UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01839
`Patent 6,470,399
`_______________
`___________________________________
`
`DECLARATION OF THOMAS A. GAFFORD UNDER 37 C.F.R. § 42.53 IN
`SUPPORT OF PATENT OWNER RESPONSE UNDER 37 C.F.R. § 42.120
`___________________________________
`
`Papst Licensing GmbH & Co., KG.
`Petitioner – Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01839
`EXH. 2002
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION............................................................................................................. 1
`
`BACKGROUND AND QUALIFICATIONS ................................................................. 1
`
`III. MATERIALS CONSIDERED ......................................................................................... 5
`
`IV.
`
`V.
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART ......................................................... 5
`
`APPLICABLE LEGAL STANDARDS .......................................................................... 6
`
`OVERVIEW OF THE ‘399 PATENT .......................................................................... 10
`
`VII. CLAIM CONSTRUCTION ........................................................................................... 13
`
`VIII. OVERVIEW OF KAWAGUCHI .................................................................................. 14
`
`IX.
`
`X.
`
`OVERVIEW OF SCHMIDT ......................................................................................... 18
`
`VALIDITY OF THE ‘399 PATENT OVER KAWAGUCHI ..................................... 18
`
`

`

`I.
`
`Introduction
`
`1.
`
`I have been retained on behalf of Papst Licensing GmbH & Co. KG (“Papst”),
`
`and its counsel, DiNovo Price Ellwanger Hardy LLP, as an expert in this proceeding. I am
`
`personally knowledgeable about the matters stated herein.
`
`2.
`
`I understand that Dr. Erez Zadok has provided a declaration (“Zadok
`
`Declaration”) on behalf of Apple Inc. (“Petitioner” or “Apple”), indicating that claims 1, 3, 5, 11
`
`and 14 of United States Patent No. 6,470,399 (“‘399 patent”) are invalid.
`
`3.
`
`I have been asked to provide my conclusions and bases thereof regarding several
`
`aspects of the issues in dispute. Based on my investigation in this matter, I conclude that
`
`Petitioner and Dr. Zadok have failed to show that any of the claims discussed in the Petition or
`
`Zadok Declaration are invalid for anticipation or obviousness.
`
`4.
`
`I receive compensation at my standard hourly rate of $550 per hour for my time
`
`working on this matter, plus expenses. I have no financial interest in Papst or the ‘399 patent,
`
`and my compensation is not dependent on the outcome of this inter partes review (“IPR”) or the
`
`underlying litigation. The conclusions I present are due to my own judgment.
`
`5.
`
`I reserve the right to modify and supplement the analysis and conclusions
`
`proposed herein based upon additional information including any additional fact discovery or
`
`expert discovery by the parties.
`
`II.
`
`Background and Qualifications
`
`6.
`
`My qualifications as an expert in the field of computer peripherals and data
`
`transfer between a computer and peripheral devices, relevant to the subject matter claimed in the
`
`‘399 patent, are provided in the paragraphs below. A copy of my latest curriculum vitae (CV) is
`
`attached as Exhibit A, which provides further details regarding my background and
`
`1
`
`

`

`qualifications. This CV identifies a list of all cases in which I have testified at trial or at
`
`deposition.
`
`7.
`
`I have over forty years of experience with electronics and electrical engineering,
`
`including extensive knowledge and experience with analog and digital electronic circuitry,
`
`digital computer technology, computer peripherals, control systems, digital communications,
`
`operating systems, and related software and hardware components. My technical expertise
`
`relevant to the subject matter claimed in the ‘399 patent includes my understanding of computer
`
`peripherals, analog and digital circuitry, interface devices, device drivers, file systems, SCSI
`
`standards, data buses, and operating systems.
`
`8.
`
`As a summary of my employment and education history, I worked as a Sergeant
`
`and Instructor for the United States Air Force as a maintenance technician for air defense
`
`computer systems from 1967–1970. After leaving the Air Force, I earned my Bachelor of
`
`Science in Electrical Engineering in 1972 from the University of Washington. After graduating,
`
`I was a candidate for a Master of Science degree in Electrical Engineering at Stanford University
`
`from 1972–1973, and I worked from 1973–1976 as an Engineer at Stanford University’s
`
`Artificial Intelligence Laboratory. My duties included the design, construction, and debugging
`
`of motor controls and sensor electronics for robotics and computer interfaces.
`
`9.
`
`After leaving Stanford, I founded G Systems in 1976, which managed the
`
`hardware and software design and development of computer transaction processing systems for a
`
`variety of applications and customers. Projects included writing communications software and
`
`device drivers, design of hardware and software interfaces for disk controllers, designing
`
`peripheral switches incorporated into system products, communications controllers, co-design of
`
`mainframe computers, and other projects.
`
`2
`
`

`

`10.
`
`In 1983, I co-founded and served as head of engineering of Softix Incorporated.
`
`Softix designed and produced systems to control and sell entertainment tickets by ticket agencies
`
`and large arenas in the United States, Canada, Australia, and Hong Kong. My duties at Softix
`
`included managing software development efforts; developing architecture, design, sales,
`
`contracting, production, and field support of large-scale software and hardware systems; and
`
`analyzing, debugging, and writing software application and driver programs for feature
`
`enhancements and system integration. I was also responsible for selecting, evaluating,
`
`integrating, and training customer staff and providing repair support for all hardware components
`
`of minicomputer systems; developing peripheral switch equipment for evolving system
`
`requirements; and manufacturing and selling peripheral switching equipment. In 1988-89, a
`
`colleague at my company and I designed a switch and repeater for the SCSI bus which required
`
`intimate knowledge of the bus protocol and general familiarity with the bus commands and
`
`device interface design. I applied for and received and successfully licensed four patents
`
`covering this work.
`
`11.
`
`I currently own and operate the consulting firm of Gafford Technology. The firm
`
`provides computer system-related services and offers analysis and presentation services to assist
`
`clients in litigation efforts. Specific services include consulting in computer system design,
`
`software selection, and network configuration, and providing expert factual analysis, claim
`
`interpretation assistance, prior art investigation, and testimony in patent and hardware/software
`
`systems litigation.
`
`12.
`
`I am generally familiar with the analysis of patents. I am the inventor of the
`
`following U.S. patents:
`
`• Switch for Distributed Arbitration Digital Data Buses, United States Patent No.
`5,621,899, issued April 15, 1997;
`
`3
`
`

`

`• Method for Operating a Repeater for Distributed Arbitration Digital Data Buses,
`United States Patent No. 5,684,966, issued November 4, 1997;
`• Repeater/Switch for Distributed Arbitration Digital Data Buses, United States
`Patent No. 5,758,109, issued May 26, 1998; and
`• Repeater/Switch for Distributed Arbitration Digital Data Buses, United States
`Patent No. 6,154,799, issued November 28, 2000.
`
`13. These patents relate to digital data buses used for communicating signals between
`
`different functional components of digital computers.
`
`14. Each of the patents listed above is directed to a repeater switch and related
`
`systems and methods for distributed arbitration digital data buses, and particularly applicable to a
`
`SCSI bus that I developed in the late 1980s. The repeater permits many devices to be placed
`
`near each other at the end of a SCSI cable without signal quality problems, and the switch
`
`permits sharing a device among several computers. Relevant to the patents as issue, both
`
`provide their features in a way that is transparent to the standard SCSI communications protocol
`
`and commands passed between initiator computers and target peripherals connected to the SCSI
`
`bus. All commands, including the common READ, WRITE, TEST UNIT READY, MODE
`
`SENSE, FORMAT DEVICE, and target behavior including disconnect/reconnect, pass through
`
`my switch and repeater as though the switch or repeater was not present. Through this work and
`
`my work in connection with other projects, I am very familiar with SCSI.
`
`15. The ‘399 patent concerns data acquisition systems for generating analog data, and
`
`processing, storing, and transferring the acquired data to a host computer without requiring a user
`
`to install any drivers or specialized software on the host computer. I recognize this technology
`
`as being well within the sphere of my experience and expertise, and I understand the technology
`
`described in the patents fully. I believe my experience and education in this industry qualifies
`
`me to explain this technology and to address the issues of patent validity from the perspective of
`
`a person of ordinary skill in the art. I am qualified to submit expert analyses in this
`
`4
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`

`

`proceeding.
`
`III. Materials Considered
`
`16.
`
`I have reviewed and considered all documents discussed throughout this
`
`declaration, including the Petition related to IPR2016-01839 (including relevant exhibits), the
`
`Patent Owner Preliminary Response, the Decision of Institution related to IPR2016-01839, the
`
`‘399 patent, the ‘399 patent prosecution history (or at least relevant parts thereof), the Zadok
`
`Declaration, Japanese Patent Application Publication H4-15853 (“Kawaguchi”), The SCSI Bus
`
`and IDE Interface Protocols, Applications and Programming, by Schmidt, First Edition,
`
`Addison-Wesley, 1995 (“Schmidt”) and the Patent Owner Response. Naturally, my review of
`
`these materials was informed by my education, my experience in and knowledge of the industry,
`
`and my work both as an engineer and a consultant.
`
`IV.
`
`Person of Ordinary Skill in the Art
`
`17.
`
`I have been asked to address the issues from the perspective of a person of
`
`ordinary skill in the art (“POSITA”) of the invention of the ‘399 patent. As stated in the ‘399
`
`patent, the field of the invention relates to “the transfer of data and in particular to interface
`
`devices for communication between a computer or host device and a data transmit/receive device
`
`from which data is to be acquired or with which two-way communication is to take place.”
`
`Exhibit 1001 (“’399 Patent”) at 1:9-13.
`
`18.
`
`Petitioner asserts that “a person having ordinary skill in the art (‘POSITA’) at the
`
`relevant time, would have had at least a four-year degree in electrical engineering, computer
`
`science, computer engineering, or related field of study, or equivalent experience, and at least two
`
`years’ experience in studying or developing computer interfaces or peripherals and storage related
`
`software.” Paper 2 (Petition) at 8. Petitioner further contends that “[a] POSITA would also be
`
`5
`
`

`

`familiar with operating systems (e.g., MS-DOS, Windows, Unix), their associated file systems
`
`(e.g., FAT, UFS, FFS), device drivers for computer components and peripherals (e.g., mass storage
`
`device drivers), and communication interfaces (e.g., SCSI, USB, PCMCIA).” Id.
`
`19.
`
`Patent Owner contends that a POSITA would have at least a bachelor’s degree in a
`
`related field such as computer engineering or electrical engineering and at least three years of
`
`experience in the design, development, and/or testing of hardware and software components
`
`involved with data transfer or in embedded devices and their interfaces with host systems. Paper
`
`12 (Patent Owner Preliminary Response) at 7. Alternatively, a POSITA may have five or more
`
`years of experience in these technologies, without a bachelor’s degree. Id.
`
`20.
`
`The Board determined that there were not meaningful differences between the
`
`parties’ definitions of a POSITA and adopted Petitioner’s assessment of a POSITA in the
`
`Institution Decision. Paper 15 (Institution Decision) at 11. Because I agree with the Board that
`
`there are not meaningful differences between the parties’ definitions of a POSITA and because I
`
`qualify as a POSITA under either assessment, I will proceed with this declaration using the
`
`Board’s adopted definition of a POSITA.
`
`21.
`
`I consider myself to have at least the credentials of a person of ordinary skill in
`
`the art, and I am capable of addressing the issues from the perspective of such a person. As a
`
`result of my education, academic experience, and industrial experience, I am familiar with
`
`interface devices and peripheral technology and also with the state of that technology in March
`
`of 1997, when the first application to which the ‘399 patent claims priority was filed.
`
`V.
`
`Applicable Legal Standards
`
`22. As a technical expert, I am not offering any legal opinions. Rather I am offering
`
`technical assessments and opinions. In rendering my analysis, I have been informed by counsel
`
`6
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`

`

`regarding various legal standards for determining patentability. I have applied those standards
`
`informing my technical opinions expressed in this declaration.
`
`23. The patent claims describe the invention made by the inventor and describe what
`
`the patent owner may prevent others from doing. I understand that an independent claim sets
`
`forth all the requirements that must be met in order to be covered by that claim. I further
`
`understand that a dependent claim does not itself recite all of the requirements of the claim but
`
`refers to another claim and incorporates all of the requirements of the claim to which it refers.
`
`24.
`
`It is my understanding that for a patent claim to be anticipated, all limitations of
`
`the claim must be disclosed or inherent in a single prior art reference.
`
`25.
`
`It is my understanding that a claimed invention is unpatentable if the differences
`
`between the invention and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill in the art to
`
`which the subject matter pertains. Obviousness, as I understand it, is based on the scope and
`
`content of the prior art, the differences between the prior art and the claim, and the level of
`
`ordinary skill in the art.
`
`26.
`
`I understand that when evaluating obviousness, one must not consider whether the
`
`claimed invention would have been obvious to a layman or to an expert; not use hindsight when
`
`comparing the prior art to the claimed invention; not consider what was learned from the
`
`teachings of the patent; or use the patent as a road map for selecting and combining items of
`
`prior art. In other words, one should avoid using the challenged patent as a guide through the
`
`maze of prior art references, combining the right references in the right way so as to achieve the
`
`result of the claims at issue. Instead, one must put oneself in the place of a person of ordinary
`
`skill at the time the invention was made and consider only what was known before the invention
`
`7
`
`

`

`was made and not consider what is known today.
`
`27.
`
`I understand that obviousness should be considered in light of the problem facing
`
`the inventor and the complexity of the alternatives for solving the problem. That individual
`
`elements of the claimed invention are disclosed in the prior art is not alone sufficient to reach a
`
`conclusion of obviousness.
`
`28.
`
`I also understand that when considering the obviousness of a patent claim, one
`
`should consider whether a teaching, suggestion, or motivation to combine the references exists
`
`so as to avoid impermissibly applying hindsight when considering the prior art. I understand that
`
`a previous approach to the motivation to combine required a teaching, suggestion, or motivation
`
`to be found explicitly or implicitly: (1) in the prior art; (2) in the knowledge of those of ordinary
`
`skill in the art; or (3) from the nature of the problem to be solved. However, I understand that a
`
`more expansive and flexible approach is now used when determining obviousness and the
`
`motivation to combine references. I understand that the legal determination of the motivation to
`
`combine references allows recourse to logic, judgment, and common sense, but that any such
`
`motivation to combine references must still avoid the improper application of hindsight or
`
`reliance on the patentee’s disclosure of his invention as found in the patent specification,
`
`drawings and claims.
`
`29.
`
`I understand that if the teachings of a prior art reference would lead one skilled in
`
`the art to make a modification that would render that prior art device, system, or method
`
`inoperable, then such a modification would generally not be obvious. I also understand that if a
`
`proposed modification would render the prior art device, system, or method unsatisfactory for its
`
`intended purpose, then there is strong evidence that no suggestion or motivation existed at the
`
`time of the subject invention to make the proposed modification.
`
`8
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`

`

`30.
`
`I understand that it is improper to combine references where the references teach
`
`away from their combination. I understand that a reference may be said to teach away when a
`
`person of ordinary skill, upon reading the reference, would be discouraged from following the
`
`path set out in the reference, or would be led in a direction divergent from the path that was taken
`
`by the applicant. It is also my understanding that the degree of teaching away will depend on the
`
`particular facts; in general, a reference will teach away if it suggests that the line of development
`
`flowing from the reference’s disclosure is unlikely to be productive of the result sought by the
`
`applicant. I understand that a reference teaches away, for example, if (1) the combination would
`
`change the principle of operation of the base reference, (2) the combination would produce a
`
`seemingly inoperative device, or (3) the references leave the impression that the product would
`
`not have the property sought by the applicant or would no longer achieve the intended purpose(s)
`
`of the references being modified or combined.
`
`31.
`
`Secondary considerations of obviousness are also considered in determining
`
`whether a claimed invention is obvious. For example, commercial success of the invention,
`
`copying by others, long-standing need in the art resolved by the patented invention, prior
`
`failure of others to solve the problem, licenses of the invention by others, unexpected
`
`results of the invention and skepticism of the invention or teaching away from the invention by
`
`others all tend to establish that an invention was non-obvious.
`
`32.
`
`I understand that the first step in determining either validity or infringement is to
`
`properly construe the claims. While it is my understanding that the Board is not bound by any
`
`previous claim constructions in the Institution Decision or in other judicial proceedings, at least
`
`two district court claim constructions and one Federal Circuit opinion have construed some of
`
`the terms of the ‘399 patent. I will discuss the claim constructions I have considered for certain
`
`9
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`

`

`limitations in more detail below.
`
`33.
`
`It is my understanding that an issued United States patent is presumed to be valid.
`
`It is my further understanding that it is the Petitioner’s burden to establish invalidity, including
`
`invalidity based on either anticipation or obviousness, by a preponderance of the evidence in
`
`this proceeding. Invalidity issues are determined on a claim-by-claim basis by comparing the
`
`claim to the prior art.
`
`VI. Overview of the ‘399 Patent
`
`34. The ’399 patent involves a unique method for achieving high data transfer rates
`
`for data acquisition systems (e.g., still pictures, videos, voice recordings) to a general-purpose
`
`computer, without requiring a user to purchase, install, and/or run specialized software for each
`
`system. Exhibit 1001 (’399 patent) at 4:23-27. At the time of the invention, there were an
`
`increasing number and variety of data acquisition systems with the ability to capture high
`
`volumes of information. Id. at 1:34-52. As such, there was an increasing demand to transfer that
`
`information to commercially-available, general purpose computers. Id. at 1:20-32. But at that
`
`time—and today—performing that data transfer operation required either loading specialized,
`
`sophisticated software onto a general purpose computer, which increases the risk of error and the
`
`level of complexity for the operator, or specifically matching interface devices for a data
`
`acquisition system to a host system that may maximize data transfer rates but lacks the flexibility
`
`to operate with different devices. Id. at 1:17-3:21.
`
`35. The ‘399 patent recognizes that the existing options were wasteful and inefficient
`
`and presents a solution that would achieve high data transfer rates, without specialized software,
`
`while being sufficiently flexible to operate independent of device or host manufacturers. Id. at
`
`2:17-36 and 3:24-27. The resulting invention would allow a data acquisition system to identify
`
`10
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`

`

`itself as a type of common device so as to leverage the inherent capabilities of general-purpose,
`
`commercially-available computers. Id. at 5:6-20. Accordingly, users could avoid loading
`
`specific software; improve data transfer efficiency; save time, processing power, and memory
`
`space; and avoid the waste associated with purchasing specialized computers or loading specific
`
`software for each device. Id. at 3:24-27, 8:23-9:58, 9:23-34, 10:6-12 and 12:23-41. The ’399
`
`patent claims variations of this concept and provides a crucial, yet seemingly simple, method and
`
`apparatus for a high data rate, device-independent information transfer. Id. at 3:24-27.
`
`36. The interface device disclosed in the ‘399 patent can leverage “drivers for
`
`input/output device[s] customary in a host device which reside in the BIOS system of the host
`
`device . . . .” Id. at 11:9-15; see also id. at 5:13-17 (“The interface device according to the
`
`present invention therefore no longer communicates with the host device or computer by means
`
`of a specially designed driver but by means of a program which is present in the BIOS system . .
`
`.”), 6:2-9 (describing the use of “usual BIOS routines” to issue INQUIRY instructions to the
`
`interface), and 8:43-50 (describing use of BIOS routines). Similarly, the written description
`
`describes also using drivers included in the operating system. Id. at 5:64-6:3 (“Communication
`
`between the host system or host device and the interface device is based on known standard
`
`access commands as supported by all known operating systems (e.g., DOS®, Windows®,
`
`Unix®).”). Alternatively, if the required specific driver or drivers for a multi-purpose interface
`
`(such as a SCSI interface) is already present in a host device, such drivers could be used with the
`
`‘399 patent’s interface device instead of, or in addition to, customary drivers which reside in the
`
`BIOS. Id. at 11:9-12. Accordingly, the ’399 patent contemplated a universal interface device
`
`that could operate independent of the manufacturer of the computer. Id. at 12:23-40. Indeed, the
`
`preferred embodiment discloses that the interface device includes three different connectors, a 50
`
`11
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`

`

`pin SCSI connector 1240, a 25 pin D-shell connector 1280, and a 25 pin connector 1282, to
`
`allow the ‘399 Patent’s interface device to connect to a variety of different standard interfaces
`
`that could be present in a host computer. Id. at 9:30-47 and FIG. 2.
`
`37. As is apparent from the title of the ’399 patent, the interface device disclosed is
`
`capable of acquiring and processing analog data. As shown in FIG. 2 reproduced below, the
`
`’399 patent discloses that the interface device 10 has an analog input at connection 16 for
`
`receiving analog data from a data transmit/receive device on a plurality of analog input channels
`
`1505 and simultaneously digitizing the received analog data using, inter alia, a sample and hold
`
`amplifier 1515 and an analog to digital converter 1530 that converts analog data received from
`
`the plurality of channels 1505 into digital data that may then be processed by the processor 1300.
`
`Id. at 9:49-64 and 10:27-41. “Each sample/hold circuit is connected to a corresponding input of
`
`an 8-channel multiplexer 1520 which feeds its output signals via a programmable amplifier 1525
`
`into an analog/digital converter (ADC).” Id. at 9:55-58. This arrangement of sample/hold
`
`circuits permits a single ADC to be used even when multiple analog data channels are being
`
`utilized. Id. at 9:49-64.
`
`12
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`

`VII. Claim Construction
`38.
`I have experience applying claim constructions that are provided to me in
`
`connection with my prior art work as an expert in district court proceedings and IPR
`
`
`
`proceedings.
`
`39.
`
`It is my understanding that the Board ordinarily construes terms based on their
`
`broadest reasonable construction in view of the specification. However, because the ‘399 patent
`
`will likely expire prior to the Final Written Decision in the present proceeding, it is my further
`
`understanding that the Board will construe the ‘399 patent claims based on their ordinary and
`
`13
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`

`

`customary meaning in accordance with Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir.
`
`2005) (en banc). Paper 15 (Institution Decision) at 7.
`
`40.
`
`In
`
`the Institution Decision,
`
`the Board adopted several claim
`
`limitation
`
`constructions from a previous litigation involving the ‘399 patent that was also appealed to the
`
`Federal Circuit. “Interface Device” was construed such that it is not limited to “a device that is
`
`physically separate and apart from, and not permanently attached to, a data device (or a host
`
`computer).” Id. at 8. It was further determined that a “second connecting device” does not
`
`require “a physical plug, socket, or other structure that permits a user to readily attach and detach
`
`something else.” Id. A “data transmit/receive device” was determined “need not be capable of
`
`communicating ‘when connected to the host device by the interface device.’” Id. “Virtual files”
`
`were determined to be “not limited to a file ‘whose content is stored off the interface device,
`
`though it includes such files.’” Id. at 9. Finally, an “input/output device customary in a host
`
`device” was construed to not be limited to a device “normally present within the chassis of a
`
`computer.” Id.
`
`41.
`
`In the underlying District Court litigation related to this IPR, a claim construction
`
`issued on March 7, 2017 that further construed certain terms of the ‘399 patent. A copy of this
`
`claim construction order is being included as Exhibit 2003.
`
`VIII. Overview of Kawaguchi
`
`42.
`
`It is my understanding that two translations of Kawaguchi have been submitted in
`
`this proceeding. Petitioner submitted Kawaguchi (Exhibit 1005) while Patent Owner submitted
`
`Kawaguchi (Exhibit 2004) because Patent Owner believes the Petitioner-submitted version
`
`contains translation errors. To the extent possible, I will attempt to cite to the relevant portions
`
`of both versions of the Kawaguchi translation.
`
`14
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`

`43. The title of the Kawaguchi patent is “SCSI device adapter.” Exhibit 2004
`
`(Kawaguchi) at 2; see also Exhibit 1005 (Kawaguchi) at 1. As the title suggests, Kawaguchi
`
`generally relates to a SCSI device adapter (also referred to as a SCSI device converter or “SDC”)
`
`for connecting non-SCSI peripheral devices to an engineering work station. Exhibit 2004
`
`(Kawaguchi) at 2-3, see also Exhibit 1005 (Kawaguchi) at 3. In particular, Kawaguchi states:
`
`“the object of the present invention is to provide a general-use SCSI device adapter that can
`
`easily connect a peripheral device that has a standard bus that is different from that of a SCSI
`
`bus, such as a PC-compatible bus, or the like, to the SCSI interface of an EWS that was built for
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`the purpose of connecting with a hard disk, and, in particular, to provide a general-use SCSI
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`device adapter that can apply an interrupt from the peripheral device side.” Exhibit 2004
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`(Kawaguchi) at 3, Exhibit 1005 (Kawaguchi) at 3. Kawaguchi discloses that the device
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`converter is able to input and output data to the SCSI interface of an Engineering Work Station
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`(EWS) from a peripheral device using four separate portions or units identified as different
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`logical devices, including a data writing unit, a data reading unit, a control data writing unit, and
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`an interrupt data reading unit. Exhibit 2004 (Kawaguchi) at 4, compare Exhibit 1005
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`(Kawaguchi) at 3, 8. Kawaguchi discloses: “The SCSI device adapter performs input/output of
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`data to/from an EWS SCSI interface through the same standard as the SCSI interface for a hard
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`disk, the EWS to write and read arbitrary data to/from four types of data writing portions and
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`reading portions that function as data relays with the peripheral device.” Exhibit 2004
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`(Kawaguchi) at 3, compare Exhibit 1005 (Kawaguchi) at 4.
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`44. The EWS “operates by reading from, or writing to, the individual writing portions
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`and reading portions using the same procedure as for four hard disk devices.” Exhibit 2004
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`(Kawaguchi) at 4; compare Exhibit 1005 (Kawaguchi) at 6. Kawaguchi explains that “the
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`15
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`controlling portion (16) controls the inputting and outputting of data from/to the peripheral
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`devices (4), (5), and (6) through the device interfaces (8), (9), and (10). That is, it outputs, to an
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`output device (4) such as a plotter, the data that is written to the data writing portion (11), [and]
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`inputs, into the data reading portion (12) the data that has been written in from an input device
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`(5), such as a CD-ROM.” Exhibit 2004 (Kawaguchi) at 4; compare Exhibit 1005 (Kawaguchi) at
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`6. Kawaguchi states that “the EWS (1) recognizes the individual writing portions and reading
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`portions (11), (12), (13), and (14) as individual devices, and thus, in the EWS (1), the processing
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`efficiency is high, as the different writing programs and reading programs for the individual
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`writing portions and reading portions (11), (12), (13), and (14) are launched simultaneously and
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`processed in parallel.” Exhibit 2004 (Kawaguchi) at 4; compare Exhibit 1005 (Kawaguchi) at 6.
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`45. A stated object of Kawaguchi’s invention is to provide a SCSI adaptor “that can
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`easily connect a peripheral device . . . to the SCSI interface of an EWS.” Exhibit 2004
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`(Kawaguchi) at 3, Exhibit 1005 (Kawaguchi) at 3. Kawaguchi states: “The SCSI device adapter
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`performs input/output of data to/from an EWS SCSI interface . . . to write and read arbitrary data
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`to/from four types of data writing portions and reading portions that function as data relays with
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`the peripheral device.” Exhibit 2004 (Kawaguchi) at 3, compare Exhibit 1005 (Kawaguchi) at 4.
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`The most efficient way to accomplish this connection is to talk as directly as possible between
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`the EWS and the peripheral where the data read unit and data write unit act merely as relays.
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`46. Kawaguchi’s teaching of separate reading and writing units having different IDs
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`is critical to his invention. Kawaguchi teaches that this feature is necessary to allow different
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`writing programs and reading programs to be launched simultaneously and processed in parallel.
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`The criticality of this feature suggests to me that one of ordinary skill would not be motivated to
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`modify the separate reading and writing units, such as by combining the units to allow reading
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`16
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`and writing to a single device. In my opinion, Kawaguchi’s separate reading and writing units
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`having different IDs is a principle of operation of Kawaguchi’s SDC, necessary to achieve the
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`desired result of launching separate reading and writing programs to allow