Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Panasonic Corporation, et al.
`Petitioners
`
`v.
`
`PAPST LICENSING GMBH & CO., KG
`Patent Owner
`
`_______________
`
`CASE: IPR2016-01213
`Patent No. 8,504,746
`_______________
`
`
`PETITIONERS’ REPLY
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`Exhibit No. Title
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
`
`EXHIBIT LIST
`
`1400
`
`1401
`
`1402
`
`1403
`
`1404
`
`1405
`
`1406
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`1407
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`1408
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`1409
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`1410
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`1411
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`1412
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`1413
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`2001
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`2002
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`2003
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`2004
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`2005
`
`
`U.S. Patent No. 8,504,746 to Tasler.
`
`U.S. Patent No. 6,088,532 (Yamamoto)
`
`Selected portions of ’144 patent file history
`
`Declaration of Paul F. Reynolds, Ph.D.
`
`Papst’s Opening Claim Construction Brief: Misc. Action No. 07-493
`(RMC); Dkt. 640, MDL No. 1880
`
`American National Standards Institute, “ANSI X3.131-1994 - Small
`Computer System Interface-2,” (1994)
`
`American National Standards Institute, Procedures for the
`Development and Coordination of American National Standards,
`Approved by the ANSI Board of Directors (Sept. 9, 1993).
`
`U.S. Patent No. 6,256,452 (Yamamoto2)
`
`U.S. Patent No. 5,592,256 (Muramatsu)
`
`Ray Duncan, ed., “The MS-DOS Encyclopedia,” Microsoft Press
`(1988).
`
`Federal Circuit decision, In re: Papst Licensing Digital Cameras
`Patent Litigation, No. 2014-1110 (Fed. Cir. Feb. 2, 2015)
`
`Deposition Transcript of Paul F. Reynolds dated March 9, 2017
`
`Deposition Transcript of Thomas A. Gafford dated May 31, 2017
`
`Supplemental Declaration of Paul F. Reynolds
`
`U.S. Patent No. 5,758,081 to Aytac (“Aytac”)
`
`JP H4-15853 to Kawaguchi (“Kawaguchi”)
`
`U.S. Patent No. 5,508,821 to Murata (“Murata”)
`
`U.S. Patent No. 5,499,378 to McNeill, Jr. et al. (“McNeill”)
`
`Excerpt from the File History of the ’443 Application: March 25,
`2011 – Notice Under MPEP § 1442.04
`
`2006
`
`Declaration of Thomas A. Gafford
`
`
`
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`-i-
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`3001
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`Microsoft Computer Dictionary (3d ed. 1997)
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`-ii-
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
`
`I.
`
`II.
`
`INTRODUCTION ................................................................................................ 1
`
`THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE
`COMBINATION OF YAMAMOTO, YAMAMOTO 2, THE SCSI
`SPECIFICATION, AND THE ADMITTED PRIOR ART ................................. 4
`
`A.
`
`In Its Arguments With Respect to Claims 1 And 31, Papst Ignores
`Yamamoto’s Express Teachings and Fails to Consider the Prior Art
`Combination As A Whole, In View of the Knowledge of an
`Ordinarily Skilled Artisan. ......................................................................... 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`A POSITA Would Have Understood That Yamamoto
`Discloses That The System Control Circuit Would Be
`Involved in Data Transfer. ............................................................... 5
`
`A POSITA Would Have Understood That Yamamoto’s
`System Control Circuit Would Be Implemented With A
`Fully Functioning Micro-Processor That Would Be Involved
`in Data Transfer. ............................................................................ 10
`
`A POSITA Would Have Understood That Yamamoto’s Hard
`Disk is Mounted In Its Recording Device Control Circuit
`and Image Recording Device Housing, And Is Not
`Necessarily Separately Attachable To An External
`Computer. ....................................................................................... 12
`
`A POSITA Would Have Understood That Yamamoto Would
`Require A SCSI Emulator For A Computer Using SCSI To
`Communicate With A Non-SCSI Hard Disk With The
`Processor Executing Instructions For Automatic File
`Transfer. ......................................................................................... 16
`
`B. With Respect to Claim 34 (And Dependent Claim 35), The Data
`Transferred To The External Computer Is From The Analog
`Source. ...................................................................................................... 20
`
`C. With Respect to Dependent Claim 17, Papst Ignores That
`Yamamoto Discloses To A POSITA The Purportedly Missing
`Limitations. .............................................................................................. 22
`
`
`
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`iii
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`D.
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
`Papst Concedes That All Other Limitations Of The Challenged
`Claims Are Obvious In Light Of Yamamoto And The Other
`Combined References. ............................................................................. 25
`
`III. CONCLUSION .................................................................................................. 25
`
`
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`iv
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
`
`I.
`
`INTRODUCTION
`
`The Board instituted inter partes review of Claims 1-3, 6-10, 15, 17-19, 21,
`
`23- 25, 31, 34 and 35 (“Challenged Claims”) of U.S. Patent No. 8,504,746 (the
`
`“’746 Patent”) (Ex. 1400) on December 15, 2016 (Paper 13) on the grounds that
`
`the Challenged Claims are unpatentable as obvious over the combination of
`
`Yamamoto (Ex. 1401), Yamamoto 2 (Ex. 1407 ), the SCSI Specification (Ex.
`
`1405), and the Admitted Prior Art. Petitioners respectfully submit this reply in
`
`response to issues raised by Patent Owner (“Papst”) in its Response (Paper 17).
`
` With respect to independent claims 1 and 31 (and all of the dependent
`
`claims except 17 and 35), Papst asserts one main argument to rebut Petitioners’
`
`strong showing of obviousness, raising a single limitation from the seventeen
`
`claims. Papst’s main argument, that the Yamamoto camera’s only processor is not
`
`involved in the automatic file transfer, ignores what one of ordinary skill in the art
`
`would have understood, and is without merit.
`
`First, Papst contends that Yamamoto does not disclose that its only
`
`processor is involved in data transfer, despite “control[ling] the still video camera
`
`as a whole.” This is incorrect. [Ex. 1401, col. 6:8-10].1 Yamamoto discloses that
`
`its processor controls the operation of every circuit in the Yamamoto camera,
`
`
`1
` All patent references are to Yamamoto, U.S. Patent No. 6,088,532, Exhibit
`1401 to the Petition, unless explicitly stated otherwise.
`
`
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`1
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`including the circuits Papst agrees are involved in data transfer. [Col. 7:60-64;
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`Resp. at 35]. As a result, a person of ordinary skill in the art (“POSITA”) would
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`have understood that Yamamoto’s processor controls the data transfer process.
`
`Second, Papst also contends that Yamamoto’s processor has limited
`
`processing capacity, such that it could not be involved in any way in data transfer.
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`[Col. 6:8-1; Resp. at 23-31]. This assumption contradicts the explicit disclosure in
`
`Yamamoto that assigns numerous operations to the processor, and discloses no
`
`limitations on its capability. [Col. 7:43-63; 20:59-21:27; col. 23].
`
`Third, Papst assumes that the Yamamoto camera’s hard disk would be an
`
`externally cabled SCSI hard disk that could be attached separately to an external
`
`computer. From that assumption Papst leaps to the conclusion that such a hard
`
`disk would process SCSI commands itself and would have no need to obtain that
`
`capability from the Yamamoto processor. [Resp. at 31-33]. But even Mr. Gafford
`
`admits that there is no requirement for Yamamoto’s hard disk to be separately
`
`attachable to a computer. [Ex. 1412, Tr. 14:20-15:7].
`
`Finally, if, as Mr. Gafford admits [Ex. 1412, Tr. 23:2-15], a POSITA would
`
`have understood that Yamamoto’s hard disk could be an IDE disk, then
`
`Yamamoto’s camera would require a SCSI emulator. It would have been obvious
`
`to a POSITA to implement such an emulator in Yamamoto’s processor, which
`
`would control a data transfer process.
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`2
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`For independent claim 34 (and claim 35), Papst also argues that the prior art
`
`does not disclose the limitation of “automatically transferring data from the analog
`
`source to the host device,” because Papst contends that the data stored on
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`Yamamoto’s hard disk is not “from the analog source.” [Resp. at 33]. But a
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`POSITA would have understood that all digitized image data transferred from
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`Yamamoto’s camera originates “from the analog source.”
`
`Finally, Papst also argues that Petitioners fail to establish obviousness of
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`claim 17’s limitations of “[a] without requiring any end user to load any software
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`onto the computer at any time,” and “[b] without requiring any end user to interact
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`with the computer to set up a file system in the analog data acquisition device at
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`any time.” But Papst ignores the evidence presented that a POSITA would have
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`known to use a computer having well-known SCSI drivers with Yamamoto’s
`
`camera having a well-known and readily available pre-formatted hard disk. [See,
`
`e.g., Ex. 1412, Tr. 35:5-10].
`
`For the reasons set forth in this reply and in the Petition, Petitioners
`
`respectfully request that the Board render a Final Written Decision canceling the
`
`Challenged Claims of the ’746 Patent.
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`3
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`II. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE
`COMBINATION OF YAMAMOTO, YAMAMOTO 2, THE SCSI
`SPECIFICATION, AND THE ADMITTED PRIOR ART
`
`A.
`
`In Its Arguments With Respect to Claims 1 And 31, Papst Ignores
`Yamamoto’s Express Teachings and Fails to Consider the Prior
`Art Combination As A Whole, In View of the Knowledge of an
`Ordinarily Skilled Artisan.
`
`Papst’s sole argument regarding claims 1 and 31 (and the challenged
`
`dependent claims except 35) is based on a single phrase in a single limitation of
`
`each claim: (1) from claim 1: “where in the processor is further configured and
`
`programmed to... allow the at least one file of digitized analog data acquired from
`
`the analog signal acquisition channel to be transferred to the computer” and (2)
`
`from claim 31: “wherein the processor is configured to automatically transfer the
`
`digitized analog data acquired from the analog source to the host device.” Papst
`
`contends that “Yamamoto does not disclose that its system control circuit 20 is
`
`involved in transferring data from the hard disk to a computer.” [Resp. at 18-19].
`
`But Papst ignores the clear teachings of Yamamoto that its processor is involved in
`
`data transfer and the teachings of the other prior art establishing that a POSITA
`
`would have understood that Yamamoto’s camera system is implemented with a
`
`processor involved in the data transfer process.
`
`Papst’s argument depends on four incorrect assumptions: (1) Yamamoto
`
`allegedly does not disclose that its processor is involved in data transfer to an
`
`external computer; (2) Yamamoto’s processor has limited capability and is not
`
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`powerful enough to be involved in data transfer; (3) Yamamoto’s hard disk is an
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`externally connectable SCSI hard disk, and therefore the disk would itself provide
`
`all necessary SCSI processing; and (4) even if Yamamoto’s hard disk were an IDE
`
`hard disk requiring a SCSI emulator to access, that SCSI emulator would not be
`
`implemented in Yamamoto’s only processor , even though Papst concedes that
`
`Yamamoto’s processor is involved in implementing some SCSI commands. [See
`
`Ex. 1412, Tr. 20:20-21:4]. Yamamoto makes clear that its system control circuit 20
`
`controls all operations of the Yamamoto camera, including data transfer, and a
`
`POSITA would have understood that was so.
`
`1.
`
`A POSITA Would Have Understood That Yamamoto
`Discloses That The System Control Circuit Would Be
`Involved in Data Transfer.
`
`Yamamoto discloses only one processor in its camera system, which is
`
`system control circuit 20 (“SCC”), described as: “Fig. 2 is a block diagram of the
`
`still video camera, in which system control circuit 20 including a micro-computer
`
`or micro-processor is mounted to control the still video camera as a whole.” [Col.
`
`6:7-10]. Yamamoto discloses no limits on the power and functionality of the SCC.
`
`[Ex. 1413, ¶ 5]. Yamamoto describes the SCC as controlling all circuits in the
`
`camera, and identifies numerous functions performed by the SCC:
`
` Outputting command signals to operate the circuits involved in
`
`writing to and reading from the image data file storage and
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`5
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`communication with the external computer, i.e., the recording
`
`medium drive circuit 41 (col. 6: 55-57), the interface circuit 65,
`
`and the recording device control circuit 66 (col. 7:60-63);
`
` Controlling the circuits involved in image capture, i.e., the light
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`source drive circuit 45, the scanner drive circuit 46, the line sensor
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`drive circuit 47 (col. 7:29-30), and the image processing circuit 63
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`(col. 7:35-36);
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` Processing signals from various switches, including the release
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`switch 14, the scan start switch 16 (col. 7:64-8:1), and the mode
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`switch 19 (col. 22:22-24), which are all connected directly to the
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`SCC;
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` Managing the timing and operation of image circuitry obtaining
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`the image data with the timing and operation of the write
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`operations to the hard disk mounted in the image recording device
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`67 (e.g., Fig. 23 and col. 18:37-19:10; Fig. 26 and col. 20:59-
`
`21:27);
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` Being involved in responding to the expressly identified SCSI
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`commands in the Yamamoto specification, including INQUIRY,
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`SET WINDOW, READ CAPACITY, and FORMAT UNIT (col.
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`22:23-26; 23:4-43).
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`6
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`Papst concedes that Yamamoto’s SCC performs all of these functions. [Resp.
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`at 19-21, and Ex. 1412, Tr. 20:20-21:4]. Papst also agrees Yamamoto discloses
`
`that interface circuit 65 and R/D control circuit 66 are involved in data transfer.
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`[Resp. at 30, 31]. Yet Papst contends that SCC 20 is not involved with their
`
`operation, even though Yamamoto explicitly discloses that they “are operated in
`
`accordance with a command signal outputted from the [SCC].” [Resp. at 25-26].
`
`Papst illustrates its theorized data transfer path as shown in red in the chart
`
`reproduced in Papst’s Patent Owner Response at 35:
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`
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`But Papst contends that if data does not pass back through the SCC on the way to
`
`the external computer, then the SCC is not involved in data transfer. A POSITA,
`
`however, would have understood just the opposite. A POSITA would have
`
`understood that the SCC manages the flow of operations and data through the
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`Yamamoto camera, by, for example, controlling the timing of when image data can
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`be written by the image processing circuit 63 to the R/D control circuit 66, and
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`then to the data storage mounted in the image recording device 67. [See, e.g., Fig.
`
`23 and col. 18:37-19:10; Fig. 26 and col. 20:59-21:27 (disclosing SCC
`
`involvement in image data transfer to hard disk)].
`
`The flow chart in Fig. 31 details a program running in the SCC that manages
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`the operating mode of the Yamamoto camera [Col. 22:36-37]:
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`
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`When the camera is powered on, the SCC determines in Step 101 if an external
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`computer is connected, by sensing the voltage level at output terminal 17. [Col. 22:
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`37-44 (disclosing this is done by the SCC, not interface circuit 65)]. If an external
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`computer is connected, then at Step 103 the SCC determines if a hard disk is
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`mounted. [Col. 22:57-23:3]. If a hard disk is present, then the SCC at Step 105
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`determines whether mode switch 19 is in hard disk drive mode position. [Fig. 29;
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`Col. 23:23-29]. If it is, then the SCC sets the camera in external hard disk mode.
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`[Col. 23:30-43]. In this mode, Yamamoto discloses would receive a SCSI
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`INQUIRY command from the external computer, and in response the camera
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`“outputs data indicating that the external hard disk mode is set, due to the fact that
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`the mode switch 19 is set to the [hard disk mode].” [Col. 23:33-37]. As Mr.
`
`Gafford confirms, a POSITA would have understood that the SCC is involved in
`
`this response, because, among other things, the SCC determines the position of the
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`mode switch. [Ex. 1412, Tr. 20:20-21:4]. Then the SCC places the camera in
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`external hard disk mode. [Col. 23:30-31]. A POSITA would have understood in
`
`so doing, the SCC 20 outputs control signals to control the operation of interface
`
`circuit 65 and R/D control circuit 66 to cause those circuits to enable data transfer
`
`from the hard disk 71 to an external computer. [Ex. 1413, ¶ 3,4, 8, 9]. Thus a
`
`POSITA would have understood that Yamamoto’s SCC is involved in data transfer,
`
`and “allows” the data transfer to occur.
`
`Moreover, a POSITA would have understood that part of that control would
`
`include managing the camera operation modes, and preventing operations
`
`inappropriate for the current mode. [Fig. 31 and cols. 22-23; Ex. 1413, ¶ 4]. A
`
`POSITA would have understood that, when in hard disk mode, the SCC prevents
`
`other circuits of the camera from accessing hard disk 71, due to the operations
`
`Yamamoto discloses are done by the SCC: it monitors the operation of mode
`
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`9
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`switch 19, it monitors the presence of an external computer that could request
`
`access to the hard disk [col. 23:30-43], and it manages timing of writes to the hard
`
`disk [e.g., Fig. 23 and col. 18:37-19:10; Fig. 26 and col. 20:59-21:27]. [Ex. 1413,
`
`¶ 4]. Additionally, a POSITA would have understood that SCC 20 would also
`
`prevent other camera circuits from sending image data directly from the image
`
`processing circuitry to the external computer as they would in scanner mode. [See
`
`Col. 23:4-22; id.; see, e.g.,col. 23:40-43 (discloses preventing SET WINDOW
`
`commands from operating when in hard disk mode); Ex. 1403, ¶4]. A POSITA
`
`would therefore have understood that Yamamoto’s SCC initiates the external hard
`
`disk mode, and prevents other circuits from operating in incompatible modes, and
`
`therefore controls data transfer. [Ex. 1413, ¶ 4].
`
`In sum, Papst’s first underlying assumption fails. A POSITA would have
`
`understood that SCC 20 controls the data transfer process, even under Papst’s
`
`theory of the path through which data passes.
`
`2.
`
`A POSITA Would Have Understood That Yamamoto’s
`System Control Circuit Would Be Implemented With A
`Fully Functioning Micro-Processor That Would Be
`Involved in Data Transfer.
`
`Papst’s second incorrect assumption is that Yamamoto’s SCC would be so
`
`limited that it could not be involved in data transfer. But Papst agrees that
`
`Yamamoto’s SCC performs the functions listed on pages 5 to 6, supra. [Resp. at
`
`25-28, and Ex. 1412, Tr. 20:20 -21:4]. As a result, Papst apparently agrees that
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`10
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`whatever microprocessor implements Yamamoto’s SCC, it at a minimum will be
`
`able to control the operation of the interface circuit 65 and R/D control circuit 66.
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`[Id.; col. 7:60-64].
`
`Yet Papst contends that the SCC is a limited processor that is not powerful
`
`enough to be involved in any way in data transfer to an external computer, despite
`
`performing all the noted functions, including controlling the timing of write
`
`operations to the memory storage and being involved in responding to identified
`
`SCSI command. Once data transfer begins, Papst alleges that numerous other
`
`circuits in Yamamoto besides the SCC could handle the data transfer, in an effort
`
`to dis-involve Yamamoto’s processor from this single camera operation. [See
`
`Resp. at 31-37].
`
`But a POSITA would have understood that Yamamoto’s SCC would be
`
`involved in data transfer. [Ex. 1413, ¶ 3]. At the priority date of the Tasler ’746
`
`patent, system designers could choose from a broad set of microcomputers and
`
`microprocessors. [Ex. 1413, ¶ 4]. These devices ranged in computational power
`
`and application, and a POSITA would have known that even less powerful
`
`microcomputers and microprocessors (and micro-controllers, e.g., members of the
`
`widely used, low power Intel 8051 family), would have been fully capable of
`
`performing computations that included many of the functions described for
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`Yamamoto’s camera. [Ex. 1413, ¶¶ 4, 5].
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`11
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`In sum, a POSITA would have known of numerous appropriate, sufficiently
`
`powerful microprocessors with which to implement Yamamoto’s SCC to permit ti
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`to control data transfer.
`
`3.
`
`A POSITA Would Have Understood That Yamamoto’s
`Hard Disk is Mounted In Its Recording Device Control
`Circuit and Image Recording Device Housing, And Is Not
`Necessarily Separately Attachable To An External
`Computer.
`
`The next link in Papst’s flawed logic chain depends on another assumption
`
`contradicted by Yamamoto’s disclosure. Papst contends that “[Yamamoto’s] hard
`
`disk may be disconnected from the camera and connected directly to a computer as
`
`an external hard disk for the computer.” Response at 31. From this Papst leaps to
`
`the conclusion that because such a hard disk (a) has to be a SCSI hard disk due to
`
`cabling requirements at that time, and (b) it would have been able to process SCSI
`
`commands directly and would not have needed any support from Yamamoto’s
`
`SCC. Id. at 31-33. This logical chain fails because its underlying assumption is
`
`false.
`
`To support its claim that Yamamoto’s hard disk may be connected directly
`
`to a computer, Papst cites only to portions of Mr. Gafford’s declaration [Ex. 2007,
`
`¶¶ 35-36 ], that do not support that proposition. In fact, Papst has offered no
`
`evidence to support this statement, and at his deposition, Mr. Gafford conceded
`
`that Yamamoto’s hard disk need not be directly connectable to an external
`
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`computer. Ex. 1412, Tr. at 14:20-15:7. Without that assumption, the rest of
`
`Papst’s argument fails.
`
`Yamamoto discloses that hard disk 71 is “mounted in image recording
`
`device 67” (col. 23:61-64), which together with recording device control circuit 66
`
`are attached to the camera:
`
`The recording device control circuit 66 and the image recording
`
`device 67 may be attached on the bottom surface of the camera.
`
`Electrical connectors (not shown) may be provided at the bottom
`
`surface of the camera to connect the record device control circuit 66 to
`
`the system control circuit 20 and image processing circuit 63. (Col.
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`7:54-60).
`
`Thus, as Mr. Gafford concedes [Ex. 1412, Tr. 12:10-17, 13:3-8], the R/D control
`
`circuit 66 and image recording device 67 with hard disk 71 mounted can be housed
`
`in a separately mountable assembly attachable to the camera. While Yamamoto
`
`describes hard disk 71 as “removable,” it says nothing about it being directly
`
`connectable to an external computer. A POSITA would have understood that
`
`“removable” in this context would mean removable from the camera, and could
`
`include a hard disk mounted in an image recording device that is itself along with
`
`R/D control circuit 66 removable from the Yamamoto camera (referred to
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`13
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`collectively herein as the Yamamoto “Storage Unit”, as highlighted in red in the
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`figure below):
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`Storage
`Unit
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`Mr. Gafford agrees that a POSITA would have understood that Yamamoto
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`discloses such an implementation. [Ex. 1412, Tr. 12:10-17, 13:3-8]. It makes
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`sense for the Storage Unit and the hard disk to be removable to make the camera
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`more streamlined, but there is no requirement that the hard disk be directly
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`connectable to an external computer, whether through a cable connection or any
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`other way. [Ex. 1412, Tr. 14:20-15:7].
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`Moreover, Yamamoto teaches away from such a scenario. Yamamoto
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`discloses that the external computer can communicate with the camera using SCSI
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`commands when the camera is in “external hard disk mode.” [Col. 23:30-38]. All
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`Yamamoto’s disclosure of this embodiment in columns 22 and 23assumes that the
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`hard drive is mounted in the camera. It makes sense that the Storage Unit
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`(including the hard disk) would be as streamlined as possible, since it is attached to
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`a camera; with an external hard disk dangling from the Yamamoto camera by a
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`cable as Papst seems to suggest [Resp. at 31-33], the camera would be unwieldy to
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`operate. Instead, the camera would be more streamlined if the hard disk were
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`mounted inside the Storage Unit in a housing directly attachable through electrical
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`connection to the Yamamoto camera, as it is described explicitly in Yamamoto.
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`[Col. 7:64-60].
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`The reason Papst argues that Yamamoto’s hard disk is a SCSI drive
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`separately attachable to a computer, is to make the leap of logic that such a hard
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`disk would have its own SCSI controller and therefore Yamamoto’s processor
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`would not be needed during data transfer. [Resp. at 32-33]. But, as Mr. Gafford
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`concedes, a POSITA would have understood that hard disk 71 need not be a SCSI
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`hard drive, and could instead be any other type of hard drive available at the time.
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`[Ex. 1412, Tr. 13:16-21]. As Mr. Gafford further agrees, a POSITA would have
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`understood that non-SCSI devices would require a SCSI emulator in order for an
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`external computer to access them using SCSI commands. [Ex. 1412, Tr. at 23:7-
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`15]. Such a SCSI emulator would be involved in data transfer [Ex. 1413, ¶ 5], as
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`described in more detail in the next section below.
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`4.
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`A POSITA Would Have Understood That Yamamoto
`Would Require A SCSI Emulator For A Computer Using
`SCSI To Communicate With A Non-SCSI Hard Disk With
`The Processor Executing Instructions For Automatic File
`Transfer.
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`Papst’s final assumption is that even if the Yamamoto hard disk is not an
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`external SCSI disk (with its own SCSI controller), Yamamoto would nevertheless
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`bypass SCC 20 for every aspect of data transfer, again relying on Papst’s incorrect
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`assumption that SCC 20 is not powerful enough to handle data transfer. [Resp. at
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`33-37]. This argument also fails, for a number of reasons.
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`First, as explained above in section II.A.1, at the priority date of the
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`Tasler ’746 patent a POSITA would have known that there were available
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`numerous microprocessors fully capable of performing the operations required to
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`control the Yamamoto camera, including data transfer. [Ex. 1413, ¶¶ 5, 6].
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`Second, such processors were fully capable of performing the relatively
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`simple task of emulating a SCSI device, when accessing a non-SCSI device such
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`as an IDE hard drive or a non-SCSI optical drive. [Ex. 1413, ¶ 7; Ex. 1403, ¶ 73].
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`A POSITA would have known that a SCC emulating a storage device such as a
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`SCSI hard drive would have been fully capable of supporting an automated file
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`transfer process. [Ex. 1413, ¶ 10; Ex. 1403, ¶¶ 102-114].
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`Third, Yamamoto also discloses that its data storage device is not limited to
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`a hard disk. The memory medium mounted in image recording device 67 could be
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`“an IC memory card” [col. 7:53] or “a magneto-optic recording medium such as a
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`magneto-optic disc” [col. 23:63-64]. Thus, a POSITA would have understood that
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`Yamamoto’s SCC is able to communicate with various types of memory devices,
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`including different types of hard drives. In the embodiment described in columns
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`22 and 23 of Yamamoto, the external computer need not be aware of the type of
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`storage mounted in the Yamamoto camera. In hard drive mode, the computer can
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`simply communicate using SCSI hard disk commands; a POSITA would have
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`understood that the Yamamoto camera provides SCSI emulation to communicate
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`between the computer on the one hand and the memory storage on the other. [Ex.
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`1413, ¶ 7]. Mr. Gafford concedes that a POSITA would have understood that any
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`type of hard disk besides SCSI would require a SCSI emulator in the Yamamoto
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`camera to facilitate communication with the external computer using a SCSI
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`interface. [Ex. 1412, Tr. 23:7-15]. Such an emulator would also be necessary if
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`the memory medium is another type of mass storage. A POSITA would have
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`understood that there are a variety of ways to implement SCSI emulation,
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`including through a set of instructions executed by a processor, such as the
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`Yamamoto SCC. [Ex. 1413, ¶ 7; Ex. 1412, Tr. 23-24]. In that implementation,
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`Yamamoto’s SCC would provide the SCSI emulation that would allow and control
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`the data transfer process.
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`Fourth, while Papst concedes that Yamamoto’s SCC is involved in
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`processing other SCSI commands such as the response to the SCSI INQUIRY [Col.
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`23; Resp. at 28; Ex. 1412, Tr. 20:20-21:4; 22:7-12; 22:19-25], Papst contends that
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`the SCC is not involved in any way in the data transfer process. Papst’s position
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`requires that a POSITA would have understood that the data flow from the
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`Yamamoto camera to the external computer must be through the path highlighted
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`in red in the illustration below [Response at 35]:
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`But Yamamoto does not describe such a pathway. The Storage Unit
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`(through R/D control circuit) attaches directly to SCC 20 and the image processing
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`circuit 63. [Col. 7:54-59]. The SCC controls the operation of the R/D control
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`circuit 66 [col. 7:60-63] and the image processing circuit 63 [col. 7:35-36]. When
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`writing image data to hard disk 71, the image data passes through the image
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`processing circuit 63 where it receives shading and gamma correction and other
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`image processing, on its way to R/D control circuit 66. [Col. 7:33-35; 7:48-54].
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`The pathway highlighted in green in the illustration above is described in
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`Yamamoto as the path from the image processing circuit 63 to the R/D control
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`circuit 66 when writing data. Id. Conversely, there is no reason to pass data
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`through image processing circuit 63 when reading data from device storage, as the
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`image processing has already been completed. Thus, Yamamoto does not describe
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`any data flow directly from the R/D control circuit 66 to the image processing
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`circuit 63. [Col. 7:33-35; 7:48-63]. Nowhere does Yamamoto disclose the Storage
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`Unit being attached directly to interface circuit 65.
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`Although a POSITA reading Yamamoto may have envisioned a data path as
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`theorized by Papst, a POSITA would also have understood that the Storage Unit
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`could be attached directly to SCC 20 and image processing circuit 63—as is
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`explicitly disclosed in Yamamoto—and that it is not necessary for it to be attached
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`directly to interface circuit 65. During file transfer from the hard disk to the
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`computer, the file data then passes through either SCC 20 or image processing
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`circuit 63. [See col. 7:54-59]. Image processing is already done, so there would be
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`no reason for the image processing circuit to be involved in data transfer. [Col.
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`7:33-36]. Instead, it is clear from Yamamoto’s specification that the only
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`described path from the R/D control circuit 66 to the interface circuit 65 is through
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`SCC 20, as highlighted in blue in the illustration above. If this pathway is
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`followed during data transfer—as a POSITA would have understood was one way
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`Petitioners’ Reply in IPR2016-01213
`U.S. Patent No. 8,504,746
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`to implement Yamamoto, indeed, the way specifically described in the
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`specification—then SCC 20 not only allows data transfer, but controls the data
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`transfer operation. [Ex. 1413, ¶¶ 8, 9]. By providing SCSI emulation, controlling
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`the timing of read operations to the data storage, and passing data through from
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`R/D control circuit 66 to inte