`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`
`
`
`
`DECLARATION OF EREZ ZADOK, PH.D.
`IN SUPPORT OF REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`Apple 1032
`IPR2016-01839
`
`
`
`Table of Contents
`
`
`
`I.
`II.
`
`III.
`
`Introduction .................................................................................................... 1
`Background of the Technology ...................................................................... 2
`A. A SCSI controller manages one or more logical units (LUNs). ............ 2
`B. A SCSI controller receives a separate INQUIRY command, and
`returns a separate INQUIRY response, for each LUN. ......................... 5
`C. SCSI provides mechanisms for a device to report that a host device
`cannot read from or write to the device. ................................................ 9
`Construction of the phrase “it is an input/output device” in claims 1, 11, and
`14.
` .............................................................................................................11
`IV. Kawaguchi, Schmidt, and the sampling references disclose or suggest
`limitations of Claims 1, 3, 5, 11, and 14 ......................................................15
`A. Overview of Kawaguchi and Schmidt .................................................15
`B. A POSITA would have been motivated to combine Kawaguchi and
`Schmidt ................................................................................................23
`C. The combination of Kawaguchi and Schmidt discloses the
`“wherein” limitation of Claims 1, 11, and 14 that Mr. Gafford asserts
`is missing .............................................................................................26
`Conclusion ....................................................................................................36
`
`
`V.
`
`
`
`
`
`
`- ii -
`
`
`
`I.
`
`Introduction
`
`I, Dr. Erez Zadok, declare as follows:
`
`1.
`
`I submit this declaration in support of Apple Inc.’s (“Petitioner”)
`
`Reply to the Patent Owner Response to the Petition for Inter Partes Review of
`
`U.S. Patent No. 6,470,399 (“the ’399 patent”) titled “Flexible Interface for
`
`Communication Between a Host and an Analog I/O Device Connected to the
`
`Interface Regardless the Type of the I/O Device” by Michael Tasler, and that the
`
`’399 patent is currently assigned to Papst Licensing GmbH & Co. KG.
`
`2.
`
`This declaration supplements my October 11, 2016 declaration
`
`submitted as Exhibit 1003 in the above-referenced proceeding and is in response to
`
`Patent Owner’s Response to Petition for Inter Partes Review (“Response”) dated
`
`June 26, 2017, and the Declaration of Thomas A. Gafford, submitted as Exhibit
`
`2002 and dated June 26, 2017. I understand that my curriculum vitae has been
`
`submitted into the record of this proceeding as Exhibit 1004.
`
`3.
`
`In preparing this declaration, in addition to my knowledge and
`
`experience, I have reviewed and am familiar with the following references:
`
`Japanese Patent Application Publication No. H4-
`15853 to Kawaguchi et al. (“Kawaguchi”). I understand
`that the original Japanese application has been provided
`as Ex. 1006 and that an English translation (which I
`reviewed) has been provided as Ex. 1005. I also
`
`
`
`
`- 1 -
`
`
`
`understand that the Patent Owner has provided a second
`English translation as Ex. 2004.
`
`The SCSI Bus and IDE Interface—Protocols,
`Applications and Programming by Friedhelm Schmidt
`(“Schmidt”) (Ex. 1007);
`
`Board’s Decision to Institute Trial (Paper 15);
`
`Patent Owner’s Response to Petition for Inter Partes
`Review (Paper 17);
`
`Declaration of Thomas A. Gafford (Exhibit 2002); and
`
`Deposition Transcript of Mr. Gafford (Exhibit 1033).
`
`4.
`
`I have also considered all other materials cited herein.
`
`II. Background of the Technology
`A. A SCSI controller manages one or more logical units (LUNs).
`The SCSI interface is a “device independent I/O bus, allowing a
`5.
`
`variety of devices to be linked to a communication system using a single bus.” (Ex.
`
`1007, Schmidt, p. 79.) In other words, devices connected to a SCSI bus share the
`
`same physical medium of communication and can be addressed through the same
`
`SCSI bus. (Id.)
`
`6.
`
`As Schmidt describes, “[a] computer system is connected to the SCSI
`
`bus through a host adapter,” whereas “[f]or a peripheral device the corresponding
`
`role is played by a controller.” (Schmidt, p. 79.) A normally configured SCSI bus
`- 2 -
`
`
`
`
`
`
`can support eight devices. (Schmidt, p. 79 (“Up to eight devices can be addressed
`
`using the SCSI bus”).) Each adapter and each controller is assigned a SCSI ID
`
`ranging from 0 to 7. It was common at the time of Schmidt that the SCSI controller
`
`itself (SCSI host adapter) was assigned the highest ID number, 7. (Schmidt, pp.
`
`89–90 (“The controller itself has the SCSI ID”).)
`
`7.
`
`The peripherals themselves are viewed as logical units with their own
`
`Logical Unit Numbers, or LUNs, associated with a given controller. (Schmidt,
`
`p. 90.) Given that SCSI supports 8 devices connected to the SCSI bus, a single
`
`SCSI controller can interface 8 LUNs to the SCSI bus. (Schmidt, p. 89, p. 131 (“A
`
`SCSI target is addressed using its SCSI ID [and] [w]ithin a single target up to eight
`
`LUNs…are accessible”).) I note that, at the time of Schmidt, it was common both
`
`for a hard disk to have its own controller (such that it is the only LUN associated
`
`with the controller), and for a controller to interface multiple hard disks. (Schmidt,
`
`pp. 90–91.) Figure 10.2 of Schmidt, reproduced below, illustrates both of these
`
`cases.
`
`
`
`
`- 3 -
`
`
`
`
`
`(Schmidt, p. 91.)
`
`8.
`
`As illustrated, the system on the left represents a peripheral device
`
`having an embedded SCSI controller with a SCSI ID of “SCSI ID.” The device
`
`itself is represented as “LUN 0.” In the system on the right, the SCSI controller
`
`interfaces two peripheral devices, Device 1 and Device 2 (located behind Device
`
`1), represented logically as “LUN 0” and “LUN 1,” respectively. Even in this case,
`
`however, there is still only one SCSI ID assigned to the SCSI controller.
`
`9.
`
`A device on the SCSI bus acts as either an initiator or a target.
`
`(Schmidt, p. 90.) A device may be able to assume either role. (Schmidt, p. 90.) A
`
`target is comprised of LUNs and, optionally, target routines, though the latter are
`
`“seldom implemented.” (Schmidt, p. 120.) An initiator begins a transaction by
`
`selecting a target, and the target controls the bus protocol after selection. (Schmidt,
`
`p. 90.)
`
`
`
`
`- 4 -
`
`
`
`B. A SCSI controller receives a separate INQUIRY command, and
`returns a separate INQUIRY response, for each LUN.
`
`10. When a host computer powers up, the host adapter sends INQUIRY
`
`commands to SCSI peripherals to discover what peripherals are connected to the
`
`bus. (Ex. 1034, U.S. Patent 5,089,958, 12:41–36 (“The SCSI devices are initialized
`
`as shown in FIG. 3 by performing a hardware reset on all devices on each of the
`
`three SCSI ports. Each SCSI device ID is interrogated with a test unit ready
`
`request. Devices responding have the eight logical unit numbers, or LUNs,
`
`interrogated by an inquiry request.”); Ex. 1012, SCSI Standard, p. 96 (“The
`
`INQUIRY command is typically used by the initiator after a reset or power-up
`
`condition to determine the device types for system configuration.”).) Like all SCSI
`
`commands, the INQUIRY command is directed to a specific LUN of a target. (Ex.
`
`1034, 12:41–36; Schmidt, p. 138 (“The inquiry command tells us about a LUN,
`
`giving us a list of specific details in a concise format.”); Schmidt, p. 120 (“SCSI
`
`commands sent by an initiator are not executed by a target itself, but rather by one
`
`of its LUNs or target routines.”); Schmidt, p. 135 (“SCSI commands are always
`
`directed to a LUN or to a target routine, not to the target itself.”).) The LUN
`
`number of interest is specified as part of the INQUIRY command, as illustrated in
`
`Table 12.11 from Schmidt p. 139, annotated below.
`
`
`
`
`- 5 -
`
`
`
`
`
`11. A LUN responds to an INQUIRY command with INQUIRY data. For
`
`example, Schmidt describes that “[i]t is most common to see this command with a
`
`transfer length of FFh1…. This represents a request for standard INQUIRY data.”
`
`(Schmidt, p. 138.) The INQUIRY data includes the peripheral device type for the
`
`LUN. (See Schmidt, p. 139.) This 5-bit field is highlighted below, annotated from
`
`Schmidt Table 12.12 at p. 139.
`
`
`1 “FFh”, “00h”, and the like, indicate a two-digit number in hexadecimal
`
`notation.
`
`
`
`
`- 6 -
`
`
`
`
`
`12. There are ten main device types defined in the SCSI standard. (See
`
`Schmidt, p. 133 (Table 12.1).) Of interest is the Direct-Access Device type (SCSI
`
`Standard, p. 98, Table 47), sometimes described by Schmidt as the Disk Drive
`
`class (Schmidt, p. 133, Table 12.1; see also Schmidt, p. 158 (devoting an entire
`
`Chapter 13 to “Direct access devices”).) This class is not limited to hard disks, but
`
`“includes all devices that allow direct access to any logical block” including
`
`“[d]isk drives, magneto-optical drives, diskettes and RAM disks.” (Schmidt,
`
`p. 158.) For example, the SCSI model allowed for removable devices (e.g.,
`
`diskettes or floppies) as well as volatile storage systems (e.g., RAM disks). A
`
`
`
`
`- 7 -
`
`
`
`POSITA would understand diskettes and RAM disks to be different than traditional
`
`hard disk, and yet fall within SCSI’s definition of “Direct access devices.”
`
`13. The host computer issues an INQUIRY command to each LUN
`
`connected to the SCSI bus to discover if the LUN exists and, if so, the LUN’s
`
`device type. All SCSI devices must be able to respond to an INQUIRY command
`
`with INQUIRY data. (SCSI Standard, p. 96 (specifying that a target “shall” return
`
`the standard INQUIRY data when a specific bit in the INQUIRY command is set),
`
`p. 96 (“The INQUIRY data should be returned [in response to an INQUIRY
`
`command] even though the peripheral device may not be ready for other
`
`commands”).) Notably, the SCSI standard dictates that a device should be able to
`
`respond to an INQUIRY command even before the device itself is ready. (See, e.g.,
`
`Schmidt, p. 88 (noting that a device should return INQUIRY data even if the
`
`device is not ready for other commands).) This was useful because the electronics
`
`portion of a hard disk could initialize much faster than the mechanical portion,
`
`which required heavy platters to gradually spin up and reach optimum RPM
`
`(Revolutions Per Minute) speeds.
`
`14. Support for the INQUIRY command therefore does not require the
`
`capability to read or write to the device. A Direct-Access Device includes disk
`
`drives, magneto-optical drives, diskettes and RAM disks. (Schmidt, p. 158.) As
`
`would be readily appreciated by a POSITA, such devices do not need to provide
`
`
`
`
`- 8 -
`
`
`
`both read and write access, for example, when the particular data on the device is
`
`protected. A POSITA would be familiar with physical switches on hard disks to
`
`turn write protection on, and breaking a floppy diskette’s or tape’s “write tab” to
`
`prevent overwriting it. (Schmidt, p. 144 (disclosing the “DATA PROTECT” sense
`
`key indicating that “[a]ccess to the data is blocked”), p. 180 (“[a]lthough the write
`
`protection mechanism is usually implemented on the removable medium, many
`
`drives have a write protection switch as well”); SCSI Standard, p. 119 (“DATA
`
`PROTECT. Indicates that a command that reads or writes the medium was
`
`attempted on a block that is protected from this operation. The read or write
`
`operation is not performed”), p. 150 (“A volume is mounted when the direct-access
`
`device is capable of performing write or read operations to the medium.”)
`
`(emphasis added), p. 195 (describing that direct access devices may be write
`
`protected using a “write protect (WP) bit.”).)
`
`C.
`
`SCSI provides mechanisms for a device to report that a host
`device cannot read from or write to the device.
`
`15. The SCSI standard has built-in mechanisms to inform a host computer
`
`that an attempted disk access failed because the accessed block is protected from
`
`being read from or written to. Specifically, “SCSI commands end with a status
`
`phase.” (Schmidt, p. 137.) During this phase, “a single status byte is transferred.”
`
`(Schmidt, p. 137.) Schmidt discloses that “[t]he three most common status bytes
`
`are GOOD (00h), BUSY (08h) and CHECK CONDITION (02h).” (Schmidt,
`
`
`
`
`- 9 -
`
`
`
`p. 137.) A SCSI peripheral responds with a CHECK CONDITION response when
`
`“[t]he command did not complete successfully.” (Schmidt, p. 137, Table 12.9.) The
`
`initiator “[u]se[s] the REQUEST SENSE command for more detailed
`
`information.” (Schmidt, p. 137, Table 12.9; see also p. 142 (“The command
`
`REQUEST SENSE is always used in response to a CHECK CONDITION in order
`
`to read the sense data”).) In response to a CHECK CONDITION command, a SCSI
`
`device responds with sense (status) data which “gives information concerning the
`
`reason why the preceding command ended abnormally.” (Schmidt, p. 142.) One
`
`parameter returned with the sense data is the sense key. (See Schmidt, p. 143 and
`
`Table 12.17.) “It is often the case that the sense key alone is enough information.”
`
`(Schmidt, p. 143.) The SCSI standard defines 15 possibilities for the Sense Key,
`
`one of which is called DATA PROTECT. (See Schmidt, p. 144 (Table 12.18);
`
`SCSI Standard, p. 119 (Sense Key 7h).) The DATA PROTECT Sense Key
`
`“[i]ndicates that a command that reads or writes the medium was attempted on a
`
`block that is protected from this operation.” (SCSI Standard, p. 119.) When this
`
`occurs, “[t]he read or write operation is not performed.” (SCSI Standard, p. 119.)
`
`With respect to Direct-Access Devices, the SCSI standard specifies that an
`
`“[a]ttempt to write on write protected medium” results in the DATA PROTECT
`
`Sense Key. (SCSI Standard, pp. 154–55.)
`
`
`
`
`- 10 -
`
`
`
`III. Construction of the phrase “it is an input/output device” in claims 1, 11,
`and 14.
`
`16. Mr. Gafford states that “[i]t is illogical in the context of the ‘399
`
`patent to interpret the claim language for ‘it is an input/output device’ to mean ‘it is
`
`one or more input or output devices’ as well as inconsistent with the Court’s claim
`
`construction assigning plain meaning to ‘signals to the host device that it is an
`
`input/output device customary in a host device.’” (Ex. 2002, Gafford Decl., ¶ 54.)
`
`Thus, it appears to be Mr. Gafford’s opinion that the word “an” means “exactly
`
`one” and that the term “input/output” requires both input and output. Mr. Gafford
`
`further stated in deposition that the word “it” refers to the interface device. (See
`
`Ex. 1033, Gafford Depn., 94:18 to 96:16.) I disagree with each of these positions.
`
`17. First, a POSITA would understand the word “an” to mean “one or
`
`more” because of the plain meaning of the indefinite article and the open-ended
`
`nature of the claim. Claim 1, for example, recites “An interface device…
`
`comprising….” The word “comprising” teaches a POSITA that the claim
`
`encompasses a system having features not explicitly recited in the claim. Claims 11
`
`and 14 have similar recitations. Notably, claim 1 recites the article “a” or “an”
`
`more than twenty times, and there is no reason to believe that one article instance
`
`in the disputed claim limitation should be treated differently than the other articles
`
`in the claim. I have also been informed that courts often presume that the term “a”
`
`or “an” means “one or more” and require a clear intent to overcome that
`
`
`
`
`- 11 -
`
`
`
`presumption and limit the word to meaning “one.” There is no such intent in the
`
`’399 patent, and Mr. Gafford does not appear to identify any teachings in the ’399
`
`patent that would support such an intent. He merely stated it is “illogical” but
`
`provides no support. (Gafford Decl., ¶ 54.) A POSITA would understand,
`
`therefore, that the claims encompass an interface device that identifies an inquired
`
`device as “one or more input/output devices.”
`
`18. Second, the term “input/output” means input and/or output. That is, an
`
`“input/output device” is a device that inputs, outputs, or both inputs and outputs.
`
`Although Mr. Gafford’s declaration suggests that the input/output device must both
`
`input and output (see Gafford Decl., ¶¶ 54–56; Gafford Depn., 87:3 to 89:7), he
`
`stated in deposition that “I haven’t expressed such an opinion” on this issue.
`
`(Gafford Depn., 91:6–13.) When asked whether the claim “can be met by a device
`
`that is an input-only device,” Mr. Gafford responded “I don’t see why not….”
`
`(Gafford Depn., 93:20 to 94:9.) I agree with Mr. Gafford that “input/output device”
`
`encompasses devices that are input-only (and, for that matter, output-only). A
`
`POSITA would understand that an input-only device is one example of a read-
`
`only, or write-protected device, because it provides input to the computer when it
`
`is read from.
`
`19. Third, the word “it” in the claim phrase “it is an input/output device”
`
`does not necessarily refer to the interface device. However, I do agree with Mr.
`
`
`
`
`- 12 -
`
`
`
`Gafford that the pronoun “it” has an antecedent in the claim phrase “a device
`
`attached to the multi-purpose interface of the host device.” (’399 patent, 12:66 to
`
`13:1; see Gafford Depn., 96:2–5 (“Well, the ‘it’ – I believe the ‘it’ in line 4 refers
`
`to – it’s the device whose type is being queried that’s introduced at the bottom of
`
`column 12.”).) Such an interpretation reflects the plain language of the claims
`
`because the signal that “it is an input/output device” is in response to the
`
`“inquiry… as to a type of a device.”
`
`20. However, Mr. Gafford assumes that the device being queried is the
`
`interface device. I note that Mr. Gafford does not rely on the language of the
`
`claims (Gafford Depn., 95:17–19 (“it doesn’t get there by the English connections
`
`of pronouns to antecedents”)), but instead concludes “by the similarity of words”
`
`that the device attached to the multi-purpose interface can only be the interface
`
`device from the preamble of the claim. (Gafford Depn., 95:14–23.) While the
`
`claims do not preclude this possibility, it is not the only possibility. Rather, the
`
`inquired device is merely “a device attached to the multi-purpose interface of the
`
`host device.” (’399 patent, 12:66 to 13:1.)
`
`21. Further, a SCSI target can comprise a plurality of LUNs. Schmidt
`
`discloses that there are “eight logical units (LUNs) that SCSI allows for each
`
`device.” (Schmidt, p. 79.) “[E]ach LUN can represent a separate peripheral
`
`
`
`
`- 13 -
`
`
`
`device.” (Schmidt, pp. 79–80.) Schmidt illustrates such a system in Figure 10.2 at
`
`page 91, reproduced below.
`
`
`
`As I discussed above, the INQUIRY command (as with all SCSI commands) is
`
`directed to a logical unit or the seldom-implemented target routine/software, and
`
`not to the target itself. (Schmidt, p. 135 (“SCSI commands are always directed to a
`
`LUN or to a target routine, not to the target itself.”); p. 138 (“The inquiry
`
`command tells us about a LUN, giving us a list of specific details in a concise
`
`format.”).) Thus, a given interface device could comprise a number of LUNs, each
`
`of which “can represent a separate peripheral device” (Schmidt, pp. 79–80), each
`
`of which would be the subject of a separate INQUIRY command from the host
`
`device. Applying this scenario to the ’399 claims, it would be improper to exclude
`
`the LUNs (representing separate peripheral devices) of a SCSI interface device
`
`from being the claimed inquired device. Note that SCSI is particularly relevant
`
`here because it must be covered by claim 1. (See, e.g., ’399 patent, Claim 4.)
`
`
`
`
`- 14 -
`
`
`
`22.
`
`In summary, a POSITA would understand the phrase “it is an
`
`input/output device” to mean “the inquired device is one or more input and/or
`
`output devices.”
`
`IV. Kawaguchi, Schmidt, and the sampling references disclose or suggest
`limitations of claims 1, 3, 5, 11, and 14
`A. Overview of Kawaguchi and Schmidt
`23. Kawaguchi discloses a “SCSI device converter [that] is able to input
`
`and output data to a SCSI interface of an [Engineering Workstation] using the
`
`same standards as SCSI interface for a hard disk.” (Ex. 1003, ¶ 70; Ex. 1005,
`
`Kawaguchi, p. 4.) The SCSI device converter contains four units, each appearing
`
`to the Engineering Workstation (EWS) as a “hard disk device[].” (Kawaguchi,
`
`p. 6.) The four units are a data writing unit, a data reading unit, a control data
`
`writing unit, and a control data reading unit. (Kawaguchi, p. 6; Figure 1.)
`
`Kawaguchi discloses two techniques for identifying these units: (1) they can each
`
`have their own ID, or (2) they can be separate unit numbers corresponding to the
`
`same ID. (Kawaguchi, p. 6 (“the various writing units and reading units… are
`
`assigned ID numbers (or the same ID number but different unit numbers)”).) As I
`
`noted above, Schmidt discloses that SCSI IDs or LUNs are means for identifying
`
`devices connected to a SCSI interface. (Schmidt, p. 131.) Given Kawaguchi’s
`
`disclosure that these reading and writing units connect using the SCSI interface
`
`and Schmidt’s disclosure with regard to SCSI IDs and LUNs, a POSITA would
`
`
`
`
`- 15 -
`
`
`
`recognize that the “ID” and “separate unit numbers” referenced by Kawaguchi are
`
`the “SCSI ID” and “LUNs,” respectively.
`
`24. Given this understanding, a POSITA would view Kawaguchi’s first
`
`technique—“assigned ID numbers”—as assigning each reading and writing unit its
`
`own respective SCSI ID. In this regard, Schmidt teaches that for peripherals having
`
`their own SCSI ID, the peripheral itself appears as a logical unit (“LUN”). (See
`
`Schmidt, p. 90 (“The [SCSI] controller itself has the SCSI ID and the peripheral
`
`device is seen as a LUN.”).) The illustration below shows how the units would
`
`appear to the EWS under this first technique.
`
`
`
`25. The above understanding of Kawaguchi’s first technique is consistent
`
`with a POSITA’s understanding of SCSI IDs. The left portion of Schmidt’s Figure
`
`10.2, reproduced below, illustrates the case where the controller is embedded with
`
`the peripheral, resulting in a single LUN 0.
`
`
`
`
`- 16 -
`
`
`
`(Schmidt, p. 91, Figure 10.2, annotated.)
`
`
`
`26. With regard to Kawaguchi’s second technique—“the same ID number
`
`but different unit numbers”—a POSITA would interpret each of Kawaguchi’s
`
`reading and writing units to be associated with the same SCSI ID but having
`
`different LUNs. This is illustrated in the figure below.
`
`
`
`
`
`
`- 17 -
`
`
`
`
`
`27. The above understanding of Kawaguchi’s second embodiment is also
`
`consistent with a POSITA’s understanding of SCSI IDs. The right portion of
`
`Schmidt’s Figure 10.2, reproduced below, illustrates
`
`Device 2 assigned “SCSI
`ID” and “LUN 1”
`
`Device 2 assigned “SCSI
`ID” and “LUN 0”
`
`
`
`(Schmidt, p. 91, Figure 10.2, (annotated).)
`
`
`28. Kawaguchi further discloses that data written to the data writing unit
`
`is outputted to a peripheral, and that data read from a peripheral is inputted to the
`
`data reading unit. (Kawaguchi, p. 6 (“[D]ata written to the data writing unit (11) is
`
`outputted to an output device [and] data read from an input device (5) such as a
`
`CD-ROM is inputted to the data read unit (12)”.)
`
`29. Kawaguchi discloses that “the apparatus in the present invention
`
`operates in a manner emulating the hard disk.” (Kawaguchi, p. 7.) Figure 2 of
`
`Kawaguchi is a flowchart reflecting this emulation. (See Kawaguchi, Figure 2.)
`
`The first step of the flowchart is to perform the Inquiry. This step “represents
`
`reporting of attribute information of a target and logical units (identification code
`
`
`
`
`- 18 -
`
`
`
`of a device type).” (Kawaguchi, p. 7.) As is clear from the flow in Kawaguchi’s
`
`Figure 2, this Inquiry step is performed before the read or write operations.
`
`(Kawaguchi, p. 11, Figure 2, annotated.)
`
`
`
`30. Kawaguchi states that “steps from ‘Start’ to ‘Mode Sense’ [in FIG. 2]
`
`represent an initialization process for a hard disk.” (Kawaguchi, p. 6.) Specifically,
`
`“‘Inquiry’ represents reporting of attribute information of a target and logical units
`
`(identification code of a device type).” (Kawaguchi, p. 6.) Further, the “‘Test Unit
`
`Ready’ represents testing whether or not the logical unit is available.” (Kawaguchi,
`
`p. 6.) Kawaguchi states that “[s]ince the above-described procedure uses a
`
`procedure as provided in the SCSI standards, the apparatus of the present invention
`
`
`
`
`- 19 -
`
`
`
`can be easily connected to the SCSI interface of the EWS (1) without almost any
`
`modification.” (Kawaguchi, p. 6; compare Ex. 2004, p. 5 (“Because the procedure
`
`above uses the SCSI standard, the present device can be connected to the SCSI
`
`interface of an EWS (1) easily, with essentially no modification.”).)
`
`31. Given Kawaguchi’s implementation of SCSI and explanation of the
`
`INQUIRY command and SCSI standards, a POSITA would understand that
`
`Kawaguchi’s Inquiry step comprises separate standard SCSI INQUIRY commands
`
`issued to each of Kawaguchi’s respective units regardless whether they have
`
`different SCSI IDs or are different LUNs associated with a given SCSI ID.
`
`(Kawaguchi, p. 7 (explaining that “‘Inquiry’ represents reporting of attribute
`
`information of a target and logical units”); Schmidt, p. 138 (“The inquiry
`
`command tells us about a LUN, giving us a list of specific details in a concise
`
`format.”).) In either case, the units appear as separate LUNs on the SCSI bus and
`
`will be inquired separately by the host device.
`
`32. As I previously described in Section II, a SCSI device responds to an
`
`INQUIRY command by providing useful attribute information (also known as
`
`INQUIRY data) about the inquired LUN, such as the device type. (Schmidt, p. 138
`
`(“This command can be used to learn, among other things, which SCSI options
`
`have been implemented, the SCSI version number, the device type and the name of
`
`the device”; pp. 139–40 (describing INQUIRY data returned in response to the
`
`
`
`
`- 20 -
`
`
`
`Inquiry command).) Because the purpose of the INQUIRY command is to retrieve
`
`information about a LUN, the INQUIRY command, like all SCSI commands, are
`
`directed to the LUN. (Schmidt, p. 135.) Thus, in the combined system of
`
`Kawaguchi and Schmidt, the host device would receive separate INQUIRY data
`
`associated with each unit. Each INQUIRY data response would identify the
`
`associated unit as a member of what Schmidt describes as the disk drive class. (See
`
`Schmidt, p. 133, Table 12.1.) This would be an obvious, straightforward way to
`
`achieve Kawaguchi’s result that “the EWS (1) can identify, in appearance, [the
`
`four units] as four hard disk devices.” (Kawaguchi, p. 6.)
`
`33. As I explained in my previous declaration, the concept of “emulation”
`
`was well known prior to the priority date of the ’399 patent. (See Ex. 1003, ¶¶ 38–
`
`47.) Given Kawaguchi’s disclosure that the SCSI device converter “operates in a
`
`manner emulating the hard disk” and further given Kawaguchi’s implementation of
`
`the SCSI interface, a POSITA would have recognized that Kawaguchi’s SCSI
`
`device converter emulates a hard disk consistent with the protocols and commands
`
`of the SCSI protocol.
`
`34. As I noted above, SCSI devices return, among other things, a “device
`
`type” in response to receiving a SCSI Inquiry command. (Schmidt, p. 138.)
`
`Examples of device types include disk drives. (Schmidt, p. 132 (“SCSI supports a
`
`variety of device types, from disk drives to printers to scanners”), p. 82 (“[T]here
`
`
`
`
`- 21 -
`
`
`
`are ten SCSI device classes, of which hard disks and tape drives are two
`
`examples”).) Accordingly, in order for the units in the SCSI device converter to
`
`appear as hard disks, the identified device type (returned in response to an Inquiry
`
`command) would naturally be the one that includes hard disks: the direct-access
`
`device class, sometimes also known as the disk drive class. (Schmidt, p. 158
`
`(starting an entire chapter entitled “Direct access devices” and explaining that
`
`“[d]isk drives, magneto-optical drives, diskettes and RAM disks are the most
`
`popular examples of this class”), pp. 165–172 (subsection entitled “Hard disk
`
`commands”).)
`
`35. Kawaguchi is titled “SCSI Device Converter” and discloses a
`
`converter that “is able to easily connect a device such as a PC peripheral device or
`
`a sequencer to a SCSI interface on an engineering workstation.” (Kawaguchi, p. 2.)
`
`Kawaguchi states that “[t]he SCSI device converter (3) includes a SCSI interface
`
`(7) for connecting to the EWS (1).” (Kawaguchi, p. 5.) The various units 11–17 are
`
`implemented “by using a microcomputer, ROM and RAM.” (Kawaguchi, p. 5.)
`
`The device includes “an A/D converter (19) [that] may be installed to receive
`
`analog data from an analog device (18) such as a sensor.” (Kawaguchi, p. 5.)
`
`Kawaguchi is in the same field as the ’399 patent because it is directed to the
`
`acquisition and transfer of data between a host computer and attached devices.
`
`
`
`
`- 22 -
`
`
`
`Figure 1, reproduced below, illustrates the apparatus. Moreover, in the “Field of
`
`the Invention” section, the ’399 patent recites:
`
`The present 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.
`
`(’399 patent, 1:10–14.)
`
`
`
`(Kawaguchi, p. 10, Figure 1.)
`
`B. A POSITA would have been motivated to combine Kawaguchi
`and Schmidt
`
`36.
`
`In my original declaration, I established that a POSITA would have
`
`been motivated to combine Kawaguchi and Schmidt in part because Kawaguchi
`
`
`
`
`- 23 -
`
`
`
`discloses the use of standard SCSI signals, which Schmidt discusses in detail. (See,
`
`e.g., Ex. 1003, ¶ 66.) The Patent Owner’s Response argues that a POSITA would
`
`not have combined Kawaguchi and Schmidt because the combination would render
`
`Kawaguchi inoperable. (See POR, p. 28 (“it 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)”).) However,
`
`the combination would not render Kawaguchi inoperable. In fact, the combination
`
`provides the same result as Kawaguchi discloses—identification of the units as
`
`hard disks. (Kawaguchi, p. 6 (“so that the EWS (1) can identify … as four hard
`
`disk devices”).) Mr. Gafford also argues that a POSITA would not combine
`
`Kawaguchi’s various units into a single unit because separating the reading and
`
`writing units in Kawaguchi is fundamental to that reference. (Gafford Decl., ¶ 46.)
`
`Although I have not formed an opinion whether a POSITA would have combined
`
`the four separate units into fewer or one, separating the read/write units is not
`
`fundamental to Kawaguchi, but merely provides “parallel processing for higher
`
`processing efficiency.” (Kawaguchi, p. 6.)
`
`37. A POSITA would have combined Kawaguchi with Schmidt because,
`
`for one, Kawaguchi’s SCSI device converter connects to the workstation via a
`
`
`
`
`- 24 -
`
`
`
`SCSI bus. (See Kawaguchi, Figure 1.) A POSITA would have looked to a
`
`reference, like the Schmidt book, to provide details of the SCSI interface and
`
`protocol including the details of the INQUIRY command and response.
`
`Additionally, it was well known at the earliest possible priority date of the ’399
`
`patent that SCSI bus initialization between a host computer and a peripheral device
`
`involved the peripheral device identifying its device class and type to the host
`
`computer. Schmidt provides the details of this identification. (See Schmidt, Table
`
`12.12, p. 139.) Thus, the combination is an application of a known technique
`
`(Schmidt’s SCSI signals) to a known device (Kawaguchi’s SCSI device converter)
`
`to yield predictable results (the device converter identifies and acts as a SCSI hard
`
`disk). (See Ex. 1003, ¶ 66.)
`
`38. The resulting combination of Kawaguchi and Schmidt is operable and
`
`results in the outcome that Kawaguchi discloses: recognition of each unit as a disk
`
`drive. Kawaguchi explains that “the EWS (1) writes or reads data to each writing
`
`unit or from each readin
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
