UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Panasonic Inc., et al.,
`Petitioners
`
`v.
`
`Papst Licensing GMBH & CO. KG,
`Patent Owner
`
`
`
`Case No: IPR2016-01213
`U.S. Patent No. 8,504,746
`
`
`
`
`
`SECOND DECLARATION OF DR. PAUL F. REYNOLDS
`
`
`
`
`
`
`
`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 1 of 9
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Panasonic Inc., et al.,
`Petitioners
`
`v.
`
`Papst Licensing GMBH & CO. KG,
`Patent Owner
`
`
`
`Case No: IPR2016-01213
`U.S. Patent No. 8,504,746
`
`
`
`
`
`SECOND DECLARATION OF DR. PAUL F. REYNOLDS
`
`
`
`
`
`
`
`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 1 of 9
`
`
`
`
`
`I, Dr. Paul F. Reynolds, Ph.D., declare as follows:
`
`1.
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`I am providing this declaration in support of Petitioners’ Reply to
`
`address issues raised by the Patent Owner in its Response (Paper 17) for IPR 2016-
`
`01213.
`
`2.
`
`In addition to the information considered in connection with my
`
`original declaration, I also have considered the Board’s Decisions on Institution,
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`the Patent Owner’s Response and exhibits, and the deposition testimony of Patent
`
`Owner’s expert.
`
`I.
`
`Yamamoto’s System Control Circuit 20
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`3.
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`In its response, Patent Owner asserts that “Yamamoto does not
`
`disclose that its system control circuit 20 is involved in transferring data from the
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`hard disk to a computer.” Response at 18-19. In my opinion this is incorrect. The
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`flow chart in Fig. 31 of Yamamoto describes a program running in the system
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`control circuit 20 (“SCC”) that manages the operating modes of the Yamamoto
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`camera (Ex. 1401, Col. 22:36-37). A POSITA would have understood that as part
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`of the process at Step 106 of setting the camera in external hard disk mode, the
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`SCC 20 would output control signals to control the operation of interface circuit 65
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`and R/D control circuit 66 to cause those circuits to enable data transfer from the
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`hard disk 71 to an external computer. (Ex. 1401, Col. 7:60-64 and Cols. 22-23).
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`
`
`1
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`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 2 of 9
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`
`
`
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`4.
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`A POSITA would have also understood that when in external hard
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`disk mode, SCC 20 would prevent other circuits of the camera from accessing hard
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`disk 71, to prevent access conflicts, because of all of the other operations it already
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`performs: SCC 20 monitors the operation of mode switch 19, it monitors for the
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`presence of an external computer that could request access to the (possibly
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`emulated—see SCSI emulation, infra) hard disk (Ex. 1401, col. 23:30-43), and it
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`manages timing of writes to the hard disk (e.g., Ex. 1401, Fig. 23 and col. 18:37-
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`19:10; Fig. 26 and col. 20:59-21:27). Additionally, a POSITA would have
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`understood that SCC 20 would also prevent the other camera circuits from sending
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`image data directly from the optical image processing circuitry to the external
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`computer as they would in scanner mode. (See Ex. 1401, Col. 23:4-22). For
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`example, Yamamoto discloses that when in hard disk mode a SET WINDOW
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`command, which is permitted during scanner mode operation, “can not be received
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`by the still video camera, so that the scanning operation and the trimming
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`operation are prohibited.” (Ex. 1401, Col. 23:40-43). A POSITA would have
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`understood that SCC 20, “control[ling] the still video camera as a whole” (Ex.
`
`1401, Col. 6:6-10) manages the different camera operation modes, including
`
`preventing operations inappropriate for the current mode (such as SET WINDOW
`
`outside of scan mode). (Ex. 1401, Fig. 31 and Cols. 22-23). A POSITA would
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`therefore have understood that Yamamoto’s SCC 20 controls data transfer, at least
`
`
`
`2
`
`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 3 of 9
`
`
`
`
`
`to the extent that it initiates the external hard disk mode, and prevents other circuits
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`from operating in different modes while the external computer is requesting access
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`to the hard disk via the camera’s interface circuit 65.
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`5.
`
`In its Response, Patent Owner asserts that “Yamamoto’s system
`
`control circuit 20 is a limited device…” Response, p. 23. Yamamoto describes his
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`still video camera as one “in which a system control circuit 20 including a
`
`microcomputer or micro-processor is mounted to control the still video camera as
`
`a whole.” (Emphasis added) (Ex. 1401, Col. 6:7-10). Nowhere in his patent has
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`Yamamoto placed any limitations on his “system control circuit 20 including a
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`microcomputer or micro-processor,” nor has he described it or characterized it as a
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`“limited device.” The SCC, as Yamamoto has explicitly stated, includes a
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`microcomputer or microprocessor. (See also Ex. 1403, Reynolds Decl., ¶ 46)
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`6.
`
`At the priority dates of the Tasler patents ’144 and ’746 a POSITA
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`would have known and understood that a broad set of microcomputers and
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`microprocessors was available to system designers. These microcomputers and
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`microprocessors ranged in computation power and application up to and including
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`being the central computing components in desktop computers. A POSITA would
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`have known and understood that even less powerful microcomputers and
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`microprocessors (and micro-controllers, e.g. the widely used members of the low
`
`power Intel 8051 family), would have been fully capable of performing
`
`
`
`3
`
`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 4 of 9
`
`
`
`
`
`computations that included many of the functions described for Yamamoto’s
`
`camera. For example, these less powerful, often low power, processors would
`
`have been fully capable of performing the relatively simple task of emulating a
`
`SCSI device that was actually implemented using a non-SCSI device, for example
`
`an IDE hard drive or a non-SCSI optical drive. (See also Ex. 1403, Reynolds Decl.,
`
`¶ 74).
`
`7.
`
`SCSI emulation is not a demanding operation. A POSITA would
`
`have known that a processor performing emulation of a SCSI device would need to
`
`be able to receive SCSI commands (and accompanying parameters) and to perform
`
`a simple mapping to an equivalent command for the device implementing the
`
`emulated SCSI device. A POSITA would have known that many low power
`
`processors available at the priority date of the Tasler patents could have performed
`
`this command processing, and therefore controlled data transfer to an external
`
`computer, even if the data transferred from the hard disk to the external computer
`
`did not pass back through the SCC. Because SCC 20 is a microprocessor and it
`
`lies on the path between I/F circuit 65 and R/D control circuit 66, a POSITA would
`
`have understood Yamamoto disclosed a reasonable implementation in which the
`
`processor-based system control circuit 20 performed SCSI emulation as described
`
`here when implementing Yamamoto’s camera.
`
`
`
`4
`
`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 5 of 9
`
`
`
`
`
`8.
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`Yamamoto describes the R/D control circuit 66 and the image
`
`recording device 67 as being attached to SCC 20 and the image processing circuit
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`23. (Ex. 1401, col. 7:40-54). If the camera were implemented in this way, without
`
`any direct connection between R/D control circuit 66 and interface circuit 65, then
`
`data transferred from R/D control circuit 66 to an external computer would most
`
`likely pass through SCC 20. (See Yamamoto, Fig 30.) After the image data has
`
`been written to the storage medium mounted in the image recording device, the
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`data would not be likely to pass back through the image processing circuit because
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`the functions Yamamoto describes for it are not required for transferring data from
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`the storage medium to an external computer. Therefore, a POSITA would have
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`understood that data passing between the Yamamoto storage medium and an
`
`external computer from the image recording device 67, through the R/D control
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`circuit 66, would be initiated and controlled by SCC 20, and the data itself may
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`pass through SCC 20.
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`9.
`
`A POSITA would have understood
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`that
`
`in a
`
`reasonable
`
`implementation of Yamamoto's camera control of passing data from the storage
`
`medium to the external computer would include timing signals for reading data
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`from the hard disk to the external computer. Yamamoto discloses that SCC 20
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`emits timing signals for writing data to the hard drive from the camera’s sensors
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`(Ex. 1401, Col. 18:37-41). Similarly, SCC 20 would be implmented to control
`
`
`
`5
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`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 6 of 9
`
`
`
`
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`data movement rates from the storage medium (e.g. hard disk) through the R/D
`
`control circuit 66, possibly through SCC 20 and on to interface circuit 65, in
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`response to a SCSI disk READ operation from the external computer. A POSITA
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`would have understood that SCC 20 would exercise this timing control in order to
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`manage possibly different data flow rates between the storage medium, the
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`external computer, and logic along that path (e.g. R/D control circuit 66 and
`
`interface circuit 65).
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`10. A POSITA would also have understood at the priority date of the
`
`Tasler patents that the processors available to implement Yamamoto’s SCC would
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`have been fully capable of supporting the file transfer process that transfers data
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`from the Yamamoto data storage medium to the external computer. A POSITA
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`would further have understood that the SCC emulating a storage medium, such as
`
`a SCSI hard drive, would have been capable of supporting an automated file
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`transfer process, as I have discussed in detail in my original declaration (Ex. 1403,
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`Reynolds Decl., ¶¶ 112-123).
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`11.
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`In its Patent Owner Response, Papst relies upon a passage from
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`Yamamoto 2 to support its position that an end user would have had to format
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`Yamamoto’s hard drive. (Resp. at 37-38). But the passage cited, Ex. 1407, 2:57-
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`65, merely reflects the understanding of a POSITA that hard disks would typically
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`be formatted prior to use, and that hard disks are formatted based upon the
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`
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`6
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`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 7 of 9
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`
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`
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`operating system of the computer that will access them. Papst argues that this
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`passage requires that an end user of the Yamamoto 2 camera must interact with a
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`computer to format the disk, and therefore “set up a file system” because only the
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`end user will know what operating system will interface with the camera. (Resp. at
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`38). But a POSITA reading this passage would have understood it to make clear
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`that Yamamoto 2 requires a formatted hard drive to operate, and that it must be
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`pre-formatted “prior to use.” (Ex. 1407, 2:57-65). A POSITA would have
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`understood that at the time of the Tasler ’746 patent, a pre-formatted disk, possibly
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`provided by the camera manufacturer or a retailer, would satisfy this requirement.
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`(Ex. 1403, ¶ 141).
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`12. Yamamoto does not disclose any requirements regarding the operating
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`system of the external computer that may access its hard disk. A POSITA would
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`have understood that the file system on Yamamoto’s hard drive may differ in
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`accordance with what the external computer expects to find. It would be up to the
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`end user to determine which operating system and file system its external computer
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`uses, and to purchase pre-formatted disks that comport with that operating systems’
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`requirements.
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`13.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`
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`7
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`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 8 of 9
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`
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1101 of Title 18 of the United States Code
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`and that such willful
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`false statements may jeopardize the results of these
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`proceedings.
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`
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`JVC KENWOOD CORR, ET AL.
`
`Ex. 1413, p. 9 of9
`
`JVC KENWOOD CORP., ET AL.
`Ex. 1413, p. 9 of 9
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`
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