Apple Inc. v.
`Papst Licensing GmbH & Co., KG
`
`P.T.A.B. Proceeding No. IPR2016-01839
`U.S. Patent No. 6,470,399
`
`January 16, 2018
`
`
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`Exhibit 1035
`IPR2016-01839
`
`
`Papst Licensing GmbH & Co., KG
`
`P.T.A.B. Proceeding No. IPR2016-01839
`U.S. Patent No. 6,470,399
`
`January 16, 2018
`
`
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`Exhibit 1035
`IPR2016-01839
`
`
`
`Instituted Grounds (’399 Patent)
`
`Ground
`
`Claims
`
`Type
`
`Primary
`Reference
`
`Secondary Reference(s)
`
`1
`
`1, 3, 5, 11, 14
`
`IPR2016-01839 (’399 Patent)
`Schmidt and the “sampling circuit”
`references (Horowitz, Burr-Brown,
`Intersil, MT-090, Oppenheim)
`
`§ 103 Kawaguchi
`
`’1839 Institution Decision, pp. 6, 28
`
`2
`
`
`
`U.S. Patent 6,470,399 describes an interface device
`
`The ’399 patent discloses techniques to make “the interface device appear[ ]
`to the host device as a hard disk.”
`
`Source: Petition, pp. 5-8; Ex. 1001, Figure 1
`
`3
`
`
`
`’399 Claim 1
`
`An interface device for communication between a host device, which comprises drivers for input/output devices
`customary in a host device and a multi-purpose interface, and a data transmit/receive device, the data
`transmit/receive device being arranged for providing analog data, comprising:
`a processor;
`a memory;
`a first connecting device for interfacing the host device with the interface device via the multi-purpose
`interface of the host device; and
`a second connecting device for interfacing the interface device with the data transmit/receive device,
`the second connecting device including a sampling circuit for sampling the analog data provided by the
`data transmit/receive device and
`an analog-to-digital converter for converting data sampled by the sampling circuit into digital data,
`wherein the interface device is configured by the processor and the memory to include a first command
`interpreter and a second command interpreter, wherein the first command interpreter is
`configured in such a way that the command interpreter, when receiving an inquiry
`from the host device as to a type of a device attached to the multi-purpose interface of
`the host device, sends a signal, regardless of the type of the data transmit/receive
`device attached to the second connecting device of the interface device, to the host
`device which signals to the host device that it is an input/output device customary in a
`host device, whereupon the host device communicates with the interface device by
`means of the driver for the input/output device customary in a host device, and wherein
`the second command interpreter is configured to interpret a data request command from the host device to
`the type of input/output device signaled by the first command interpreter as a data transfer command for
`initiating a transfer of the digital data to the host device.
`
`Source: Ex. 1001
`
`4
`
`
`
`’399 Claim 11
`
`An interface device for communication between a host device, which comprises a multi-purpose interface and a
`specific driver for this interface, and a data transmit/receive device, the data transmit/receive device being
`arranged for providing analog data, comprising:
`a processor;
`a memory;
`a first connecting device for interfacing the host device with the interface device via the multi-purpose
`interface of the host device; and
`a second connecting device for interfacing the interface device with the data transmit/receive device,
`the second connecting device including a sampling circuit for sampling the analog data provided by the
`data transmit/receive device and
`an analog-to-digital converter for converting data sampled by the sampling circuit into digital data
`where the interface device is configured using the processor and the memory to include a first command
`interpreter and a second command interpreter, wherein the first command interpreter is
`configured in such a way that the interface device, when receiving an inquiry from the
`host device as to the type of a device attached at the multi-purpose interface of the
`host device, sends a signal, regardless of the type of the data transmit/receive device
`attached to the second connecting device of the interface device, to the host device
`which signals to the host device that it is an input/output device customary in a host
`device, whereupon the host device communicates with the interface device by means
`of the specific driver for the multi-purpose interface, and wherein the second command
`interpreter is configured to interpret a data request command from the host device to the type of
`input/output device signaled by the first command interpreter as a data transfer command for initiating a
`transfer of the digital data to the host device.
`
`Source: Ex. 1001
`
`5
`
`
`
`’399 Claim 14
`
`A method of communication between a host device, which comprises drivers for input/output devices customary
`in a host device and a multi-purpose interface, and a data transmit/receive device, the data transmit/receive
`device being arranged for providing analog data, via an interface device, comprising:
`interfacing of the host device with a first connecting device of the interface device via the multi-purpose
`interface of the host device;
`interfacing of the data transmit/receive device with a second connecting device of the interface device, the
`second connecting device including a sampling circuit for sampling the analog data provided by the
`data/transmit/receive device and an analog-to-digital converter for converting data sampled by the
`sampling circuit into digital data;
`inquiring by the host device at the interface device as to the type of device to which
`the multi-purpose interface of the host device is attached;
`regardless of the type of the data transmit/receive data attached to the second
`connecting device of the interface device, responding to the inquiry from the host
`device by the interface device in such a way that it is an input/output device
`customary in a host device, whereupon the host device communicates with the
`interface device by means of the usual driver for the input/output device, and
`interpreting a data request command from the host device to the type of input/output device customary in
`the host device as a data transfer command for initiating a transfer of the digital data to the host device.
`
`Source: Ex. 1001
`
`6
`
`
`
`Claim Construction – Summary
`
`“it is an input/output device”
`(Claims 1, 11, 14)
`
`“it…”
`
`Patent Owner
`The interface device
`
`“… an…”
`
`One and only one
`
`Petitioner
`The device that was
`inquired by the host
`device
`One or more
`
`“input/out
`put”
`
`Input and output
`
`Input and/or output
`
`Issue
`What is identified as a
`customary I/O device in
`response to the Inquiry?
`Does a response have to
`identify the device as a
`single customary I/O
`device?
`Does a customary I/O
`device have to both input
`and output to the host?
`
`The claims are obvious under either Patent Owner’s or Petitioner’s constructions
`
`Source: Reply, pp. 2-7; POR, pp. 19, 22; Gafford Depn., 94:18-96:16; Gafford Decl., ¶ 55; Zadok Decl. II, ¶¶ 19-20.
`
`7
`
`
`
`Both experts agree “it” refers to the device being queried
`
`“it is an input/output device”
`(Claims 1, 11, 14)
`
`“it…”
`
`Patent Owner
`The interface device
`
`Petitioner
`The device that was inquired by the
`host device
`
`Gafford Depn., 96:2-5
`
`Source: Reply, p. 5; Gafford Depn., 96:2-5; Zadok Decl. II, ¶ 19.
`
`8
`
`
`
`PO’s expert: Interface device must be the inquired device
`
`“it is an input/output device”
`(Claims 1, 11, 14)
`
`Not supported by plain
`language of the claim
`
`Contrary to SCSI,
`which inquires about
`logical units
`
`Source: Reply, p. 6; Gafford Depn., 95:14-23.
`
`9
`
`
`
`“an” means “one or more”
`
`“it is an input/output device”
`(Claims 1, 11, 14)
`
`“it…”
`
`Patent Owner
`The interface device
`
`“… an…”
`
`One and only one
`
`Petitioner
`The device that was inquired by the
`host device
`One or more
`
`“input/output”
`
`Input and output
`
`Input and/or output
`
`Patentee did not evince a clear intent to limit “a” or “an” to “one.”
`Convolve v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016)
`
`Source: Reply, pp. 3-5.
`
`10
`
`
`
`“input/output” means “input and/or output”
`
`“it is an input/output device”
`(Claims 1, 11, 14)
`
`“it…”
`
`Patent Owner
`The interface device
`
`“… an…”
`
`One and only one
`
`Petitioner
`The device that was inquired by the
`host device
`One or more
`
`“input/output”
`
`Input and output
`
`Input and/or output
`
`Q. … is it your opinion that the language, “it is an input/output device
`customary in a host device” requires the ability for the device to both input
`and output?
`A. I don’t think so. I think it’s fine for it to mean one or the other.”
`
`
`
`
`
`Gafford Depn., 92:24-93:5
`
`Source: Reply, p. 7.
`
`11
`
`
`
`The combination of Kawaguchi and
`Schmidt discloses the disputed
`“wherein” clauses
`
`12
`
`
`
`Kawaguchi discloses SCSI hard disk emulation
`
`Kawaguchi discloses a SCSI device converter that allows a workstation to
`interface with non-SCSI peripherals and sensors using a SCSI hard disk driver
`
`Source: Petition, p. 18; Kawaguchi, Figure 1
`
`13
`
`
`
`Kawaguchi discloses SCSI hard disk emulation
`
`Source: Petition, p. 31; Kawaguchi, Figure 2; p. 7
`
`14
`
`
`
`Kawaguchi’s units appear as Logical Units (LUNs) to the
`EWS
`
`Technique #1: Each unit exists at LUN 0 of
`a different SCSI ID
`
`Technique #2: Each unit exists at a
`different LUN for the same SCSI ID
`
`Source: Petition, pp. 9-11; Zadok Decl. II, ¶¶ 24-26; Kawaguchi, p. 6
`
`15
`
`
`
`Kawaguchi & Schmidt disclose inquiring as to the type of a
`LUN
`
`“‘Inquiry’ represents reporting of attribute
`information of a target and logical units
`(identification code of a device type).”
`
`Kawaguchi, p. 7
`
`“The inquiry command tells us about a
`LUN, giving us a list of specific details in a
`concise format.”
`Schmidt, p. 138
`
`Source: Petition, pp. 14, 32; Reply, pp. 11-12; Zadok Decl. II, ¶¶ 10, 31, 32; Zadok Decl., ¶ 90
`
`16
`
`
`
`Schmidt discloses responding to an inquiry with device
`class
`
`Schmidt, Table 12.12
`
`Schmidt, Table 12.1
`
`“the EWS (1) can identify, in appearance,
`[the four units] as four hard disk devices. In
`other words, the EWS (1) writes or reads
`data to each writing unit or from each
`reading unit using the same method as
`that for four hard disks.”
`Kawaguchi, p. 6
`
`Petition, p. 34 (annotating Kawaguchi, Fig. 1)
`
`Source: Petition, pp. 9-11; Zadok Decl. II, ¶¶ 24-26; Kawaguchi, p. 6
`
`17
`
`
`
`PO’s arguments have no merit
`PO’s arguments have no merit
`
`18
`
`
`
`The reading unit would be reported as a disk drive
`
`PO: The units would not be reported as customary hard drives because they
`“can only read or write but not both”
`
`But Kawaguchi expressly discloses that the EWS “can
`identify, in appearance” the four units as “four hard disk
`devices.” Kawaguchi, p. 6
`
`POR, p. 20
`
`Gafford Depn., 82:19-24
`
`PO’s expert admits that
`Kawaguchi’s EWS could read
`from a data reading unit that
`was identified as a hard disk
`
`Source: Reply, pp. 18-20
`
`19
`
`
`
`PO’s complaints disregard the claims and the preferred
`embodiment of SCSI
`PO argues Kawaguchi’s SCSI device converter, which encompasses four units appearing
`as four disk drives, is not capable of signaling that it is a single customary I/O device.
`
`POR, p. 23
`
`• This argument erroneously interprets “an” as “exactly one”
`• The claims are obvious even under PO’s interpretation:
`• When Kawaguchi’s SCSI device converter responds to an INQUIRY,
`it signals that the inquired device is one hard disk
`It does not matter that it can do so four times in response to four
`INQUIRY commands to four different units.
`
`•
`
`
`
`
`
`
`Source: Reply, pp. 20-23; Petition, p. 34
`
`20
`
`
`
`The combination would not be inoperable
`
`PO: “[I]t would render the Kawaguchi invention inoperable if the interface device of
`Kawaguchi responded to any Inquiry in the context of the SCSI standard (that are made to
`specific device IDs) by saying the device at that ID is a hard drive because the device at
`that ID would be incapable of performing the functions of a hard drive (reading and writing
`data).
`
`POR, p. 28
`
`But:
`• Kawaguchi expressly discloses that the EWS “can
`identify, in appearance” the four units as “four hard
`disk devices.”
`
`• Kawaguchi does not teach or suggest that the Data
`Reading Unit appears as a “read-only” hard drive
`
`• PO’s expert acknowledged the EWS could read
`from the Data Reading Unit if it were identified as a
`disk drive.
`
`Source: Reply, pp. 23-25
`
`21
`
`
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