suggest Use Of A File System
`As discussed by Petitioners’ expert, Dr. Reynolds, Kawaguchi suggests use
`
`
`
`of a RAM drive by describing a system that uses “a microcomputer, ROM and
`
`RAM” to emulate a hard disk. See Ex. 1204, ¶ 113 (discussing Kawaguchi
`
`disclosure at 5:8-15 and 7:7-10).
`
` Dr. Reynolds outlined a POSITA’s
`
`understanding of RAM drives in paragraphs 113-115 and 131-136 of his opening
`
`declaration, Exhibit 1204. Dr. Reynolds further testified as to why it would have
`
`been obvious to a POSITA to utilize a file system on Kawaguchi’s hard disk-
`
`emulating reading unit 12 based on the disclosure of Kawaguchi and a POSITA’s
`
`knowledge of RAM drives. Ex. 1204, ¶¶ 113-115, 131-136; see also Petition, 20-
`
`21.
`
`
`
`Patent Owner contends that a POSITA would not have used a file system,
`
`but the MS-DOS Encyclopedia supports and corroborates Dr. Reynolds’ original
`
`testimony. For example, the Encyclopedia notes that a RAM drive “can be
`
`installed in conventional memory by simply inserting” a line “into the system’s
`
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`-6-
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`CONFIG.SYS file and restarting the system.” Exhibit 1204C, 907. The
`
`Encyclopedia further describes that the RAM drive would include a file system:
`
`A virtual disk is implemented by mapping a disk’s structure –
`directory, file allocation table, and files area onto an area of random-
`access memory, rather than onto actual sectors located on a magnetic
`recording medium.
`Id., 907; see also id., 86.
`
`
`
`Thus, the knowledge of a POSITA regarding RAM drives, as evidenced by
`
`Dr. Reynolds’ testimony and the MS-DOS Encyclopedia, would have further
`
`motivated a POSITA to implement Kawaguchi’s reading unit 12 using a RAM
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`drive that includes a file system. Petition, 20-21; Ex. 1204, ¶¶ 113-115, 131-136;
`
`Ex. 1215, ¶ 17.
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`Summary of How Kawaguchi Alone Suggests Use Of A File System
`
`
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`The disclosure of Kawaguchi and the knowledge of a POSITA of RAM
`
`drives confirms that a POSITA would have been motivated to use a file system
`
`with Kawaguchi’s reading unit 12, which emulates a hard disk. The following
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`annotated version of Kawaguchi’s Figure 1 demonstrates this:
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`-7-
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`In this configuration, data would flow from the various peripherals (e.g., data from
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`Sensor 18) to the Kawaguchi interface device into Data Reading Unit 12, as
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`indicated by the green arrows.2 The file system of that emulated hard disk would
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`store that data for subsequent transmission to the EWS via the SCSI interface 7.
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`This arrangement would have allowed concurrent write-access to the data reading
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`unit 12 (i.e., multiple peripherals could perform data gathering operations in
`
`parallel with periodic writes to the data reading unit 12) -- making using a file
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`system with Kawaguchi an attractive, if not optimal, choice to a POSITA. Petition,
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`20-21; Ex. 1204, ¶¶ 113-115, 131-136; Ex. 1215, ¶¶ 18-19, 5-11.
`
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`2 Data flowing from the EWS to peripherals is indicated by the red arrows.
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`-8-
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`C. Matsumoto Discloses Off-Host Storage Of Digitized Analog Data
`In A File System That Would Have Further Motivated A POSITA
`To Use A File System In Kawaguchi
`
`The following diagram illustrates the obvious combination of the Kawaguchi
`
`and Matsumoto systems. The well-understood flexibility provided by a file system
`
`would have motivated a POSITA to incorporate the single storage device 11 of
`
`Matsumoto, which contains a file system,
`
`into
`
`the Kawaguchi system.
`
`Petition, 21-22; Ex. 1204, ¶117; Ex. 1215, ¶ 19.
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`
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`
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`Matsumoto discloses that “file management section [] manages documents
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`created inside a facsimile apparatus… [wherein the] operation for entering and
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`storing a file is performed by the file management section.” Petition, 21-22, citing
`
`Ex. 1207, 3:20-22, 5:55-56. Matsumoto further discloses storing digitized analog
`
`data in a memory (e.g., storage device 11) external to both a host system and a
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`series of peripherals (e.g., scanner 6, printer 7) to which the storage device 11 is
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`-9-
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`connected. This arrangement enables the local buffers of the peripherals to process
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`other jobs (e.g., to allow a second document to be scanned by the scanner 6)
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`without requiring the host device to manage local storage of the created file (e.g.,
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`in the interim between a user choosing to scan a document using the scanner 6 and
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`deciding to print that document stored in storage device 11 using printer 7).
`
`Petition, 21-22; Ex. 1204, ¶ 54; Ex. 1215, ¶¶ 19-21, 10, 14.
`
`
`
`Specifically, Matsumoto describes the process of capturing an image via the
`
`scanner and storing it in the storage device 11 of the facsimile apparatus at 5:58-
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`61: “Thus, the image can be read by the scanner inside the facsimile apparatus after
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`the resolution, encoding method or the like are specified by the host computer.
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`Furthermore, the image can be filed.” Later actions can reference the stored file
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`from the storage device 11, such as when printing (see 6:62-7:7), accessing file
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`information (see 9:29-31), and transferring to the host device (see 9:10-14). See
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`Ex. 1204, ¶ 58.
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`
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`The teachings of Matsumoto provide additional evidence proving that a
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`POSITA would have been motivated to use a file system in Kawaguchi’s SDC.
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`Ex. 1208, 3:20-22, 5:55-56. That file system would have enabled asynchronous
`
`and overlapped I/O. Ex. 1215, ¶¶ 5-11; 12-14. That file system further would
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`have supported caching of image data in Matsumoto’s storage device 11, which
`
`would have prevented blocking when overlapped I/O requests were made. Ex.
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`-10-
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`1215, ¶¶ 14, 18. The resulting combination of Kawaguchi’s SDC with
`
`Matsumoto’s file system could have performed
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`image data acquisition,
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`manipulation, and retrieval in any order (e.g., scan Image A, scan Image B, transfer
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`Image B to the Host Device). Thus, the file system would have imparted a
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`significant
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`system-flexibility
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`improvement
`
`over
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`any
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`non-file-system
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`implementation (e.g., a system that uses a FIFO buffer) -- motivating incorporation
`
`of Matsumoto’s file system into Kawaguchi’s system. Id.; Petition, 21-22; Ex.
`
`1204 ¶ 117; Ex. 1214, ¶¶ 12-14, 15.
`
`III. Patent Owner’s Kawaguchi Interpretation Is Not The Way One Of
`Ordinary Skill In The Art Would Have Read Kawaguchi
`
`
`
`Patent Owner posits a Kawaguchi system where “the data reading unit, as
`
`well as the other reading and writing units, function as [] data relays to allow the
`
`EWS to write and read ‘arbitrary data…’ which would neither have nor require a
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`file system.”3 Response, 22-23.
`
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`3 The term “arbitrary data,” on which the Response heavily relies, only appears one
`
`time in Patent Owner’s alternate translation of Kawaguchi, Ex. 2009. The term
`
`“arbitrary data” does not appear in the original translation submitted with the
`
`Petition, Ex. 1207. Dr. Reynolds’ declaration clarifies that Patent Owner’s
`
`insinuation that “arbitrary data” means “raw data that is not part of a file system” is
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`-11-
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`
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`But Patent Owner’s interpretation of the system of Kawaguchi is contrary to
`
`the text of Kawaguchi. If Kawaguchi meant to describe emulation of a non-
`
`traditional hard drive (i.e.¸ a hard drive without a file system), it would have
`
`disclosed that. Instead, Kawaguchi describes the treatment of the data reading unit
`
`12 as if it were a conventional hard disk – meaning that Patent Owner’s
`
`unconventional reading of Kawaguchi is incorrect. Ex. 1215, ¶ 2.
`
`
`
`Not only is Patent Owner’s contrived Kawaguchi system incorrect, it is also
`
`sub-optimal. Under Patent Owner’s strained interpretation of Kawaguchi, the data
`
`reading unit 12 is a pass-through buffer, where data from one of the peripherals
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`(e.g., the CD-ROM 5, the sensor 18) is provided to the data reading unit 12 and is
`
`output from the reading unit 12 in a first-in-first-out fashion. Response, 23. This
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`interpretation of Kawaguchi makes no sense because such a configuration would
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`substantially limit the Kawaguchi system by only allowing interaction with a single
`
`data acquiring peripheral at a time. Ex. 1215, ¶ 15. Patent Owner’s system would
`
`be unable to accommodate asynchronous and overlapped data requests, which
`
`compensate for the well-known orders of magnitude speed differences between
`
`data gathering peripheral devices and the host EWS. Ex. 1215, ¶¶ 3, 5-11.
`
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`wrong. Instead, “arbitrary data” should be read as “data from any of the connected
`
`peripherals, or an EWS.” Ex. 1215, ¶ 16.
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`-12-
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`Specifically, during data acquisition from sensor 18, data reading unit 12 could not
`
`receive data from another peripheral (e.g., the CD-ROM 5) without corrupting the
`
`data from sensor 18. Fragmented receipt of data from multiple peripherals would
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`jumble the data in the FIFO buffer of data reading unit 12. Without a file system,
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`nothing would track that data jumbling, rendering the data in the buffer useless.
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`Id., ¶¶ 12-14.
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`
`
`A POSITA would have been motivated to avoid such issues by using a file
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`system in the data reading unit 12 of Kawaguchi. In typical hard disks, the file
`
`system tracks the demarcations of files even when fragmented across a hard disk.
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`Ex. 1215, ¶ 12. Thus, the data reading unit 12 would have stored data from
`
`different peripherals at different locations for a period of time, even if received in
`
`an interleaved fashion. Then the data reading unit 12 would locate the data for
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`transmission to the EWS when desired according to any of the file system
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`organizations that were well known and understood at the earliest priority date of
`
`the Tasler patent. Id., ¶¶ 12-14; Ex. 2011, 121:5-12, 125:12-15. As Dr. Reynolds
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`testifies, the use of a file system to accommodate asynchronous and overlapped I/O
`
`is basic computer architecture design, taught in undergraduate coursework. Ex.
`
`1215, ¶ 2.
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`
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`A hard disk pass-through-buffer configuration, as argued by Patent Owner,
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`would have required significant configuration and customization, as well as
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`-13-
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`coordination among peripherals. Ex. 1215, ¶¶ 15, 12-14. Kawaguchi does not
`
`discuss or even allude to these requirements of Patent Owner’s proposed system.
`
`Indeed, a POSITA would have been disinclined to adopt Patent Owner’s
`
`interpretation of Kawaguchi for the reasons set forth above. A POSITA instead
`
`would have been motivated to use conventionally configured hard disks with file
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`systems to provide a predictable system that avoids the unnecessary technical
`
`difficulties described above. Ex. 1215, ¶¶ 18-21.
`
`
`
`Even if Patent Owner’s articulation of Kawaguchi without a file system were
`
`actually a disclosed embodiment, which it is not, that would not negate other
`
`embodiments that disclose the limitations of the challenged claims. That is the
`
`case here as the intrinsic evidence in Kawaguchi (e.g., the implication of a RAM
`
`drive) and multiple secondary references (e.g., Matsumoto, the MS-DOS
`
`Encyclopedia) would have motivated a POSITA to use a file system with
`
`Kawaguchi’s system. Petition, 19-22; Ex. 1204, ¶¶ 108-118, 131-136; Ex. 1215,
`
`¶¶ 2, 18-21.
`
`IV. Patent Owner’s Complaints About A Kawaguchi System That Uses A
`File System Are Unfounded.
`A. Kawaguchi’s File System Does Not Result In A Conflict
`Patent Owner argues that “it is impossible to implement a file system across
`
`
`
`separate data read and data write units.” Response, 22. As best as can be
`
`understood, Patent Owner argues that if a file system was used in Kawaguchi, that
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`file system would be a single file system (i.e., a single logical hard disk drive, e.g.,
`
`E:\) that spans the data writing unit 11 and data reading unit 12 and that such a file
`
`system would result in errors.
`
`
`
`But Petitioners do not contend that a POSITA would have used a single file
`
`system spanning data writing unit 11 and data reading unit 12. See Ex. 1204, ¶ 132
`
`(“The SDC, with its RAM drive implementation of the SDC data reading and
`
`writing units, would be accessing the respective file systems.”) Nor is that what
`
`Kawaguchi suggests. Kawaguchi is explicit that each of its writing and reading
`
`units 11-14 is an individual emulated hard disk. See Ex. 1207, 6:1-9 (the reading
`
`and writing units etc. comprise “four hard disks,” where the SCSI interface in the
`
`EWS “is designed to connect up to eight hard disks”). Each of those separate
`
`emulated hard disks would have its own logical file system (e.g., a separate drive
`
`letter: E:\, F:\). See, Ex. 1204, ¶¶ 108-118; Ex. 1215, ¶ 19. The Board should
`
`disregard Patent Owner’s red herring argument about a single file system across
`
`data writing unit 11 and data reading unit 12.
`
`B.
`
`Patent Owner’s Argument Regarding Loss Of Operating Speed
`Ignores The Primary Advantage Of Kawaguchi
`
`
`
`Patent Owner argues that a POSITA would not be inclined to modify the
`
`separate data writing unit 11 and data reading unit 12 arrangement of Kawaguchi
`
`because of a potential loss in operating speed due to the inability to perform
`
`parallel data transmission through units 11 and 12.
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`
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`-15-
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`Patent Owner argues that a single data storage unit (i.e., the proposed Kawaguchi
`
`in view of Matsumoto system shown above) “is completely contrary to
`
`Kawaguchi’s principle of operation.” Response, 24.
`
`
`
`But the remainder of Patent Owner’s sentence shows that even Patent Owner
`
`recognizes that Kawaguchi describes advantages beyond parallel data transmission.
`
`There, the Response clarifies that use of a single data storage unit “would destroy
`
`at least one of the two advantages provided by Kawaguchi’s invention.”
`
`Response, 24. That is, Patent Owner concedes that the use of a single data storage
`
`unit would still enjoy the primary advantage of Kawaguchi: “to provide a general
`
`SCSI device converter which enables a peripheral device having a bus standard
`
`differ[ent] from SCSI such as PC bus to be easily connected to the SCSI interface
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`on a EWS designed to connect a hard disk.” Ex. 1207, 3. The “Problem Solved by
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`the Invention” section of Kawaguchi focuses entirely on this advantage. Ex. 1207,
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`2-3. The use of a single data storage unit, as suggested by Matsumoto, would have
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`provided the main advantage disclosed by Kawaguchi. Thus, Kawaguchi does not
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`teach away from combining the teachings of Kawaguchi and Matsumoto as
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`described in the Petition.4
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`C. Kawaguchi Teaches Communicating With Peripherals Via A
`SCSI Interface
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`
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`Patent Owner downplays Matsumoto because Matsumoto uses non-SCSI
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`software commands to acquire data and to store that data in its file system for later
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`transmission to the host system. Response, 27-28. This argument is a textbook
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`example of individually attacking the references of an obviousness ground, rather
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`than the combination. One cannot show non-obviousness by attacking references
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`individually where the Petitioners are asserting a combination of references.
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`Unified Patents Inc. v. Convergent Media Solutions, LLC, IPR2016-00047, Final
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`Written Decision, Paper 23 at 25 (PTAB, Mar. 29, 2017).
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`
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`Petitioners are not citing Matsumoto for disclosure of a SCSI-peripheral
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`communication paradigm. Kawaguchi already teaches mechanisms for a host
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`4 Patent Owner’s citation to Plas-Pak Indus. Inc. v. Sulzer Mixpac AG, 600 Fed.
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`Appx. 755, 757 (Fed. Cir. 2015), is not on point because, in that case, the Federal
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`Circuit agreed that the reference’s “principle of operation is entirely directed” to a
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`single particular advantage. Id. at 758.
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`system to communicate to acquire data from peripheral devices of disparate types
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`using a SCSI command set. Petition, 10; Ex. 1204, ¶¶ 41-51, 108-118. The fact
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`that Matsumoto uses a specialized command set would not discourage a POSITA
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`from using Matsumoto’s file system in Kawaguchi’s device. The reasons
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`discussed above, in the Petition, and in Dr. Reynolds’ declaration would have
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`motivated a POSITA to incorporate a Matsumoto storage device 11 that uses a file
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`system into the Kawaguchi system. That combined system would have used
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`Kawaguchi’s SCSI-peripheral communication protocol. Accordingly, Patent
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`Owner’s argument is unpersuasive and should be rejected. Petition, 26-27; Ex.
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`1204, ¶¶ 41-51, 117, 140, 131-143.
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`V.
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`Patent Owner’s Other Arguments Regarding The Independent Claims
`Are Also Unpersuasive
`A. The Combination Of Kawaguchi And Matsumoto Includes A
`Processor That Implements A Data Generation Process.
`
`Patent Owner argues that Petitioners “have provided no evidence showing
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`that the [Kawaguchi] SDC’s processor would be involved in digitizing and storing
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`analog data acquired from the sensor disclosed in Kawaguchi as at least one file of
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`digitized analog data.” Response, 35. Patent Owner is wrong because Petitioners
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`identified multiple teachings of processor involvement in a data generation process
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`in Kawaguchi and Matsumoto. Petition, 19-22.
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`First, Kawaguchi discloses a data generation process involving an A/D
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`converter 19 and microcomputer. Kawaguchi discloses that all of the active
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`components of the SDC are realized “using a microcomputer.” Ex. 1207, 5. The
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`A/D converter 19 is an active component of the SDC that uses the microcomputer
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`and its associated processor. Petition, 19-20; Ex. 1204, ¶¶ 108, 118. That processor
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`controlling the A/D converter 19 is involved in a data generation process as claimed.
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`Id.; Ex. 2011, 114:4-7.
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`Kawaguchi’s code converting unit 15 and control unit 16 are additional
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`examples of a processor involved in a data generation process. Those units 15, 16
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`are involved in translating data acquired via the peripherals, storing that data, and
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`transmitting that data to the EWS. Ex. 1207, 5; Ex. 1204, ¶¶ 94-95. Specifically,
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`the code converting unit 15 “converts the data format between SCSI standards and
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`device-interface bus standards,” and the control unit 16 “controls the data
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`transmission/reception between the EWS and the peripheral devices.” Id.; Ex. 1204,
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`¶¶ 94-95, 107, 108.
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`Sensor 18 is an example of a peripheral that generates data in conjunction
`
`with the code converting unit 15 and control unit 16 of Kawaguchi’s SDC. Ex.
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`1207, 5. The sensor 18 transmits analog data to the A/D converter 19, which
`
`converts that analog data to digital data for storage in the data reading unit 12 and
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`transmission to the EWS 3, under control of units 15 and 16. A POSITA would thus
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`have understood that units 15 and 16 are involved in this data generation process.
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`-19-
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`Petition, 20-21; Ex. 1204, ¶¶ 93-99.
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`Kawaguchi thus discloses multiple examples of a processor involved in data
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`generation. Petition, 19-22; Ex. 1204, ¶¶ 93-99, 108-118.
`
`B.
`
`The Kawaguchi-Matsumoto Combination Includes The Processor
`Transferring At Least One File.
`
`Patent Owner argues that the proposed Kawaguchi-Matsumoto combination
`
`does not disclose the file transfer limitation. Response, 35-37. Patent Owner
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`primarily bases this argument on its erroneous assertion that it would not have been
`
`obvious to use a file system in Kawaguchi’s SDC.
`
`Kawaguchi does disclose a processor transferring at least one file.
`
`Kawaguchi operates data reading unit 12 as an emulated hard disk. Petition, 25-26.
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`A POSITA knew, at the earliest priority date of the Tasler patent, that hard disks
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`store data, and data can be transferred from hard disks. Ex. 1204, ¶ 134. Kawaguchi
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`discloses that “control unit (16) controls the data transmission/reception between the
`
`EWS and the peripheral devices.” Ex. 1207, 5. Thus, Kawaguchi’s microcomputer
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`processor operates to transfer files of data. Ex. 1204, ¶¶ 133-134.
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`The combination of Matsumoto with Kawaguchi also discloses the claimed
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`file system limitations. See Petition, 21 (“Moreover, Matsumoto discloses… that a
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`file management section 10 manages documents created inside a facsimile apparatus
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`. . . [wherein the] operation for entering and storing a file is performed by the file
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`management section 10.”) Matsumoto discloses outputting an image file captured
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`via its scanner at 9:10-14, describing FIG. 7-3 (“This command is used to transfer
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`data of the file which is previously designated by the aforesaid file designation
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`command to the host computer.”) “CPU 1 controls the entire apparatus in
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`accordance with control programs stored in a ROM 2.” Ex. 1208, 3:4-5.
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`Matsumoto’s CPU 1 thus provides an additional suggestion that would have
`
`motivated a POSITA to use a processor in the transfer of at least one file of digitized
`
`analog data. Ex. 1204, ¶¶ 58, 117, 136.
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`Kawaguchi thus discloses, or at a minimum, it would have been obvious to a
`
`POSITA to use, a processor involved in the claimed file transfer. Petition, 21-22;
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`Ex. 1204, ¶¶ 58, 108-118; 131-143.
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`C. The Proposed Combination Does Not Require Loading Of Any
`File Transfer Enabling Software.
`
`Patent Owner also argues that, because Matsumoto uses non-SCSI commands
`
`for its data acquisition and transmission, the combination of Kawaguchi and
`
`Matsumoto does not disclose the claimed device. Response, 37-38. This argument
`
`is the same as that addressed in Section IV.C above.
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`D.
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`Patent Owner’s Arguments Regarding Independent Claims 31
`And 34 Are Substantively Identical To Those Made For Claim 1.
`
`Patent Owner argues that independent claims 31 and 34 are patentable for the
`
`same reasons as presented for claim 1, and Mr. Gafford confirmed that he does not
`
`argue any independent basis for the patentability of those claims. Response, 38-42;
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`Ex. 1216, 79:21-80:4; 81:8-13. Petitioner