UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`LG ELECTRONICS, INC.,
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`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO., KG,
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`Patent Owner.
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`CASE: IPR2016-017331
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`Patent No. 9,189,437
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`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
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` LG Electronics, Inc., who filed a Petition in IPR2017-01038, has been joined as a
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` 1
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`petitioner in this proceeding.
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`

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`
`
`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ....................................................................................... 1
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`Claim Construction ...................................................................................... 3
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`A.
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`B.
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`C.
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`Papst Improperly Adds Unclaimed Elements to the “Automatic
`File Transfer Process” Limitation. ..................................................... 4
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`Papst’s Disagreement With the Board’s Construction of
`“Without Requiring Any End User to Load Software”
`Contradicts the Disclosure of the Specification and Claims. .............. 7
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`Papst Adds Unclaimed Elements to the “Analog to Digital
`Converter” Limitation. ....................................................................... 7
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`III. TI Data Sheet ............................................................................................... 9
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`IV. Papst's Arguments Are Directed to Irrelevant and Unclaimed Features;
`the Relevant Facts Showing Unpatentability Are Undisputed. ................... 12
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`A. Aytac Discloses the Capability to Transfer a File of Digitized
`Analog Data to a Host Computer Without Loading or Installing
`File Transfer Enabling Software. ..................................................... 13
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`1.
`
`2.
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`Papst Does Not Dispute the Relevant Fact: Aytac’s
`System Is Capable of Automatically Transferring a File
`Without Requiring any Specialized File Transfer
`Software, and Thus Meets the “Automatic File Transfer”
`Limitation. ............................................................................. 14
`
`The ’437 Patent’s Claimed File Transfer Does Not
`Implicate the “Synchronization” and “Cache” Concerns
`of Aytac’s Advanced System. ................................................ 18
`
`3.
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`No Modification of Aytac Is Required. .................................. 20
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`Claim 43 .......................................................................................... 22
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`Claim 41 .......................................................................................... 23
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`Claim 39 .......................................................................................... 25
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`Dependent Claims ............................................................................ 25
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`B.
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`C.
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`D.
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`E.
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`V.
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`CONCLUSION ......................................................................................... 26
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`ii
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`
`
`Cases
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`TABLE OF AUTHORITIES
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` Page(s)
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`Celsis In Vitro, Inc. v. CellzDirect, Inc., 664 F.3d 922 (Fed. Cir. 2012) .............. 6, 7
`
`Ford Motor Co. v. Cruise Control Tech. LLC, IPR2014-00291, Paper 44
`(PTAB June 29, 2015) ................................................................................. 10, 11
`
`Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618 F.3d 1294 (Fed. Cir.
`2010) .................................................................................................................. 5
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`In re Heck, 699 F.2d 1331 (Fed. Cir. 1983) ............................................................ 7
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`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ............................................................22
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`In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) .........................................................12
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`Servicenow, Inc. v. Hewlett-Packard Co., IPR2015-00707, Paper 12 (PTAB
`Aug. 26, 2015) ...................................................................................................12
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`Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340 (Fed. Cir. 2007) ....................... 5
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`iii
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`
`
`EXHIBIT
`NO.
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`EXHIBIT LIST
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`TITLE
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`1001
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`Declaration of Dr. Paul F. Reynolds, Ph.D.
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`1002
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`Curriculum Vitae of Dr. Paul F. Reynolds, Ph.D.
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`1003
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`U.S. Patent No. 9,189,437 to Michael Tasler (“the ’437 patent”)
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`1004
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`U.S. Patent No. 5,758,081 to Haluk M. Aytac (“Aytac” or “the ’081
`Patent)
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`1005
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`American National Standard for Information Systems, Small
`Computer System Interface-2, ANSI X3.131-1994 (1994) (“SCSI
`Specification”)
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`1006
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`Prosecution History of the ’081 Patent
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`1007
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`Texas Instruments data sheet SLA006B (1996) (“TI data sheet”)
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`1008
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`U.S. Patent No. 5,592,256 to Muramatsu (“Muramatsu”)
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`1009
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`U.S. Patent No. 5,659,690 to Stuber (“Adaptec”)
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`1010
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`Ray Duncan, ed., “The MS-DOS Encyclopedia,” Microsoft Press
`(1988)
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`1011
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`Federal Circuit decision, In re: Papst Licensing Digital Camera
`Patent Litigation, No. 2014-1110 (Fed.Cir. Feb. 2, 2015).
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`iv
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`EXHIBIT
`NO.
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`TITLE
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`1012
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`Excerpts from the Microsoft Computer Dictionary (2nd ed. 1994)
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`1013
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`U.S. Patent No. 5,325,071 to Westmoreland (“TI Patent”)
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`1014
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`1015
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`Papst’s Opening Claim Construction Brief and Declaration of Robert
`Zeidman, filed in related litigation in the District of Columbia. In re:
`Papst Licensing Digital Camera Patent Litigation, MDL No. 1880,
`Case No. 1:07-mc-00493, Dkt. Nos. 630, 630-12 (June 3, 2016).
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`Plaintiff’s Sur-Reply to LG Electronics, Inc., LG Electronics U.S.A.,
`Inc., and LG Electronics Mobilecomm U.S.A., Inc’s Motion to
`Exclude Opinions and Testimony of Robert Zeidman, No. 6:15-cv-
`1095, Dkt. 541 (E.D. Tex. July 27, 2017)
`
`1016
`
`Deposition Transcript of Thomas A. Gafford in IPR2016-01200, -
`01211, -01213, -01199, -01212, -01214, -01216, and -01225 taken
`May 31, 2017
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`1017
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`Excerpt of Linear Circuits Data Book, Vol. 2, Data Acquisition and
`Conversion, Texas Instruments, 1989 (pp. 2-173 – 2-180)
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`2001
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`Excerpt from Prosecution History of the ’437 Patent: Appellant’s
`Brief on Appeal dated May 7, 2012
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`2002
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`Excerpt from Prosecution History of the ’437 Patent: Amendment
`dated August 31, 2009
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`2003
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`Excerpt from MPEP § 608 (1995)
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`2004
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`Wikipedia Entry for “Dual-tone multi-frequency signaling”
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`v
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`EXHIBIT
`NO.
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`TITLE
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`2005
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`“HowStuffWorks” Article: “How Fax Machines Work”
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`2006
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`Declaration of Thomas Gafford And Appendices A-C Thereto
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`2007
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`Deposition Transcript of Paul F. Reynolds in IPR2016-01199, -
`01200, -01211, -01212, -01213, -01214, -01216, and -01225 taken
`March 9, 2017
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`2008
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`Deposition Transcript of Paul F. Reynolds in IPR2016-01733 taken
`May 3, 2017
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`2009
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`Order Regarding Claim Construction in Papst Licensing GmbH &
`Co., KG v. Apple, Inc., 6:15-cv-01095, D.E. 275 (E.D. Tex. March 7,
`2017)
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`2010
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`End user, Microsoft Press Computer Dictionary (2nd ed. 1994)
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`2011
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`End user, The IEEE Standard Dictionary of Electrical and
`Electronics Terms (6th ed. 1997)
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`vi
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`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
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`I.
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`INTRODUCTION
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`Instead of disputing Petitioner’s evidence or arguments, Papst rewrites the
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`Challenged Claims in an attempt to save them and rebuts arguments Petitioner
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`never made.2 However, both sides’ experts confirm Petitioner’s actual obviousness
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`argument on every single point.
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`The Petition focused on what the ’437 patent actually claims: the capability
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`to transfer a file from the analog data generating and processing device (“ADGPD”)
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`to a computer “without requiring any user-loaded file transfer enabling software to
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`be loaded on or installed in the computer.” Petitioner proved that the primary prior
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`art reference (Aytac), augmented by additional details about SCSI communications
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`disclosed in the secondary references, unambiguously teaches this claim limitation.
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`Paper 1 (“Petition”) at 12-15, 21-80. Papst never disputes any of Petitioner’s
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`evidence showing how Aytac’s system can transfer a file without requiring any
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`user-installed software on the computer.
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`Aytac’s preferred embodiment also discloses additional beneficial features,
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`such as synchronization and cache disabling/clearing. Ex. 1004, 10:58-11:5. Papst
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`relies on these additional features to save the Challenged Claims. Papst’s
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`argument goes like this: Aytac’s additional features require additional software on
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` The Challenged Claims include every claim of the ’437 patent (claims 1-45).
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` 2
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`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
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`the host computer to function reliably, it would not have been obvious to remove
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`that software, and this violates the Challenged Claims’ negative “without requiring
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`software” limitation. Paper 13 (“Response”) at 3-6.
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`But
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`the Challenged Claims do not
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`incorporate Aytac’s additional
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`synchronization or cache disabling features, which are improvements beyond
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`anything disclosed or claimed in the ’437 patent. The claims require only the
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`transfer of a file. Yet Papst’s argument is that Aytac requires specialized software
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`to accomplish synchronization and cache disabling functions and thus work
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`“reliably.” Papst’s expert made clear that the Aytac system could automatically
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`transfer a file without encountering any problems from lack of synchronization or
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`cache disabling. Indeed, the “cache” problem by necessity could only occur after a
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`successful file transfer to the PC.
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`Papst’s argument that it would not have been obvious to modify Aytac’s
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`disclosure to remove software just knocks down a straw man. No such
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`modification is necessary because Aytac’s unique software is not “required” to
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`transfer a file.
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`Papst’s remaining arguments are similarly unpersuasive. Papst’s contention
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`that Petitioner has not proven that the TI Data Sheet is prior art is wrong. Its
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`argument concerning the claimed A/D converter seeks to import limitations into
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`the claims and conflates simultaneous acquisition of data with simultaneous
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`
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`-2-
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`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
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`conversion of that data. Finally, Papst ignores clear admissions in the ’437 patent
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`of the obviousness of including Aytac’s disclosed file transfer software in the
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`BIOS of a host computer. The Board should find all Challenged Claims
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`unpatentable.
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`II. CLAIM CONSTRUCTION
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`The broadest reasonable interpretation standard is applicable in this
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`proceeding because the ’437 patent will expire on March 3, 2018, after the
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`February 8, 2018 statutory deadline for a final written decision.3
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` Pursuant to the Board’s Order (Paper 9), for purposes of analyzing Aytac, the
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` 3
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`Challenged Claims would remain unpatentable under either
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`the broadest
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`reasonable interpretation or the Phillips claim construction standard. Should the
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`Board consider claim construction under Phillips, Petitioner proposes the
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`following constructions, which are consistent with those presented in concurrent
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`litigation:
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`•
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`•
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`“automatic recognition process” means recognition “without any user
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`intervention”; and
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`“without requiring any end user to load software” means “without
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`requiring any end user to load specific drivers or software for the
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`ADGPD beyond that provided in or with the operating system or
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`BIOS.”
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`
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`-3-
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`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
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`The Claim Construction section of Papst’s Response (pp. 21-32) contains
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`little of Papst’s actual claim construction arguments. 4 That is because Papst
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`attempted to rewrite the “automatic file transfer” claim limitation in its Argument
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`section.
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`A.
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`Papst Improperly Adds Unclaimed Elements to the “Automatic
`File Transfer Process” Limitation.
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`Papst’s implicit claim construction is that the “automatic file transfer
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`process” requires the ADGPD to “reliably transfer data,” which in turn requires
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`(a) synchronizing multiple requests to the ADGPD’s memory and (b) avoiding
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`incorrectly accessing cached files on the computer. Response at 39, 3-4, 36-54;
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`Ex. 2006, ¶¶36-46, 52-72. These advanced functions simply are not elements of
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`the Challenged Claims, and thus they cannot make patentable the Challenged
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`Claims.
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`Claim 1 requires only the capability to transfer “at least one file” from the
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`ADGPD to the PC. As a matter of law, and as Mr. Gafford acknowledged, this is
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`
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` Papst’s arguments as to the “multi-purpose interface” term are of no consequence.
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` 4
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`Whether the multi-purpose interface is limited to a SCSI interface matters not
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`because the preferred embodiment of Aytac uses a SCSI interface. The same holds
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`true for the construction of “end user.” Software need not be installed at all, let
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`alone by an end user, to enable the transfer of a file.
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`
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`-4-
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`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
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`satisfied by the capability to transfer just one file. Z4 Techs., Inc. v. Microsoft
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`Corp., 507 F.3d 1340, 1349 (Fed. Cir. 2007) (“use of the phrase ‘at least one’
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`means that there could be only one or more than one”); Ex. 10165 at 51:23-52:6.
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`Claims 39, 41, and 43 merely require
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`the
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`transfer of digitized analog
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`data. ’437 patent, claims 39, 41, 43. All the supposed faults in an Aytac system
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`lacking user-loaded software concern functions beyond the claimed ability to
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`transfer a file or digitized data.
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`The Challenged Claims do not incorporate concepts of “synchronization,”
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`cache disabling/clearing on the PC, or any standard of “reliability,” thus
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`undercutting Papst’s entire argument. See generally ’437 patent, claims 1-45;
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`Ex. 1016 at 52:7-10. Papst cannot rely on these unclaimed “reliability” features to
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`stave off unpatentability. Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618
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`F.3d 1294, 1302–03 (Fed. Cir. 2010) (Patentee unsuccessfully argued that the prior
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`art was not “reliable” where claims did not recite reliability and claims not
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`construed accordingly.).
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`
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` The transcript from Mr. Gafford’s deposition in IPR proceedings against related
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` 5
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`U.S. Patent Nos. 8,504,746 (“’746 patent”) and 8,966,144 (“’144 patent”)
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`concerning the disclosure of Aytac and similar claim limitations is included as
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`Exhibit 1016.
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`
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`-5-
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`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
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`Moreover, “without requiring” does not mean “prohibiting.” Celsis In Vitro,
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`Inc. v. CellzDirect, Inc., 664 F.3d 922, 926-27 (Fed. Cir. 2012). It is irrelevant to
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`the Challenged Claims whether “file transfer enabling software” is present on the
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`computer, but whether such “file transfer enabling software” is required to be
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`installed on the computer—by a user—to receive a file from the interface device.
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`Mr. Gafford concurs with this claim interpretation. See Ex. 1016 at 53:7-21
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`(analogous limitation in the ’144 patent).
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`A simple analogy illustrates the negative limitation at issue here. Consider a
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`claim to a web browser that allows a user to “open at least one webpage without
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`requiring additional software to be installed.” A prior art browser also allows a
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`user to open webpages, but has an additional feature of a pop-up blocker. The pop-
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`up blocker intercepts all page load requests on the browser and then blocks any
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`pop-ups. But, this prior art web browser opens webpages without the pop-up
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`blocker installed or with the pop-up blocker turned off. The pop-ups may affect
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`efficiency, and an explosion of pop-ups could even make the browser inoperable in
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`some circumstances, but the browser can still open “at least one webpage.” Thus,
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`the pop-up blocker is not required and the prior art browser still discloses the
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`claimed web browser. See Celsis, 664 F.3d at 926-27.
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`The web browser example holds true for the Challenged Claims. The
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`claimed system capable of transferring a file is still unpatentable based on Aytac’s
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`
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`-6-
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`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
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`system that can transfer a file and also can incorporate abilities beyond those the
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`Challenged Claims recite. See In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983)
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`(Prior art patent’s disclosure is “not limited to what the patentees describe as their
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`own inventions or the problems with which they are concerned.”).
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`B.
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`Papst’s Disagreement With the Board’s Construction of “Without
`Requiring Any End User to Load Software” Contradicts the
`Disclosure of the Specification and Claims.
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`The Board correctly construed the negative limitation “without requiring any
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`end user to load software” to not exclude “SCSI drivers and drivers for multi-
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`purpose interfaces that do not necessarily reside in the operating system or BIOS.”
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`Paper 7 (“Decision”) at 10-11. To construe the term otherwise would introduce
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`inconsistencies within the claims. Yet, Papst argues that “a driver for a multi-
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`purpose interface or SCSI interface (or any other software) that must be installed
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`by a user would be inconsistent with these limitations.” Response at 26. Thus,
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`Papst argues that SCSI drivers would be outside the scope of the independent
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`claims when user-installed, even though, for example, dependent claims 7 and 21
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`specifically require SCSI. See Decision at 11-12. Papst’s argument introduces
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`indefiniteness into the claims and should be rejected.
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`C.
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`Papst Adds Unclaimed Elements to the “Analog to Digital
`Converter” Limitation.
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`Claim 41 recites “an analog to digital converter . . . configured to
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`simultaneously acquire analog data from each respective analog source.”
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`
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`-7-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`’437 patent, claim 41. Papst imports a single A/D converter into this limitation and
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`argues that Aytac does not disclose the revised limitation. Response at 58-59. The
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`language of the claims themselves and Papst’s own contradictory arguments defeat
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`this position.
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`When Papst desired to claim a single element, it explicitly did so. See
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`’437 patent, claim 28 (claiming “a single digital signal processor”) (emphasis
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`added). Papst more broadly claimed “an analog to digital converter” without
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`limiting the element to a single A/D converter.
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`Further, Papst’s contradictory position asserted in litigation disproves its
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`argument. Papst asserts that, “as a rule,” the word “a” means “at least one” or “one
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`or more.” See, e.g., Ex. 1015 at 1. The limited exceptions to this “rule” are
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`“disclaimer, [] prosecution history estoppel, and [] ‘clear intent’ in the Patents or
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`during prosecution to depart from the ‘rule’ that ‘a’ means ‘one or more.’” Id.
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`Papst’s flip-flopping cannot be sustained. After broadly interpreting “a/an” to
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`mean “one or more” under the Phillips standard, Papst cannot credibly argue that it
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`should be more narrowly interpreted as “one” in this proceeding, without even
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`discussing which exception to Papst’s “rule” is applicable. See Response at 21
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`(acknowledging that broadest reasonable interpretation standard applies).
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`Moreover, there is nothing special about the A/D converter that would
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`justify construing it as a single A/D converter. Multiple A/D converters could
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`
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`-8-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
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`“simultaneously acquire analog data from each respective analog source” just as
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`easily as one. See ’437 patent, claim 41. As Dr. Reynolds testified, data from
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`Aytac’s analog devices could be acquired simultaneously, but the devices would
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`take turns sending data to the host. See Ex. 2008 at 51:7-20. Thus, the claims do
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`not require only one A/D converter.
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`III. TI DATA SHEET
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`The TI Data Sheet is relevant only to instituted grounds 3, 5, and 6. Decision
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`at 39-40. It is cited primarily as background knowledge in the art—that an A/D
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`converter incorporated sample and hold amplifiers. See Petition at 53, 76-77. With
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`regard to only claim 38, the reference is cited for its disclosure of “programmable
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`control of a multiplexer and the A/D conversion timing.” Id. at 78.
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`The evidence establishes by a preponderance that the TI Data Sheet is prior
`
`art. The reference includes a copyright date of 1996 and an indication on each of
`
`pages 1-11 that it was first published December 1985 and revised October 1996.
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`Ex. 1007 at 1-11. The reference would have been accessible to POSITAs
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`exercising reasonable diligence—being available in hobbiest magazines, in “data
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`books” that “were frequently accessed by POSITAs,” in parts distributor outlets,
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`by phone, by U.S. Mail, and on the Web. Ex. 1001, ¶48.
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`The Board has deemed sufficient similar evidence. See Ford Motor Co. v.
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`Cruise Control Tech. LLC, IPR2014-00291, Paper 44 at 8 (PTAB June 29, 2015)
`
`
`
`-9-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`(“(1) [T]he pertinent pages . . . are dated and printed with a copyright notice; (2)
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`the date of the copyright notice is well before the filing date . . . ; (3) a copyright
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`notice generally is regarded as indicating a date of first publication; (4) similar
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`circumstances have prompted panels in other inter partes review proceedings to
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`conclude that a threshold showing of publication has been established; and (5)
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`[declarant testified that the reference] was published in 1991.”).
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`Papst offers no rebuttal to the copyright notice date of 1996,6 nor does it
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`rebut testimony that such data sheets would have been accessible to POSITAs. See
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`Response at 17-19. Papst argues the sufficiency of the copyright notice date and
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`expert testimony. Id. Papst’s arguments fail on both accounts. See Ford, IPR2014-
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`00291, Paper 44 at 8 (“Patent Owner offers no rebuttal vis-à-vis the printed
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`copyright notice on the relevant pages of [the reference]. It is not the case that a
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`pre-requisite for establishing the publication date of a document is the presence of
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`
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` The 2013 copyright date on the addendum to Ex. 1007 is irrelevant. Even the
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` 6
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`addendum to the currently available data sheet, otherwise identical to Ex. 1007,
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`includes a 2017 copyright date. See http://www.ti.com/lit/ds/symlink/tlc545.pdf
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`(last visited August 20, 2017). The relevant pages of Ex. 1007 were publicly
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`accessible in 1996. See Ford, IPR2014-00291, Paper 44 at 10 (“[T]he pertinent
`
`pages of [the reference] are dated and printed with a copyright notice.”).
`
`
`
`-10-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`declaration testimony in the record.”). The totality of evidence in the record
`
`establishes that the TI Data Sheet is prior art.
`
`In addition, an earlier 1989 version of the TI Data Sheet, describing the same
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`A/D converter, was published in a “data book” described by Dr. Reynolds. See Ex.
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`1017; Ex. 1001, ¶48 (describing availability in data books “frequently accessed by
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`POSITAs”). Both data sheets disclose the salient facts cited in the Petition—an
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`A/D converter incorporating sample and hold circuitry and acquiring multiple
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`analog channels. See Ex. 1007 at 1; Ex. 1017 at 4; Petition at 53, 76-77, 78.
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`Moreover, the data sheets include identical model numbers, as shown in the images
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`below.
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`
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`
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`Ex. 1007 at 1.
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`Ex. 1017 at 4.
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`The disclosure of the same A/D converters in the 1989 data book confirms the
`
`prior art status of the TI Data Sheet.
`
`Papst’s reliance upon In re Lister and Servicenow is unpersuasive. Unlike
`
`these cases, Petitioner does not rely upon a registration with the Copyright Office
`
`or commercial databases, see In re Lister, 583 F.3d 1307, 1316 (Fed. Cir. 2009),
`
`and there are no restrictions on use or dissemination of the TI Data Sheet, see
`
`
`
`-11-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`Servicenow, Inc. v. Hewlett-Packard Co., IPR2015-00707, Paper 12 at 16 (PTAB
`
`Aug. 26, 2015).
`
`IV. PAPST'S ARGUMENTS ARE DIRECTED TO IRRELEVANT AND
`UNCLAIMED FEATURES; THE RELEVANT FACTS SHOWING
`UNPATENTABILITY ARE UNDISPUTED.
`
`Papst concedes most of the points raised in the Petition.7 All the references,
`
`with the exception of the TI Data Sheet and aspects of the AAPA, are
`
`acknowledged as prior art, and there is no dispute as to the motivation to combine.8
`
`Petition at 44-45, 74, 75-76, 77, 78, 79-80 (addressing motivation to combine); see
`
`generally Response and Ex. 2006 (not addressing motivation). In addition, Papst
`
`challenges Petitioner’s proof on only three of the many claim elements recited in
`
`the independent claims:
`
`
`
` Papst baldly states that not listing the AAPA in each instituted ground rises above
`
` 7
`
`harmless error. Response at 1, n.2. The arguments concerning the AAPA are fully
`
`set forth in the Petition, and Papst has had the opportunity to respond. As the
`
`Board noted, any error in the statement of asserted grounds is harmless. Decision at
`
`7, n.2.
`
`8 While Petitioner respectfully disagrees with the Board’s ruling that Aytac’s
`
`source code is not prior art, the source code merely supplements Aytac’s disclosure
`
`and is not necessary to any argument.
`
`
`
`-12-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`1 –“an automatic file transfer process” and similar limitations recited
`
`in each independent claim (Response at 36-54);
`
`2 – “an analog to digital converter . . . configured to simultaneously
`
`acquire analog data from each respective analog source,” recited in
`
`claim 41 (Response at 57-59); and
`
`3 – “using the customary device driver present in the BIOS of the host
`
`computer for the digital mass storage device in the host computer,”
`
`recited in claim 41 (Response at 59-61).
`
`Even for these claim elements, Papst does not dispute the relevant technical
`
`facts about the prior art presented in the Petition. Indeed, Papst’s own expert
`
`witness confirmed these points with regard to the “automatic file transfer”
`
`limitation, confirming the obviousness of all Challenged Claims with the exception
`
`of claims 41 and 42. As to claims 41 and 42, Papst argues unclaimed features and,
`
`accordingly, fails to rebut the strong showing of obviousness in the Petition.
`
`A. Aytac Discloses the Capability to Transfer a File of Digitized
`Analog Data to a Host Computer Without Loading or Installing
`File Transfer Enabling Software.
`
`Aytac, combined with the SCSI Specification and the AAPA, teaches that a
`
`file can be transferred to the host computer without requiring any file transfer
`
`enabling software to be installed on the host computer. First, Petitioner focuses on
`
`the proper scope of this claim element. Second, Petitioner explains why Papst’s
`
`argument fails: it depends on unclaimed features of synchronization and cache
`
`
`
`-13-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`disabling affecting reliability; it is undisputed as a technical fact that the Aytac
`
`system could transfer a file to the PC without CATSYNC.VXD; it misstates
`
`Aytac’s disclosure; and Aytac’s system need not be modified to remove any
`
`software.
`
`1.
`
`Papst Does Not Dispute the Relevant Fact: Aytac’s System
`Is Capable of Automatically Transferring a File Without
`Requiring any Specialized File Transfer Software, and Thus
`Meets the “Automatic File Transfer” Limitation.
`
`A
`
`file
`
`transfer operation will occur
`
`in Aytac whether or not
`
`CATSYNC.VXD is installed on the host PC. As explained in the Petition and
`
`supporting declaration, the CaTbox of Aytac responds to SCSI commands and,
`
`accordingly, would automatically transfer a digitized file in response to a SCSI
`
`READ/WRITE command issued from the host without the need to install any file
`
`transfer enabling software. Petition at 40; Ex. 1001, ¶¶109-10. All the requisite
`
`software to transfer files would already be installed on the host computer because
`
`the CaTbox appears to the host as a customary hard disk device. Petition at 43-44
`
`(citing ’437 patent, 4:20-21 (admitting that “support for hard disks is implemented
`
`as standard in all commercially available host systems”) and Ex. 1001, ¶117).
`
`Papst does not rebut this testimony, but instead, complains about the purported
`
`need to remove unnecessary software from CaTbox. See Response at 37-42. Thus,
`
`
`
`-14-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`it stands unrebutted that Aytac could transfer a file without requiring installation of
`
`specialized software.9
`
`Dr. Reynolds agrees that such synchronization and cache clearing software
`
`are entirely unnecessary.10 If CATSYNC.VXD were not installed, the file transfer
`
`would occur over the default SCSI communication line. SCSI READ and WRITE
`
`commands are processed over Logical Unit Number 0 (LUN0) in order to transfer
`
`a file. Ex. 1004, 10:67-11:5, 11:25-27 (disclosing that a read call, by default, “goes
`
`through LUN=0 as CaTbox is also a CaTdisc”); see also Petition at 42 (citing Ex.
`
`1004, 11:25-27). This back-and-forth would be the same as the ’437 patent’s file
`
`transfer. Ex. 1001, ¶¶100, 113. Thus, Aytac’s system could (and would)
`
`automatically transfer a file using only the SCSI protocol over LUN=0 if
`
`
`
` Because Aytac’s specialized software is irrelevant, Papst’s complaints about
`
` 9
`
`whether any such testimony is “unmentioned in the Petition” are likewise
`
`irrelevant. See Response at 4.
`
`10 Papst suggests that Dr. Reynolds solely argues that the specialized software
`
`could be moved, and not that the software is unnecessary. See Response at 5.
`
`Papst is wrong. Dr. Reynolds clearly explained that the software is intended only
`
`for unclaimed functions. See Ex. 1001, ¶101.
`
`
`
`-15-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`CATSYNC.VXD were not installed. This further proves that CATSYNC.VXD is
`
`not required to implement a file transfer.11
`
`As in the pop-up blocker analogy above, CATSYNC.VXD intercepts
`
`incoming file requests and synchronizes them to avoid potential conflicts on the
`
`CaTbox’s memory. Ex. 1001, ¶101; Ex. 1004, 10:62-11:5.
`
` However,
`
`CATSYNC.VXD is not needed to transfer a file over the default LUN0. Ex. 1001
`
`at ¶¶101, 109-10, 114, 117.
`
`Papst and Mr. Gafford do not rebut Dr. Reynolds’s testimony regarding the
`
`ability of Aytac’s system to transfer a file, tacitly admitting that he correctly
`
`described how Aytac’s system could transfer a file using just the SCSI drivers
`
`without mention of CATSYNC.VXD. Mr. Gafford and Papst do not dispute this
`
`process would be the same as the ’437 patent’s file transfer, a point the Petition
`
`and Dr. Reynolds emphasized. Petition at 40-41; Ex. 1001 at ¶¶100, 113. Papst’s
`
`argument that Aytac’s synchronization and cache-disabling functions require
`
`
`
`11 Papst also mentions two other programs on the PC in Aytac’s disclosed
`
`embodiment, CATCAS.EXE and CATSER.VXD. Neither is required to transfer a
`
`file. Ex. 1004 at 11:6-37 (CATCAS.EXE used only in fax embodiment), 11:38-57
`
`(CATSER.VXD used only in remote modem function). Mr. Gafford agrees. Ex.
`
`1016 at 48:25-49:14 (CATCAS.EXE), 49:15-50:4 (CATSER.VXD).
`
`
`
`-16-
`
`

`

`IPR2016-01733
`Petitioner’s Reply to Patent Owner’s Response
`
`
`CATSYNC.VXD and that it would not have been obvious to remove, see Ex. 2006
`
`at ¶¶38-46, 55, 58-62, cannot save the claims for the reasons discussed below.
`
`The only drivers needed on the PC to effectuate file transfer in the Aytac
`
`system are the customary ASPI drivers for SCSI interfaces and hard disks
`
`(ASPIDISK.SYS and ASPI2DOS.SYS). Ex. 1001 at ¶¶42, 66, 100, 109-117.
`
`These are drivers “for a multi-purpose interface or SCSI interface” and thus fall
`
`within the exceptions to the “without requiring any end user to load software” in
`
`the Board’s construction. See id.; Decision at 10-12. Papst’s argument that Aytac’s
`
`ASPI drivers do not meet the “without requiring” limitation is untenable under the
`
`Board’s construction. Response at 25-26; Ex. 2006 at ¶49.
`
`Papst also twists Dr. Reynolds’s testimony, see Response at 27, 54; far from
`
`supporting Papst, Dr. Reynolds confirmed that users need not install ASPI drivers.
`
`Ex. 1001 at ¶¶99-100; Ex. 2007 at 85:5-86:19. Papst also ignored the ’437 patent’s
`
`admissions about the standard presence of SCSI interfaces and ASPI drivers