Case 1 :07 -mc-00493-RMC Document 414-2 Filed 01 /20/11 Page 23 of 202
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`asserted claim is found.
`
`Invalidity ch.arts for each of these items of prior art are attached to these Invalidity
`
`Contentions with an Exhibit number as indicated in the column titled "Reference
`
`ldentifier/Jnvalidity Chart". The identifiers beginning with "A" refer to references and
`
`associated charts for an individual prior art reference. The identifiers beginning with "B" refer to
`
`charts that combine references in combinations that establish obviousness.
`
`The charts provide exemplary portions of each patent or printed publication where each
`
`element of each asserted claim may be found. The Camera Manufacturers, however, maintain
`
`that a person of ordinary skill in the art of the asserted patents would determine what is
`
`described, disclosed, and taught by these publications based on the entire patent or printed
`
`publication. The Camera Manufacturers, therefore, reserve their right to rely on any and all
`
`portions of each patent or printed publication to establish invalidity under 35 U.S.C. §§ I 02 and
`
`103 in the present action.
`
`As shown in the invalidity charts attached as Exhibits A, A I-A 19, A2 I-A 74, A 76-AJ 04,
`
`and B 1-B 13, the Camera Manufacturers contend that the item of prior art listed in the preceding
`
`section anticipate, expressly or inherently, and/or render obvious one or more claims of the '399
`
`and/or '449 Patents. Alternatively, the Camera Manufacturers contend that each of the items of
`
`prior art listed in the preceding section renders the asserted claims of the '399 and/or '449
`
`Patents obvious, either alone or in combination with what was known to those of ordinary skill in
`
`the art at the time of the alleged invention of the subject matter claimed in the asserted patents. 3
`
`ln addition, the Camera Manufacturer contend that each of the asserted claims are
`
`obvious in light of the combined disclosures of any one or more of the references, a discussed in
`
`more detail below with respect to each of the asserted claims and as shown in the invalidity
`
`charts for each individual reference.
`
`3 The Camera Manufacturers' contentions that the prior art identified in these Invalidity Contentions renders the
`asserted claims obvious under 35 U.S.C. § 103 are in no way an admission or suggestion that each reference does
`not independently anticipate the asserted claims under 35 U.S.C. § 102.
`
`22
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`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 24
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`

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`Case 1 :07 -mc-00493-RMC Document 414-2 Filed 01 /20/11 Page 24 of 202
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`As a preliminary matter, the Camera Manufacturers note that the U.S. Supreme Court
`
`recently addressed the test for obviousness under 35 U.S.C. § 103 in KSR Int'! Co. v. Teleflex
`
`Inc., 127 S.Ct. 1727 (2007), rejecting the Federal Circuit's rigid "teaching, suggestion, or
`
`motivation" requirement in favor of a flexible, functional approach in which an explicit finding
`
`of a "motivation" to combine p1ior art references is not required to establish obviousness. The
`
`Supreme Court held that it is sufficient that a combination of elements was "obvious to try"
`
`holding that, "[w]hen there is a design need or market pressure to solve a problem and there are a
`
`finite number of identified, predictable solutions, a person of ordinary skill has good reason to
`
`pursue the known options within his or her technical grasp." Id. at 1742.4
`
`The Camera Manufacturers have provided numerous combinations of charts for
`
`combinations rendering obvious of references that include discussions about motivations to
`
`combine the appertaining references. However, the Camera Manufacturers provide the following
`
`comments of a general nature that supplement the discussions in the individual charts
`
`themselves.
`
`The Camera Manufacturers contend as a general matter that, given the anticipated design
`
`requirements and state of the art for multi-purpose interface devices, as well as the predictable
`
`nature of the art of SCSI and USB interface standards, analog peripheral devices and various data
`
`transmission protocols and drivers, it would have been (and indeed was) obviou for one of skill
`
`in the art to make multipurpose interfaces as required by the asserted claim .
`
`The Camera Manufacturers also contend that one of skill in the art, at the time the alleged
`
`inventions were made, would have been motivated to combine the references disclosed herein in
`
`such a way as to reach the alleged inventions. The teaching, suggestion, or motivation to
`
`combine these references, although not required, is found, explicitly or implicitly and as
`
`4 See also DyStar Texli(/arben CmbH & Co Deutsch/and KC v. C.H. Patrick Co., 464 F.3d 1356 1368 (Fed. Cir.
`2006) ("we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be
`gleaned from the prior art as a whole but when the ' improvement' is technology-independent and the combination
`of references results in a product or process that is more desirable, for example because it is stronger, cheaper,
`cleaner faster, lighter smaller more durable, or more efficient ... ").
`
`23
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 25
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`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 25 of 202
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`discussed in more detail in the charts and below, in one or more of the following: his or her own
`
`knowledge or common sense; the prior art references themselves and/or the prior art as a whole,
`
`including the interrelated teachings of multiple prior art references; the subject matter
`
`acknowledged as prior art in the '399 and '449 Patents; the nature of the problem to be solved
`
`and the existence of similar improvements in similar applications; design incentives and other
`
`market forces, including the advantages of creating a superior and more desirable product and
`
`the effects of demands known to the design community or present in the marketplace; the ability
`
`to implement the alleged invention as a predictable variation of the prior art; improvements in
`
`similar devices; the interrelated teachings of multiple prior art references; any needs or problems
`
`known in the field and addressed by the '399 and '449 Patents; and the number of identified,
`
`predictable solutions to the problem addressed by the '399 and '449 Patents.
`
`A motivation to combine the teachings of the references also existed when a given
`
`combination would result in a product that is more desirable because, for example, it would be
`
`stronger, harder, cheaper, or more durable. In addition, the subject matter and disclosures in
`
`several of the prior art references cited herein are evidence that a motivation to combine various
`
`concepts described herein did, in fact, exist, and they were, in fact, combined.
`
`Specific combinations of references that render the asserted claims obvious are identified
`
`in the charts and below, together with exemplary descriptions of specified combinations.
`
`However, Papst's continued insistence of disregarding the Court's claim construction has
`
`necessitated an inclusive approach to the analysis and identification of prior art where a
`
`particular element may not be present in the prior art under the Court's construction, but
`
`nonetheless present under Papst's rejected construction. The following charts are based on
`
`Papst's rejected construction of one or more claim elements relating to the "interface device", the
`
`"second connecting device", and the "virtual file system": A 7, A9, AlO, Al 2, AB, Al 9, A21,
`
`A23, A25, A26, A28, A31/A65, A33, A35-A37, A46, A52-58, A62-64, A67, A69-72, A78-80,
`
`A85, A86, A88, A94, A96, Al 00, A I 03, Al 04. ]nclusion in this list does not mean that Papst's
`
`construction was used exclusively for the analysis. Again, the identification of the prior art in
`
`24
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 26
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`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 26 of 202
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`these charts based in part on Papst's rejected construction responds to Papst's insistence on
`
`relying on those same rejected constructions in its Final Infringement Contentions.
`
`In addition to the invalidity charts, attached as Exhibit A is an index identifying in
`
`spreadsheet format the individual limitations from Papst's asserted claims which the Camera
`
`Manufacturers believe are disclosed by each reference. This index, in conjunction with the
`
`individual invalidity charts, demonstrates the various possible combinations of disclosures from
`
`one or more of the above references that the Camera Manufacturers believe anticipate and/or
`
`render obvious each asserted claim of the '399 and '449 Patents.
`
`Anticipation/Obviousness in Light of the Intrinsic Record and the Prior Art
`
`As the intrinsic record of the Patents-in-Suit and the references cited by the Camera
`
`Manufacturers herein demonstrate, the problems identified by the inventor of the Patents-in-Suit
`
`and his alleged solutions to those problems were already well known to persons of ordinary skill
`
`in the art of multi-purpose interfaces at the time of the alleged invention. These well-known
`
`problems and their solutions included widespread efforts in the computer and consumer
`
`electronics industries to make digital products, including digital cameras, seamlessly compatible
`
`with computers. For example, the patent specification acknowledges as admitted prior art (APA)
`
`the state of the art at the time as follows:
`
`In a preferred embodiment of the present invention in which the
`interface device 10 simulates a hard disk to the host device, the
`interface device is automatically detected and readied for operation
`when the host system is powered up or booted. This corresponds to
`the plug-and-play standard which is currently finding increasingly
`widespread use. The user is no longer responsible for installing the
`interface device 10 on the host device by means of specific drivers
`which must also be loaded; instead the interface device 10 is
`automatically readied for operation when the host system is
`booted.
`
`'399 Patent, col. 8, ll. 1-11 (emphasis added).
`
`Further, the "Description of Prior Art" section of the patent specification explains that it
`
`was well known in the art for a host device to communicate with an interface device by means of
`
`25
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 27
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`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 27 of 202
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`an interface-specific driver installed in the host device. '399 Patent, col. 2, I. 15 - col. 3, I. 21.
`
`Specifically, this section of the specification refers to an IBM Technical Disclosure Bulletin
`
`which discloses "an interface which connects a host device to a peripheral device via a floppy
`
`disk drive interface." '399 Patent, col. 3, II. 8-10. Further, this "interface makes it possible to
`
`attach not only a floppy disk drive but also a further peripheral device to the FDD host controller
`
`of a host device. The host device assumes that a floppy disk drive is always attached to its floppy
`
`disk drive controller and communication is initiated if the address is correct." '399 Patent, col. 3,
`
`II. 13-18.
`
`Indeed, both the inventor and the Examiner of the '399 Patent acknowledged this state of
`
`the art during prosecution of the '399 Patent application. Jn the first office action during
`
`prosecution of the '399 Patent application, the Examiner stated as follows:
`
`Claims 1-16 are rejected under 35 U.S.C. 103(a) as being
`unpatentable over Applicant's admission of prior art [AAP A] and
`McNeill, Jr. et al. (U.S. Patent No. 5,499,378) .
`
`. . . AAP A teaches an interface for communication between a host
`device and a transmit/receive device comprising:
`
`a processor [Applicant's specification, p. 3, line 8];
`a mem01y [Applicant's specification, p. 3, line 9];
`a first connecting device for interfacing the host device with the interface
`device via a multipurpose interface of the host device [Applicant's
`specification, p. 3, lines 1-3];
`a second connecting device for interfacing the interface device with the data
`transmit/receive device [Applicant's specification, p. 3, lines 9-12];
`
`AAP A teaches the host device communicates with the interface
`device by means of an interface-specific driver installed in the host
`device .. .
`
`It would have been obvious to one of ordinary skill in the art at the
`time the invention was made to combine the teachings of AAP A
`and McNeill, Jr. et al. because it would enhance the system by
`allowing
`the host device
`communicates
`[sic] with
`a
`transmit/receive device, through an interface device, by means of
`the standard driver in the host device instead of installing a device-
`
`26
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 28
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`

`
`Case 1 :07 -mc-00493-RMC Document 414-2 Filed 01 /20/11 Page 28 of 202
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`specific driver into the host device.
`
`See '399 Patent Application, Office Action of 12/ 18/0 l.
`
`lmportantly, the applicant did not dispute these findings, nor was it disputed that the
`
`McNeil!, Jr. reference constituted prior art. See '399 Patent Applicant's Response to Office
`
`Action of 12/ 18/01. Instead, the applicant amended the claims to include analog limitations, and
`
`stated: "this rejection is respectfully traversed with respect to the claims as amended .... In
`
`particular, the data transmit/receive device is arranged for providing analog data .... Since the
`
`second connecting device includes sample and hold circuits 1515 and A/ D converter 1503, it is
`
`clear that the data transmit/receive device ... provides analog data." ld. (emphasis added). Then,
`
`with regard to McNeill, Jr., the applicant admitted that the reference discloses (J) "provid[ing]
`
`access to a non-SCSJ device via a SCSJ bus," (2) requests are sent "in accordance with the SCSJ
`
`protocol," and (3) the host can "access the [non-SCSJ device] via SCSI commands." ld. The
`
`applicant distinguished over McNeill, Jr. by arguing that it did not disclose the analog limitations
`
`added by the claim amendments, nor did it disclose that the interface device "lies to the host
`
`computer as to the real nature of the data transmit/receive device." Id.
`
`Accordingly, both the inventor and Examiner confirmed important details about the state
`
`of the art at the time of the alleged invention in the '399 and '449 Patents. Specifically, it was
`
`well known in the art for a host device to communicate with a peripheral device or interface
`
`device by means of standard drivers and command protocols which were already installed on the
`
`host device.5 The applicant's tatements distinguishing over the prior art, as discussed above,
`
`made it clear that the inventor considered other limitations in l1is patent claims the point of
`
`novelty over the state of the art, specifically: (l) that the data transmit/receive device provides
`
`analog data to the interface device, and (2) that the interface device lies to the ho t computer as
`
`to the real nature of the data transmit/receive device.
`
`5 Further as demonstrated by the Murata reference (U .S. Patent No. 5,506 692) which was before the '399 Patent
`Examiner, it was also well known in the art for an interface device to use virtual file systems to make the host
`computer think there were actual files on the data transmit/receive device. See Exhibit A9.
`
`27
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 29
`
`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 29 of 202
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`As demonstrated by the prior art disclosures herein, it would have been (and indeed was)
`
`obvious to one skilled in the art to include such "analog" and "lying" characteristics in interface
`
`devices at the time of the alleged invention of the '399 and '449 Patents. Accordingly, under a
`
`proper understanding of the state of the art and of the intrinsic record of the '399 and '449
`
`Patents, allowance of the asserted claims in this action is plainly refuted, and each of the asserted
`
`claims is demonstrably anticipated and/or rendered obvious as set forth herein, including within
`
`the invalidity charts attached to these Invalidity Contentions.
`
`The Camera Manufacturers have further provided separate references disclosing certain
`
`aspects of the dependent claims and incorporated these into the accompanying charts-however,
`
`in some instances, such reference are supplemental inasmuch as the applicants admitted to
`
`various aspects as known in the prior art.
`
`For example, the prior art reference SCSI Bus and IDE Interface Book (A47) has been
`
`used, in part, to address the transmission of the INQUIRY instruction. However, in the '449
`
`Patent, at 5:2-18, the patentee clearly admits that the fNQUlRY instruction is known by those
`
`skilled in the art. Furthermore, the notion that one would not consider the SCSI specification
`
`when designing a device that is intended to appear to the host as a SCSI device is extremely
`
`untenable by any standard.
`
`Claim by Claim Analysis
`
`Below is an exemplary and representative invalidity analysis for each claim in the '399
`
`and '449 Patents that Papst has asserted in this action. The Camera Manufacturers assert that the
`
`prior art references cited in these contentions may be combined in a variety of ways (see, e.g.,
`
`Exhibits A, A1-A19, A2l-A74, A76-AJ04, and Bl-13), and that one of ordinary skill in the art
`
`would have known how to incorporate or substitute other references disclosing similar subject
`
`matter:
`
`28
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 30
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`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 30 of 202
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`'399 Patent, Claim 1
`
`Claim I of the '399 Patent is anticipated by at least the references identified in Table V:
`
`Summary Invalidity Chart as anticipating claim 1 of the '399 Patent, as indicated in Exhibit A
`
`and the attached claim charts Al-Al 9, A21-A74, A76-AI04.
`
`Claim 1 of the '399 Patent would also have been obvious with respect to each of the
`
`references above, whether alone, in combination with other references disclosing similar subject
`
`matter as shown in the attached invalidity charts, or in light of the common knowledge of those
`
`skilled in the art at the time of alleged invention. A lthough not limited to these combinations, as
`
`identified in Table V: Summary Invalidity Chart claim 1 of the '399 Patent would have been
`
`obvious (see Exhibit BJ) over DeskLab 216 (see Exhibit Al 01) in combination with U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 1 would also have been obvious (see Exhibit B2) over the SCSI Bus Book (see
`
`Exhibit A47) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim I would also have been obvious (see Exhibit B3) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A68) in view of U nited States Patent No. 5,508,821 (see Exhibit
`
`Al O), United States Patent No. 5,371,885 (see Exhibit A86) and the SCSI Bus Book (see Exhibit
`
`A47).
`
`Claim I would also have been obvious (see Exhibit B4) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A68) in view of the MS-DOS Book (see Exhibit A97) and the SCSI
`
`Bus Book (see Exhibit A47).
`
`Claim 1 would also have been obvious (see Exhibit B5) over United States Patent No.
`
`5,23J,501 (see Exhibit A88) in view of the SCSI Bus Book (see Exhibit A47), and U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 1 would also have been obvious (see Exhibit B6) over the Tasler Thesis (see
`
`Exhibit A48) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim I would also have been obvious (see Exhibit B7) over the Universal Laboratory
`
`Interface User's Manual (ULJ) (see Exhibit Al02) in view of Francis (87).
`
`29
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 31
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`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 31 of 202
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`Claim 1 would also have been obvious (see Exhibit B8) over European Patent Number
`
`0705037 (see Exhibit A89) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim I would also have been obvious (see Exhibit B9) over United States Patent No.
`
`5,129,036 (see Exhibit A87) in view of U .S. Patent No. 5,506,692 (see Exhibit A9), the SCSI
`
`Bus Book (see Exhibit A47), and the CS5326 Datasheet (see Exhibit A98).
`
`Claim I would also have been obvious (see Exhibit BI 0) over the Kodak DCS200 User's
`
`Manual (A56) in view of U.S. Patent No. 5,506,692 (see Exhibit A9), and the SCSI Bus Book
`
`(A47).
`
`Claim 1 would also have been obvious (see Exhibit Bl I) over the Kodak DCSl, DCS3,
`
`DCS5 User's Manual (A58) in view ofU.S. Patent No. 5,506,692 (see Exhibit A9), and the SCSI
`
`Bus Book (A47).
`
`Claim I would also have been obvious (see Exhibit B 12) over the Universal Laboratory
`
`Interface User's Manual (ULI) (Al 02) in view of United States Patent No. 5,802,325 (A l 7).
`
`Claim I would also have been obvious (see Exhibit B 13) over United States Patent No.
`
`5,815,205 (A21) in view of any of United States Patent Nos. 6,111,604; 6,344,875; 7,046,276
`
`(A37), and United States Patent No. 5,742,934 (A104).
`
`The reasons for obviousness and motivations to combine these references in the manner
`
`indicated above can be found in Exhibits 81 -13.
`
`'399 Patent, Claim 2
`
`Claim 2 of the '399 Patent is anticipated by at least the references identified in Table V:
`
`Summary Invalidity Chart as anticipating claim 2 of the '399 Patent, as indicated in Exhibit A
`
`and the attached claim charts Al-A J9, A2l-A74, A76-A I 04.
`
`Claim 2 of the '399 Patent would also have been obvious with respect to each of the
`
`references above, whether alone, in combination with other references disclosing similar subject
`
`matter as shown in the attached invalidity charts, or in light of the common knowledge of those
`
`skilled in the art at the time of alleged invention. Although not limited to these combinations, as
`
`identified in Table V: Summary Invalidity Chart claim 2 of the '399 Patent would have been
`
`30
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 32
`
`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 32 of 202
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`obvious (see Exhibit Bl) over DeskLab 216 (see Ex hibit AlOl) in combination with U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 2 would also have been obvious (see Exhibit B2) over the SCSI Bus Book (see
`
`Exhibit A47) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 2 would also have been obvious (see Exhibit B3) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A6S) in view of United States Patent No. 5,508,S21 (see Exhibit
`
`Al 0), United States Patent No. 5,37 l ,SS5 (see Exhibit AS6) and the SCSI Bus Book (see Exhibit
`
`A47).
`
`Claim 2 would also have been obvious (see Exhibit B4) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A6S) in view of the MS-DOS Book (see Exhibit A97) and the SCSI
`
`Bus Book (see Exhibit A47).
`
`Claim 2 would also have been obvious (see Exhibit B5) over United States Patent No.
`
`5,231 ,501 (see Exhibit ASS) in view of the SCSI Bus Book (see Exhibit A47), and U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 2 would also have been obvious (see Exhibit B6) over the Tasler Thesis (see
`
`Exhibit A4S) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 2 would also have been obvious (see Exhibit B7) over the Universal Laboratory
`
`Interface User's Manual (ULI) (see Exhibit A102) in view of Francis (B7).
`
`Claim 2 would also have been obvious (see Exhibit BS) over European Patent Number
`
`0705037 (see Exhibit AS9) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 2 would also have been obvious (see Exhibit B9) over United States Patent No.
`
`5,129,036 (see Exhibit AS7) in view of U.S. Patent No. 5,506,692 (see Exhibit A9), the SCSl
`
`Bus Book (see Exhibit A47), and the CS5326 Datasheet (see Exhibit A9S).
`
`Claim 2 would also have been obvious (see Exhibit Bl 0) over the Kodak DCS200 User's
`
`Manual (A56) in view of U.S. Patent No. 5,506,692 (see Exhibit A9), and the SCSI Bus Book
`
`(A47).
`
`31
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 33
`
`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 33 of 202
`
`Claim 2 would also have been obvious (see Exhibit Bl I) over the Kodak DCSl, DCS3,
`
`DCS5 User's Manual (A58) in view ofU.S. Patent No. 5,506,692 (see Exhibit A9), and the SCSI
`
`Bus Book (A47).
`
`Claim 2 would also have been obvious (see Exhibit B 12) over the Universal Laboratory
`
`Interface User's Manual (ULI) (Al 02) in view of United States Patent No. 5,802,325 (A l 7).
`
`Claim 2 would also have been obvious (see Exhibit B 13) over United States Patent No.
`
`5,815,205 (A21) in view of any of United States Patent Nos. 6,111,604; 6,344,875; 7,046,276
`
`(A37), and United States Patent No. 5,742,934 (A104).
`
`The reasons for obviousness and motivations to combine these references in the manner
`
`indicated above can be found in Exhibits 81 -13.
`
`'399 Patent, Claim 3
`
`Claim 3 of the '399 Patent is anticipated by at least the references identified in Table V:
`
`Summary Invalidity Chart as anticipating claim 3 of the '399 Patent, as indicated in Exhibit A
`
`and the attached claim charts Al-AJ9, A2l-A74, A76-A I 04.
`
`Claim 3 of the '399 Patent would also have been obvious with respect to each of the
`
`references above, whether alone, in combination with other references disclosing similar subject
`
`matter as shown in the attached invalidity charts, or in light of the common knowledge of those
`
`skilled in the art at the time of alleged invention. Although not limited to these combinations, as
`
`identified in Table V: Summary Invalidity Chart claim 3 of the '399 Patent would have been
`
`obvious (see Exhibit BJ) over DeskLab 216 (see Exhibit Al 01) in combination with U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 3 would also have been obvious (see Exhibit B2) over the SCSJ Bus Book (see
`
`Exhibit A47) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 3 would also have been obvious (see Exhibit B3) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A68) in view of United States Patent No. 5,508,821 (see Exhibit
`
`A 10), Un ited States Patent No. 5,371 ,885 (see Exhibit A86) and the SCSI Bus Book (see Exhibit
`
`A47).
`
`32
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 34
`
`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 34 of 202
`
`Claim 3 would also have been obvious (see Exhibit B4) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A6S) in view of the MS-DOS Book (see Exhibit A97) and the SCSI
`
`Bus Book (see Exhibit A47).
`
`Claim 3 would also have been obvious (see Exhibit B5) over United States Patent No.
`
`5,231 ,501 (see Exhibit ASS) in view of the SCSI Bus Book (see Exhibit A47), and U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 3 would also have been obvious (see Exhibit B6) over the Tasler Thesis (see
`
`Exhibit A4S) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 3 would also have been obvious (see Exhibit B7) over the Universal Laboratory
`
`Interface User's Manual (ULI) (see Exhibit A102) in view of Francis (B7).
`
`Claim 3 would also have been obvious (see Exhibit BS) over European Patent Number
`
`0705037 (see Exhibit AS9) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 3 would also have been obvious (see Exhibit B9) over United States Patent No.
`
`5,129,036 (see Exhibit AS7) in view of U.S. Patent No. 5,506,692 (see Exhibit A9), the SCSl
`
`Bus Book (see Exhibit A47), and the CS5326 Datasheet (see Exhibit A9S).
`
`Claim 3 would also have been obvious (see Exhibit Bl 0) over the Kodak DCS200 User's
`
`Manual (A56) in view of U.S. Patent No. 5,506,692 (see Exhibit A9), and the SCSI Bus Book
`
`(A47).
`
`Claim 3 would also have been obvious (see Exhibit B 11) over the Kodak DCS 1, DCS3,
`
`DCS5 User's Manual (A5S) in view of U.S. Patent No. 5,506,692 (see Exhibit A9), and the SCS]
`
`Bus Book (A47).
`
`Claim 3 would also have been obvious (see Exhibit B 12) over the Universal Laboratory
`
`Interface User's Manual (ULI) (A102) in view of United States Patent No. 5,S02,325 (Al 7).
`
`Claim 3 would also have been obvious (see Exhibit B 13) over United States Patent No.
`
`5,Sl5,205 (A21) in view of any of United States Patent Nos. 6,111,604; 6,344,S75; 7,046,276
`
`(A37), and United States Patent No. 5,742,934 (Al 04).
`
`33
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 35
`
`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 35 of 202
`
`The reasons for obviousness and motivations to combine these references in the manner
`
`indicated above can be found in Exhibits 81 -13.
`
`'399 Patent, Claim 5
`
`Claim 5 of the '399 Patent is anticipated by at least the references identified in Table V:
`
`Summary Invalidity Chart as anticipating claim 5 of the '399 Patent, as indicated in Exhibit A
`
`and the attached claim charts Al-AJ9, A2l-A74, A76-A I 04.
`
`Claim 5 of the ' 399 Patent would also have been obvious with respect to each of the
`
`references above, whether alone, in combination with other references disclosing similar subject
`
`matter as shown in the attached invalidity charts, or in light of the common knowledge of those
`
`skilled in the art at the time of alleged invention. Although not limited to these combinations, as
`
`identified in Table V: Summary Invalidity Chart claim 5 of the '399 Patent would have been
`
`obvious (see Exhibit BJ) over DeskLab 216 (see Exhibit Al 01) in combination with U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 5 would also have been obvious (see Exhibit B2) over the SCSJ Bus Book (see
`
`Exhibit A47) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 5 would also have been obvious (see Exhibit B3) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A68) in view of United States Patent No. 5,508,821 (see Exhibit
`
`A 10), Un ited States Patent No. 5,371,885 (see Exhibit A86) and the SCSI Bus Book (see Exhibit
`
`A47).
`
`Claim 5 would also have been obvious (see Exhibit B4) over United States Patent No.
`
`5,463,772 (see Exhibit A5/A68) in view of the MS-DOS Book (see ExhibitA97) and the SCSJ
`
`Bus Book (see Exhibit A47).
`
`Claim 5 would also have been obvious (see Exhibit BS) over United States Patent No.
`
`5,231,501 (see Exhibit A88) in view of the SCSI Bus Book (see Exhibit A47), and U.S. Patent
`
`No. 5,506,692 (see Exhibit A9).
`
`Claim 5 would also have been obvious (see Exhibit B6) over the Tasler Thesis (see
`
`Exhibit A48) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`34
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008, p. 36
`
`

`
`Case 1 :07-mc-00493-RMC Document 414-2 Filed 01/20/11 Page 36 of 202
`
`Claim 5 would also have been obvious (see Exhibit B8) over European Patent Number
`
`0705037 (see Exhibit A89) in view of U.S. Patent No. 5,506,692 (see Exhibit A9).
`
`Claim 5 would also have been obvious (see Exhibit B9) over United States Patent No.
`
`5,129,036 (see Exhibit A87) in view of U .S. Patent No. 5,506,692 (see Exhibit A9), the SCSI
`
`Bus Book (see Exhibit A47), and the CS5326 Datasheet (see Exhibit A98).
`
`Claim 5 would also have been obvious (see Exhibit BI 0) over the Kodak DCS200 User's
`
`Manual (A56) in view of U.S. Patent No. 5,506,692 (see Exhibit A9), and the SCSI Bus Book
`
`(A47).
`
`Claim 5 would also have been obvious (see Exhibit Bl I) over the Kodak DCSl, DCS3,
`
`DCS5 User's Manual (A58) in view ofU.S. Patent No. 5,506,692 (see Exhibit A9), and the SCSI
`
`Bus Book (A47).
`
`Claim 5 would also have been obvious (see Exhibit B 12) over the Universal Laboratory
`
`Interface User's Manual (ULI) (Al 02) in view of United States Patent No. 5,802,325 (Al 7).
`
`Claim 5 would also have been obvious (see Exhibit B 13) over United States Patent No.
`
`5,815,205 (A21) in view of any of United States Patent Nos. 6,111,604; 6,344,875; 7,046,276
`
`(A37), and United States Patent No. 5,742,934 (A104).
`
`The reasons for obviousness and motivations to combine these references in the manner
`
`indicated above can be found in Exhibits 81 -13.
`
`'399 Patent, Claim 7
`
`Claim 7 of the '399 Patent is anticipated by at least the references identified in Table V:
`
`Summary Invalidity Chart as anticipating claim 7 of the '399 Patent, as indicated in Exhibit A
`
`and the attached claim charts Al-A J9, A2l-A74, A76-A I 04.
`
`Claim 7 of the '399 Patent would also have been obvious with respect to each of the
`
`references above, whether alone, in combination with other references disclosing similar subject
`
`matter as shown in the attached invalidity charts, or in light of the common knowledge of those
`
`skilled in the art at the time of alleged invention. Although not limited to these combinations, as
`
`identified in Table V: Summary Invalidity Chart claim 7 of the '399 Patent would have been
`
`35
`
`Papst Licensing GmbH & Co. KG - Exhibit 2008,