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
`_______________
`___________________________________
`
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`
`_______________
`
`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
`_______________
`___________________________________
`
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE ................................. 1
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`A.
`
`STATEMENT OF RELIEF REQUESTED ........................................ 1
`
`B. OVERVIEW OF THE ‘399 PATENT ................................................ 2
`
`C.
`
`D.
`
`E.
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................. 6
`
`CLAIM CONSTRUCTION ................................................................ 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS .................... 9
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUND OF
`REJECTION ........................................................................................................... 11
`A. GROUND 1-KAWAGUCHI, SCHMIDT AND THE “SAMPLING
`CIRCUIT” REFERENCES DO NOT RENDER CLAIMS 1, 3, 5, 11
`AND 14 OBVIOUS ................................................................................. 11
`
`1. OVERVIEW OF KAWAGUCHI .................................................. 11
`
`2. OVERVIEW OF SCHMIDT ......................................................... 16
`
`3. KAWAGUCHI AND SCHMIDT DO NOT DISCLOSE THE
` “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
`ii
`
`
`
`
`
` 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” LIMITATION
` OF INDEPENDENT CLAIM 1 OR THE CORRESPONDING
` LIMITATIONS OF INDEPENDENT CLAIMS 11 AND 14 OF
` THE ‘399 PATENT .......................................................................... 17
`
`4. KAWAGUCHI AND SCHMIDT DO NOT RENDER
` OBVIOUS DEPENDENT CLAIMS 3 AND 5 OF THE ‘399
` PATENT ........................................................................................... 23
`B. KAWAGUCHI AND SCHMIDT WOULD NOT BE COMBINED
`BY ONE SKILLED IN THE ART ........................................................ 24
`C.
`INTER PARTES REVIEW IS UNCONSTITUTIONAL .................... 29
`IV. CONCLUSION ............................................................................................. 29
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`
`Ex. No.
`2001
`
`2002
`
`2003
`
`2004
`
`
`
`
`Ex. No.
`1001
`1002
`1003
`
`1004
`1005
`
`1006
`
`1007
`
`1008
`1009
`1010
`1011
`1012
`
`
`
`EXHIBIT LIST
`
`Currently and Previously Filed – Patent Owner
`
`
`Description
`Defendants’ Responsive Claim Construction Brief in Papst Licensing
`GmbH & Co., KG v. Apple, Inc. (6:15-CV-01095-RWS)
`Declaration of Thomas A. Gafford in Support of Patent Owner
`Response (“Gafford Declaration”)
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Claim Construction Memorandum and Order
`issued March 7, 2017
`Japanese Patent Application Publication H4-15853 to Kawaguchi et
`al. (English Translation) (“Kawaguchi”)
`
`
`Previously Filed – Petitioner
`
`Description
`U.S. Patent 6,470,399 to Tasler
`File History for U.S. Patent 6,470,399
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 6,470,399
`Curriculum Vitae of Dr. Erez Zadok
`Japanese Patent Application Publication H4-15853 to Kawaguchi et
`al. (English Translation) (“Kawaguchi”)
`Japanese Patent Application Publication H4-15853 to Kawaguchi et
`al. (Original Japanese)
`The SCSI Bus and IDE Interface Protocols, Applications and
`Programming, by Schmidt, First Edition, Addison-Wesley, 1995
`U.S. Patent No. 5,506,692 to Murata
`U.S. Patent No. 4,727,512 to Birkner
`U.S. Patent No. 4,792,896 to Maclean
`International Publication Number WO 92/21224 to Jorgensen
`Small Computer System Interface-2 (SCSI-2), ANSI X3.131-1994,
`American National Standard for Information Systems (ANSI).
`iv
`
`
`
`1013
`1014
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`Operating System Concepts, by Silberschatz et al., Fourth Edition
`Microsoft Computer Dictionary, Third Edition, Microsoft Press, 1997
`McGraw-Hill Dictionary of Scientific and Technical Terms, Fifth
`Edition, McGraw-Hill, 1994
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015).
`The Art of Electronics, by Horowitz et al., First Edition, Cambridge
`University Press, 1980
`The IEEE Standard Dictionary of Electrical and Electronics Terms,
`Sixth Edition, 1996
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language, Random House, 1996
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`“Principles of Data Acquisition and Conversion,” Burr-Brown
`Application Bulletin, 1994
`“Principles of Data Acquisition and Conversion,” Intersil Application
`Note, October 1986
`“Sample-and-Hold Amplifiers,” Analog Devices MT-090 Tutorial,
`2009
`Declaration of Scott Bennett
`Discrete-Time Signal Processing, by Oppenheim et al., First Edition,
`Prentice-Hall, 1989
`1026-1030 Intentionally left blank
`1031
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30, 1994
`(“PNP SCSI”)
`
`
`1023
`
`1024
`1025
`
`
`
`
`
`v
`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioner Apple, Inc. (“Petitioner”) did not submit a statement of material
`
`facts in its Petition for inter partes review. Paper 2 (Petition). Accordingly, no
`
`response to a statement of material facts is due pursuant to 37 C.F.R. § 42.23(a),
`
`and no facts are admitted.
`
`II.
`
`INTRODUCTION
`Patent Owner Papst Licensing GMBH & Co., KG (“Patent Owner”)
`
`respectfully submits this Patent Owner Response under 35 U.S.C. §§ 311-319 and
`
`37 C.F.R. § 42.120. It is being timely filed on or before June 26, 2017 pursuant to
`
`the Scheduling Order issued in this proceeding. Paper 16 (Scheduling Order) at 6.
`
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e). Petitioner’s propositions of unpatentability fail
`
`to meet that burden with respect to claims 1, 3, 5, 11 and 14 of U.S. Patent No.
`
`6,470,399 (“’399 Patent”).
`
`
`
`A.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 316, Patent Owner respectfully requests that the
`
`Patent Trial And Appeal Board (“Board” or “PTAB”) find that originally issued
`
`claims 1, 3, 5, 11 and 14 of the ‘399 Patent are valid in view of the proposed
`
`
`
`1
`
`
`
`ground of unpatentability under consideration.1
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘399 PATENT
`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.
`
`The ‘399 Patent recognizes that the existing options were wasteful and
`
`
`1 Although Petitioner presented
`two proposed grounds of rejection—(1)
`Kawaguchi and Schmidt and (2) Murata and Schmidt—the Board instituted trial on
`only the Kawaguchi and Schmidt ground while also adding the “sampling circuit”
`references to Petitioner’s analysis of Kawaguchi and Schmidt. Paper 15
`(Institution Decision) at 6, 27-28.
`
`
`
`2
`
`
`
`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 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.
`
`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 the 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
`
`
`
`3
`
`
`
`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 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.
`
`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
`
`
`
`4
`
`
`
`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.
`
`
`
`5
`
`
`
`
`
`
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`C.
`“The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to have known the relevant art at the time of the invention.” Manual of
`
`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (1) type of
`
`problems encountered in the art; (2) prior art solutions to those problems; (3)
`
`rapidity with which innovations are made; (4) sophistication of the technology; and
`
`
`
`6
`
`
`
`(5) educational level of active workers in the field. In re GPAC, 57 F.3d 1573,
`
`1579 (Fed. Cir. 1995).
`
`Petitioner’s proposed definition of the level of ordinary skill in the art is
`
`partially consistent with Patent Owner’s view. 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 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.
`
`Patent Owner contends that 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. 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
`
`
`
`7
`
`
`
`involved with data transfer or in embedded devices and their interfaces with host
`
`systems. Exhibit 2002 (Gafford Declaration) at ¶ 19. Alternatively, a POSITA
`
`may have five or more years of experience in these technologies, without a
`
`bachelor’s degree. Exhibit 2002 (Gafford Declaration) at ¶ 19.
`
`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. While
`
`Patent Owner believes its proposed definition is more appropriate, it agrees with
`
`the Board that there are not meaningful differences between the parties’ definitions
`
`of a POSITA for purposes of this proceeding.
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board ordinarily construes claim terms
`
`in an unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art. Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 136
`
`S. Ct. 2131, 2146 (June 20, 2016). The broadest reasonable meaning given to
`
`claim language must take into account any definitions presented in the
`
`specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
`
`2004) (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). Under this standard,
`
`
`
`8
`
`
`
`claim terms are given their ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)).
`
`However, because the ‘399 Patent will probably expire prior to the Final
`
`Written Decision in the present proceeding, the Board will likely construe the ‘399
`
`Patent claims based on their ordinary and customary meaning in accordance with
`
`Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Paper 15
`
`(Institution Decision) at 7.
`
`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.
`
`
`
`9
`
`
`
`Finally, an “input/output device customary in a host device” was construed not to
`
`be limited to a device “normally present within the chassis of a computer.” Id.
`
`In the underlying district court litigation related to this IPR, a claim
`
`construction order 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 for the Board’s consideration.
`
`
`
`E. SUMMARY OF PATENT OWNER’S ARGUMENTS
`The Board instituted inter partes review on claims 1, 3, 5, 11 and 14 of the
`
`‘399 Patent based on a single ground of rejection—Kawaguchi and Schmidt and
`
`“sampling circuit” references. Paper 15 (Institution Decision) at 28. However, this
`
`proposed ground of unpatentability fails with respect to all of these claims because
`
`the proposed references and combination of references fail to disclose or suggest
`
`each and every limitation as recited by the ‘399 Patent, and Kawaguchi and
`
`Schmidt would not be combined in the manner Petitioner suggests.
`
`Japanese Patent Application Publication No. H4-15853 (“Kawaguchi”),
`
`alone or in combination with the other applied prior art, does not disclose the
`
`“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
`
`
`
`10
`
`
`
`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” limitation of
`
`challenged independent claim 1 of the ‘399 Patent or the corresponding
`
`limitations of independent claims 11 and 14 of the ‘399 Patent.
`
`Further, Petitioner’s assertions of obviousness based on combining the
`
`primary reference, Kawaguchi, with teachings of the secondary reference, The
`
`SCSI Bus and IDE Interface Protocols, Applications and Programming, by
`
`Schmidt, First Edition, Addison-Wesley, 1995 (“Schmidt”), are mere conclusory
`
`statements that do not account for the manner in which the references teach away
`
`from the proposed combination. The proposed combination of Kawaguchi’s
`
`specialized device with signaling for a standard hard disk drive as discussed in
`
`Schmidt would change the principle of operation of Kawaguchi, produce a
`
`seemingly inoperative device, and/or create a device that no longer achieved the
`
`intended purpose of Kawaguchi. Because Petitioner fails to provide a persuasive
`
`fact-based analysis with some rational underpinning to support its combination
`
`theories of obviousness, Petitioner cannot fulfill its burden of showing by a
`
`preponderance of the evidence that claims 1, 3, 5, 11 and 14 of the ‘399 Patent are
`
`obvious.
`
`
`
`11
`
`
`
`Finally, the IPR process violates the Constitution by extinguishing private
`
`property rights through a non-Article III forum without a jury. To the extent any
`
`claims of the ‘399 Patent are found invalid in this IPR, Patent Owner hereby
`
`challenges the constitutionality of the process of invalidation and reserves all
`
`rights related thereto.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUND
`OF REJECTION
`
`THE
`SCHMIDT AND
`1-KAWAGUCHI,
`A. GROUND
`“SAMPLING CIRCUIT” REFERENCES DO NOT RENDER
`CLAIMS 1, 3, 5, 11 AND 14 OBVIOUS
`
`1.
`
`
`
`
`Two translations of Kawaguchi have been submitted in this proceeding.
`
`OVERVIEW OF KAWAGUCHI
`
`Petitioner submitted Kawaguchi (Exhibit 1005) while Patent Owner submitted
`
`Kawaguchi (Exhibit 2004). Patent Owner believes the Petitioner-submitted
`
`version of Kawaguchi contains translation errors that make it more difficult to
`
`understand. While Patent Owner believes the proposed ground of rejection fails
`
`irrespective of the translation of Kawaguchi applied, Patent Owner provides the
`
`additional translation for completeness and accuracy. To the extent possible,
`
`Patent Owner will attempt to cite to the relevant portions of both versions of the
`
`Kawaguchi translation.
`
`The title of the Kawaguchi patent is “SCSI device adapter.” Exhibit 2004
`
`(Kawaguchi) at 2; Exhibit 1005 (Kawaguchi) at 1. As the title suggests,
`
`
`
`12
`
`
`
`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, 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 the purpose of connecting with a hard disk, and, in particular, to provide a
`
`general-use SCSI device adapter that can apply an interrupt from the peripheral
`
`device side.” Exhibit 2004 (Kawaguchi) at 3, Exhibit 1005 (Kawaguchi) at 3.
`
`Kawaguchi discloses that the device converter is able to input and output
`
`data to the SCSI interface of an Engineering Work Station (EWS) from a
`
`peripheral device using four separate portions or units each identified as a different
`
`logical device, including a data writing unit, a data reading unit, a control data
`
`writing unit, and an interrupt data reading unit. Exhibit 2004 (Kawaguchi) at 4;
`
`Exhibit 1005 (Kawaguchi) at 3, 8. Kawaguchi discloses: “[t]he SCSI device
`
`adapter performs input/output of data to/from an EWS SCSI interface through the
`
`same standard as the SCSI interface for a hard disk, the EWS to write and read
`
`arbitrary data to/from four types of data writing portions and reading portions that
`
`function as data relays with the peripheral device.” Exhibit 2004 (Kawaguchi) at
`
`
`
`13
`
`
`
`3; Exhibit 1005 (Kawaguchi) at 4.
`
`The EWS “operates by reading from, or writing to, the individual writing
`
`portions and reading portions using the same procedure as for four hard disk
`
`devices.” Exhibit 2004 (Kawaguchi) at 4; Exhibit 1005 (Kawaguchi) at 6.
`
`Kawaguchi explains that “the controlling portion (16) controls the inputting and
`
`outputting of data from/to the peripheral devices (4), (5), and (6) through the
`
`device interfaces (8), (9), and (10). That is, it outputs, to an output device (4) such
`
`as a plotter, the data that is written to the data writing portion (11), [and] inputs,
`
`into the data reading portion (12) the data that has been written in from an input
`
`device (5), such as a CD-ROM.” Exhibit 2004 (Kawaguchi) at 4; Exhibit 1005
`
`(Kawaguchi) at 6. Kawaguchi states that “the EWS (1) recognizes the individual
`
`writing portions and reading portions (11), (12), (13), and (14) as individual
`
`devices, and thus, in the EWS (1), the processing efficiency is high, as the different
`
`writing programs and reading programs for the individual writing portions and
`
`reading portions (11), (12), (13), and (14) are launched simultaneously and
`
`processed in parallel.” Exhibit 2004 (Kawaguchi) at 4; Exhibit 1005 (Kawaguchi)
`
`at 6.
`
`A stated object of Kawaguchi’s invention is to provide a SCSI adaptor “that
`
`can easily connect a peripheral device . . . to the SCSI interface of an EWS.”
`
`Exhibit 2004 (Kawaguchi) at 3, Exhibit 1005 (Kawaguchi) at 3. As previously
`
`
`
`14
`
`
`
`mentioned, Kawaguchi states: “[t]he SCSI device adapter performs input/output of
`
`data to/from an EWS SCSI interface…to write and read arbitrary data to/from four
`
`types of data writing portions and reading portions that function as data relays with
`
`the peripheral device.” Exhibit 2004 (Kawaguchi) at 3; Exhibit 1005 (Kawaguchi)
`
`at 4. The most efficient way to accomplish this connection is to talk as directly as
`
`possible between the EWS and the peripheral where the data read unit and data
`
`write unit act merely as relays. Exhibit 2002 (Gafford Declaration) at ¶ 45.
`
`Kawaguchi’s teaching of separate reading and writing units having different
`
`IDs is critical to his invention. Exhibit 2002 (Gafford Declaration) at ¶ 46.
`
`Kawaguchi teaches that this feature is necessary to allow different writing
`
`programs and reading programs to be launched simultaneously and processed in
`
`parallel. Exhibit 2002 (Gafford Declaration) at ¶ 46. The criticality of this feature
`
`suggests that one of ordinary skill would not be motivated to modify the separate
`
`reading and writing units, such as by combining the units to allow reading and
`
`writing to a single device. Exhibit 2002 (Gafford Declaration) at ¶ 46.
`
`Kawaguchi’s separate reading and writing units having different IDs is a principle
`
`of operation of Kawaguchi’s SDC, necessary to achieve the desired result of
`
`launching separate reading and writing programs to allow parallel processing.
`
`Exhibit 2002 (Gafford Declaration) at ¶ 46.
`
`
`
`15
`
`
`
`Kawaguchi discloses no circuit details. Exhibit 2002 (Gafford Declaration)
`
`at ¶ 47. A POSITA would understand that all the goals of Kawaguchi can be
`
`provided by a circuit including a SCSI interface IC connected to the data bus of a
`
`microcomputer along with RAM and ROM, and an interface for each device to
`
`which the Logical Unit Numbers (LUNs) correspond. Exhibit 2002 (Gafford
`
`Declaration) at ¶ 47. Typically, the plotter interface would be a serial port, the CD
`
`ROM interface would be an IDE port, the read interrupt interface would be a
`
`general purpose parallel I/O port that could be used with a variety of sequencers
`
`contemplated by the inventor, and another general purpose parallel I/O port for the
`
`control data writing unit would exist that can be connected to a sequencer for
`
`controlling it. Exhibit 2002 (Gafford Declaration) at ¶ 47. These hardware
`
`resources are sufficient to connect to all the elements of the disclosure. Exhibit
`
`2002 (Gafford Declaration) at ¶ 47.
`
`In accordance with Kawaguchi’s stated functions, the microcomputer
`
`software would respond to a command on each LUN to perform the function
`
`associated with that LUN as quickly as possible and then dismiss to be ready for
`
`the next command. Exhibit 2002 (Gafford Declaration) at ¶ 48. If a command to
`
`read the CD ROM arrives, the command would be translated to IDE format and
`
`issued to the CD ROM. Exhibit 2002 (Gafford Declaration) at ¶ 48. The relay
`
`would typically then disconnect from the EWS until CD ROM data were available,
`
`
`
`16
`
`
`
`at which time the relay would reconnect and transfer the data from the CD ROM’s
`
`read buffer to the SCSI port until the amount of data requested in the original read
`
`command was satisfied. Exhibit 2002 (Gafford Declaration) at ¶ 48. Because the
`
`CD ROM has a read buffer, no buffering in the data reading unit is required.
`
`Exhibit 2002 (Gafford Declaration) at ¶ 48. If the plotter were to be written, the
`
`LUN handler for the data write unit would accept data from the SCSI bus and send
`
`it to the plotter, pausing as needed to deal with differences between plotter speed
`
`and SCSI bus speed. Exhibit 2002 (Gafford Declaration) at ¶ 48.
`
`2.
`
`OVERVIEW OF SCHMIDT
`
`
`
`As the Board stated, “Schmidt describes the SCSI bus and IDE (Integrated
`
`Drive Electronics) interface, which both are ANSI (American Nation Standards
`
`Institute) standards.” Paper 15 (Institution Decision) at 14; Exhibit 1007 (Schmidt)
`
`at Preface. “According to Schmidt, these interfaces are two of the most important
`
`interfaces for computer peripherals in use at that time, and almost all computers at
`
`that time, from PCs to workstations to mainframes, were equipped with a SCSI
`
`interface.” Id. “The SCSI bus is designed for hard drives, as well as tape drives,
`
`CD-ROM, scanners, and printers.” Id.
`
`3.
`
`KAWAGUCHI AND SCHMIDT DO NOT DISCLOSE
`THE
`“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
`
`
`
`17
`
`
`
`INTERFACE OF THE HOST
`MULTI-PURPOSE
`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” LIMITATION OF INDEPENDENT
`CLAIM 1 OR THE CORRESPONDING LIMITATONS
`OF INDEPENDENT CLAIMS 11 AND 14 OF THE ‘399
`PATENT
`
`
`Kawaguchi and Schmidt do not disclose the “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” limitation of independent claim 1
`
`of the ‘399 Patent. Exhibit 2002 (Gafford Declaration) at ¶ 50. In addition,
`
`Kawaguchi and Schmidt do not disclose the corresponding limitations of
`
`independent claims 11 and 14 of the ‘399 Patent that require “wherein the first
`
`
`
`18
`
`
`
`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 devic
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