`
`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
`___________________
`
`
`
`PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

`

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`
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`
`
`I.
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`II.
`
`III.
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`Case IPR2016-01839
`Patent No. 6,470,399
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`TABLE OF CONTENTS
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`- i -
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`B.
`
`B.
`
`B.
`C.
`
`Claim Construction. ........................................................................................... 2
`The word “an” in the phrase “it is an input/output device
`A.
`customary in a host device” means “one or more.” ................................ 3
`The word “it” in the phrase “it is an input/output device
`customary in a host device” refers to the device inquired by the
`host device. .............................................................................................. 5
`The “/” in the term “input/output device” means “and/or.” .................... 7
`C.
`The combination of Kawaguchi and Schmidt discloses the disputed
`“wherein” limitations of the independent claims. ............................................. 7
`A. Kawaguchi’s four units are each identified as disk drives in
`response to separate SCSI INQUIRY commands. .................................. 8
`Kawaguchi’s units, in combination with the SCSI details of
`Schmidt, disclose the inquiry response recited in the ’399 claims. ......14
`PO’s arguments have no merit. ........................................................................ 17
`A.
`PO’s arguments regarding an allegedly missing limitation are
`based on technical inaccuracies having no support in the record. ........17
`1. PO’s “read-only” argument mischaracterizes the prior art and is
`contrary to the explicit language of the claims............................18
`2. PO’s “single device” argument is based on an inaccurate reading
`of the claims. ................................................................................20
`A POSITA would have combined Kawaguchi and Schmidt. ...............23
`PO does not separately argue patentability of dependent claims 3
`and 5. .....................................................................................................25
`IV. PO’s arguments do not rely on translation differences. .................................. 25
`V.
`PO’s belief of unconstitutionality is not a request for relief. .......................... 26
`VI. Conclusion. ...................................................................................................... 26
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`Case IPR2016-01839
`Patent No. 6,470,399
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`TABLE OF AUTHORITIES
`
`
`Cases:
`
`Convolve, Inc. v. Compaq Computer Corp.,
`812 F.3d 1313 (Fed. Cir. 2016).................................................................................. 3
`
`LG Electronics, Inc. v. Bizcom Electronics, Inc.,
`453 F.3d 1364 (Fed. Cir. 2006),
`rev’d. on other grounds, 553 U.S. 617 (2008) ........................................................... 3
`
`In re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015).................................................................................. 5
`
`Vivid Techs. v. Amer. Science,
`200 F.3d 795 (Fed. Cir. 2000) .................................................................................... 2
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`- ii -
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`Ex. No.
`1001
`1002
`1003
`
`1004
`1005
`
`1006
`
`1007
`
`1008
`1009
`1010
`1011
`1012
`
`1013
`1014
`
`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`Case IPR2016-01839
`Patent No. 6,470,399
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`EXHIBIT LIST
`
`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).
`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.
`
`- iii -
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`Ex. No.
`1023
`
`1024
`1025
`
`1026-1030
`1031
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`1032
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`1033
`1034
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`Case IPR2016-01839
`Patent No. 6,470,399
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`Description
`“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.
`Intentionally left blank
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30,
`1994 (“PNP SCSI”)
`Supplemental Declaration of Dr. Erez Zadok in Support of Reply for
`Inter Partes Review of U.S. Patent No. 6,470,399
`Transcript of Deposition of Mr. Gafford
`U.S. Patent No. 5,089,958 to Horton et al.
`
`
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`- iv -
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`Case IPR2016-01839
`Patent No. 6,470,399
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`Choosing not to cross-examine Petitioner’s expert, Patent Owner (“PO”) filed
`
`a Response relying on a single technical theory for which PO has no evidence: that
`
`Kawaguchi would not and could not respond to a SCSI INQUIRY command by
`
`identifying itself as a hard disk. PO stretches this theory to manufacture both a
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`missing limitation argument as well as an argument against motivation to combine.
`
`Yet, PO’s underlying theory has no merit because Kawaguchi expressly discloses
`
`that its units appear as hard disks and interact with the host using standard SCSI
`
`procedures which explicitly define how a device responds to an INQUIRY
`
`command. And importantly, PO’s theory and arguments ignore that the instituted
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`ground also relies on Schmidt which indisputedly teaches how a device responds to
`
`a standard INQUIRY command.
`
`PO attempts to camouflage the fundamental flaws in its argument through a
`
`convoluted attack on the interpretation of the phrase “it is an input/output device”
`
`designed solely to distinguish Kawaguchi’s interface device. The Board should
`
`reject PO’s anti-Kawaguchi construction because it contradicts the plain language
`
`of the claims. However, regardless of the construction applied by the Board, the
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`combination of Kawaguchi and Schmidt renders claims 1, 3, 5, 11, and 14 of the
`
`’399 patent obvious.
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`I.
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`Claim Construction.
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`Case IPR2016-01839
`Patent No. 6,470,399
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`Claim construction is not a dispositive issue in this proceeding. PO did not
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`propose any explicit constructions, but merely noted various constructions from co-
`
`pending District Court litigation. (POR, pp. 8–9.) PO did not affirmatively adopt
`
`any of these constructions, nor assert that the constructions had any impact on the
`
`outcome of this proceeding. As none of the District Court’s constructions are
`
`“necessary to resolve the controversy” in this proceeding, the terms construed by
`
`the District Court need no explicit construction by the Board. Vivid Techs. v. Amer.
`
`Science, 200 F.3d 795, 803 (Fed. Cir. 2000).
`
`PO does, however, address the construction of the phrase “it is an
`
`input/output device customary in a host device” in an attempt to distinguish
`
`Kawaguchi from each of the independent claims. PO argues, without any further
`
`explanation, 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 district court’s claim construction in
`
`the underlying district court that gave rise to this IPR, assigning plain meaning to
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`‘signals to the host device that it is an input/output device customary in a host
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`device.’” (Petition, p. 22; Gafford Decl., ¶55 (parroting the Petition verbatim).)
`
`PO’s backdoor construction has three components. First, PO appears to contend that
`
`the word “an” means “one” and not “one or more.” Second, PO argues that the
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`word “it” refers to the interface device. (See POR, p. 19 (“Kawaguchi does not
`
`disclose an interface device… that can be represented to the EWS as being an
`
`input/output device customary in a host device”); Ex. 1033, Gafford Depn., 95:9–
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`96:16.) Third, PO argues that “input/output device” is limited to an input and output
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`device. The result is that PO construes the phrase “it is an input/output device
`
`customary in a host device” to mean “the interface device is exactly one input and
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`output device customary in a host device.” But as Petitioner details below, it is PO’s
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`backdoor construction that is incorrect.
`
`A. The word “an” in the phrase “it is an input/output device customary
`in a host device” means “one or more.”
`The Board should not limit the word “an” to mean “exactly one” as PO
`
`implies. The Federal Circuit has “repeatedly emphasized that an indefinite article
`
`‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended
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`claims containing the transitional phrase ‘comprising.’” LG Electronics, Inc. v.
`
`Bizcom Electronics, Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006), rev’d. on other
`
`grounds, 553 U.S. 617 (2008). Exceptions to this rule are “extremely limited: a
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`patentee must ‘evince [] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’” Convolve, Inc.
`
`v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016)).
`
`Here, PO fails to cite any evidence that it articulated a clear intent to limit
`
`“an” to “one” in the claim term “an input/output device.” (See POR, pp. 22–23.)
`
`The ’399 patent itself confirms that the claim is not so limited. Notably, claim 1
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`recites the indefinite article “a” or “an” 24 times, yet PO only wishes to limit one of
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`these occurrences. Further, the specification recites the term “an input/output
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`device” seven times, and never once implies, let alone evinces a clear intent, that
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`the term “an” means “one and only one.” (See ’399 patent, Abstract; 3:46; 3:67;
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`4:19–20; 4:25; 5:5–6; 12:25–26.)
`
`Construing “an input/output device” as “one or more input/output devices”
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`does not contradict the Federal Circuit or the District Court. PO argues that
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`construing “an” as “one or more” would be inconsistent with the District Court’s
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`claim construction, which assigned plain meaning to the phrase “signals to the host
`
`device that it is an input/output device customary in a host device.” (POR, p. 22.)
`
`PO mischaracterizes the District Court’s opinion. First, the recited phrase
`
`considered in that opinion was much longer: “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.” (Ex. 2003, Construction Order,
`
`p. 20.) Second, the District Court never opined on the term “an.” (See Construction
`
`Order, pp. 20–25.) Instead, the District Court rejected the notion that the claimed
`
`signal must “misidentify” the interface device, finding “[n]o further construction is
`
`necessary.” (Construction Order, p. 24; see also pp. 22–25.) Nor did the District
`
`Court or the Federal Circuit interpret the word “an” as “one and only one” in its
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`Patent No. 6,470,399
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`express construction of “an input/output device customary in a host device.” (See
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`Construction Order, pp. 26–29 (citing In re Papst Licensing Digital Camera Patent
`
`Litigation, 778 F.3d 1255, 1269–70 (Fed. Cir. 2015) (provided as Exhibit 1016)).)
`
` Nevertheless, Petitioner demonstrates that even under PO’s interpretation,
`
`Kawaguchi and Schmidt render the challenged claims obvious.
`
`B.
`
`The word “it” in the phrase “it is an input/output device customary
`in a host device” refers to the device inquired by the host device.
`Claim 1 recites a “first command interpreter” that “receiv[es] an inquiry from
`
`the host device as to a type of a device attached to the multi-purpose interface of the
`
`host device,” and, in response, “sends a signal… to the host device which signals to
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`the host device that it is an input/output device customary in a host device.” Claims
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`11 and 14 contain similar limitations. Based on PO’s arguments distinguishing the
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`claim from Kawaguchi, there appears to be a dispute as to the antecedent of the
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`pronoun “it.”
`
`Both experts agree that the plain language of the claims require that “it” refers
`
`to the device inquired by the host. That is, the word “it” refers to the “device” in the
`
`phrase “an inquiry… as to a type of a device attached to the multi-purpose
`
`interface.” (Gafford Depn., 95:9–12; 96:2–5; Ex. 1032, Zadok II, ¶19.) Thus, a
`
`POSITA would understand the phrase “it is an input/output device” as “the inquired
`
`device is an input/output device.” (Zadok II, ¶19.)
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`PO’s expert, however, narrows the plain language inferring that the inquired
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`device must be the interface device. (See Gafford Depn., 94:18–96:16.) Mr. Gafford
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`admits that his construction is not based on “the English connection of pronouns to
`
`antecedents.” (Gafford Depn., 95:14–19.) Instead, he asserts that “the device
`
`attached to multipurpose interface is describing the device that is first introduced in
`
`the preamble”—the interface device. (Gafford Depn., 95:20–23; see also 96:2–10.)
`
`Mr. Gafford’s interpretation is not supported by the plain language of the
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`claims and is contrary to how the inquiry works in SCSI, which the claims
`
`encompass. (Zadok II, ¶20; see also ’399 patent, claim 4.) The claim does not
`
`require that the inquired device be the interface device. Rather, the claim merely
`
`specifies that the inquired device is “a device attached to the multi-purpose interface
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`of the host device” which could encompass the interface device or any logical device
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`within the interface device whose type can be inquired by the host device.
`
`The SCSI standard further exposes the flaws in Mr. Gafford’s interpretation.
`
`All SCSI commands, including the INQUIRY command, are aimed at a logical unit
`
`(“LUN”) associated with a target, and not the target itself. (Zadok II, ¶¶10, 21; Ex.
`
`1007, Schmidt, p. 135 (“SCSI commands are always directed to a LUN or to a target
`
`routine, not to the target itself.”); Schmidt, p. 138 (“The inquiry command tells us
`
`about a LUN, giving us a list of specific details in a concise format.”).) Thus, if the
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`interface device encompassed multiple SCSI logical units, the host device would
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`inquire as to a type of each of the units, even though the units may all be
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`components of the same interface device. (Zadok II, ¶¶10, 21.)
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`For these reasons, the Board should construe the pronoun “it” as “the inquired
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`device.”
`
`C. The “/” in the term “input/output device” means “and/or.”
`PO repeatedly implies that a customary “input/output device” is a device that
`
`supports input and output functionality. However, PO’s expert, Mr. Gafford, when
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`pressed at deposition, contradicted this implied construction, admitting that
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`customary “input/output device[s]” at the time of the invention included input-only
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`devices, output-only devices, and input and output devices. (See, e.g., Gafford
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`Depn., 89:3–94:9.) This interpretation of input/output device as “input and/or output
`
`device” is consistent with the district court’s interpretation of the symbol “/”in the
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`term data transmit/receive device as “and/or.” (See Construction Order, p. 36; see
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`also Ex. 1019, p. 2125.)
`
`Accordingly, the phrase “it is an input/output device customary in a host
`
`device” should be interpreted as “the inquired device is an input and/or output
`
`device customary in a host device.”
`
`II. The combination of Kawaguchi and Schmidt discloses the disputed
`“wherein” limitations of the independent claims.
`The combination of Kawaguchi and Schmidt discloses the only limitations
`
`that PO disputes, of which the claim 1 limitation is representative: “wherein the first
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`command interpreter is configured in such a way that the command interpreter,
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`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… to the host device
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`which signals to the host device that it is an input/output device customary in a host
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`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.” (’399 patent,
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`12:64–13:8; see also 14:4–15 and 14:47–57.) Before addressing the various
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`technical inaccuracies in PO’s Response, Petitioner provides further detail on SCSI
`
`in the context of Kawaguchi and Schmidt, and demonstrates that the challenged
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`claims are obvious even under PO’s narrow interpretation of the claims.
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`A. Kawaguchi’s four units are each identified as disk drives in
`response to separate SCSI INQUIRY commands.
`
`In response to PO’s technical arguments, Petitioner first provides further
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`details on Kawaguchi’s system in the context of the SCSI details provided in
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`Schmidt. In contrast to the POR, which makes a number of incorrect conclusory
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`assertions, Petitioner supports its discussion with robust record evidence.
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`As detailed in the Petition, Kawaguchi discloses a “SCSI device converter
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`[that] is able to input and output data to a SCSI interface of an [Engineering
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`Workstation] using the same standards as SCSI interface for a hard disk.” (Petition,
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`pp. 18–19; Zadok Decl., ¶70; Ex. 1005, Kawaguchi, p. 4.) The SCSI device
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`converter contains four units, each appearing to the Engineering Workstation (EWS)
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`as a “hard disk device[].” (Kawaguchi, p. 6.) The four units are a data writing unit, a
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`data reading unit, a control data writing unit, and a control data reading unit.
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`(Kawaguchi, p. 6; Figure 1.)
`
`Kawaguchi discloses two techniques for identifying these units. The figure
`
`below illustrates the first technique, where each unit has its own SCSI ID.
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`
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`(Zadok II, ¶24.) 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
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`left portion of Schmidt’s Figure 10.2, reproduced below, illustrates the case where
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`the controller is embedded with the peripheral, resulting in a single LUN 0.
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`(Schmidt, p. 91, Figure 10.2.)
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`
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`Alternatively, Kawaguchi discloses that its units can be separate LUNs
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`corresponding to the same SCSI ID, as illustrated in the figure below. (Zadok II,
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`¶26; Kawaguchi, p. 6 (“the various writing units and reading units… are assigned ID
`
`numbers (or the same ID number but different unit numbers)”); Gafford Depn.,
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`69:12–25.)
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`(Zadok II, ¶26.) The right side of Schmidt’s Figure 10.2, reproduced below, also
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`reflects this embodiment.
`
`(Schmidt, p. 91, Figure 10.2.)
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`
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`Kawaguchi further 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 Petition, pp. 13–14;
`
`Kawaguchi, Figure 2; Gafford Depn., 63:4–10.) 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 of a device type)” (Kawaguchi, p. 7) and
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`is performed before any read or write operations. (Zadok II, ¶29.)
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`The Inquiry step of Figure 2 comprises the EWS sending a separate
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`INQUIRY command to each of the four units to discover what peripherals are
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`connected to the bus, regardless of whether the units are each LUN 0 of separate
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`SCSI IDs or are different LUNs associated with a single SCSI ID. (See Schmidt,
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`p. 138 (“The inquiry command tells us about a LUN, giving us a list of specific
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`details in a concise format.”); Zadok II, ¶31.) Like all SCSI commands, the
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`INQUIRY command is directed to a specific LUN of a target. (Zadok II, ¶¶10, 32;
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`Schmidt, p. 135.)
`
`The inquired unit will respond to the INQUIRY command by providing
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`INQUIRY data. (See Schmidt, p. 138 (the “most common” use of the INQUIRY
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`command “represents a request for standard INQUIRY data.”); Zadok II, ¶¶11, 32.)
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`The INQUIRY data includes the peripheral device type, also known as the device
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`class, for the unit. (Schmidt, p. 139.) This 5-bit field is highlighted below, annotated
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`from Schmidt Table 12.12.
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`Patent No. 6,470,399
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`In the combined system, each unit will respond to an INQUIRY command by
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`identifying itself as a member of the disk drive class (also known as a direct-access
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`device. (See Ex. 1012, SCSI Standard, p. 98, Table 47; Zadok II, ¶32.) Specifically,
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`Kawaguchi explicitly discloses that “the EWS (1) can identify, in appearance, [the
`
`four units] as four hard disk devices.” (Kawaguchi, p. 6 (emphasis added).)
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`Kawaguchi further clarifies that “the EWS (1) writes or reads data to each writing
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`unit or from each reading unit using the same method as that for four hard disks.”
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`(Kawaguchi, p. 6 (emphasis added).) Note that Kawaguchi does not state that the
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`data reading unit appears as a read-only hard disk, or even that the data reading unit
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`is read-only.1 (Zadok II, ¶49.) Rather, Kawaguchi discloses that data written to the
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`data writing unit is output to a peripheral, and that data read from a peripheral is
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`input to the data reading unit. (Kawaguchi, p. 6.) Kawaguchi does not define how
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`the data reading unit handles a WRITE command, as this detail is irrelevant to its
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`operation and easily handled using standard SCSI mechanisms such as the DATA
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`PROTECT sense key. (See Zadok II, ¶¶15, 50–51; SCSI Standard, p. 155 (“Attempt
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`1 The asserted claims do not require that the input/output device have both
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`read and write capabilities. At deposition, Patent Owner’s expert, Mr. Gafford,
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`contradicted his declaration testimony and confirmed that the claimed “input/output
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`device” could be an input or output device. (Gafford Depn., 93:20 to 94:9.)
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`to write on write protected medium” results in “DATA PROTECT” sense key);
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`Schmidt, p. 144, Table 12.18.)
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`In order for the units in the SCSI device converter to appear as hard disks, it
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`would have been obvious to a POSITA that the identified device type would be the
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`one that encompasses2 hard disks: the direct-access device class. (Zadok II, ¶34.)
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`This class is signaled in the device class portion of the INQUIRY data with the 5-bit
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`value 00h. (Zadok II, ¶54; Schmidt, p. 133, Table 12.1.) By responding in this
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`manner, the EWS recognizes the unit as a member of the disk drive class and is able
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`to use “[t]he SCSI driver… [that] has been developed as a driver for connecting a
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`hard disk.” (Kawaguchi, p. 7.)
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`B. Kawaguchi’s units, in combination with the SCSI details of
`Schmidt, disclose the inquiry response recited in the ’399 claims.
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`The system of Kawaguchi and Schmidt discussed in detail in the Petition and
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`the previous section discloses the disputed limitation. In responding to PO’s
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`allegations, Petitioner focuses on Kawaguchi’s Data Reading Unit because that is
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`the unit the EWS would use to read data from the sensor relied on for other claim
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`elements. (See Petition, p. 43.)
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`2 The disk drive class is not limited to hard disks, but “includes all devices
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`that allow direct access to any logical block” including “[d]isk drives, magneto-
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`optical drives, diskettes and RAM disks.” (Schmidt, p. 158.)
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`There is no dispute that Kawaguchi’s SCSI device converter receives a SCSI
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`INQUIRY command from the EWS (“receiving an inquiry from the host device”).
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`(Gafford Depn., 64:12–21.) This INQUIRY command constitutes an inquiry as to an
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`“identification code of a device type” (Kawaguchi, p. 7) and therefore is an inquiry
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`“as to a type of a device.” (Zadok II, ¶41.) There is also no dispute that the
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`INQUIRY would be directed toward a specific unit within the SCSI device
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`converter—the Data Reading Unit (12), for example. (See POR, p. 21.) This unit is
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`attached to the SCSI interface (2) of the EWS via the SCSI interface (7) and the
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`SCSI bus. (Kawaguchi, pp. 2, 7, Figure 2; Zadok II, ¶43.) And there is no dispute
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`that the SCSI interface (2) constitutes a “multi-purpose interface of the host device.”
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`(Gafford Depn., 17:6–9.) Thus, the inquiry is “as to a type of a device attached to
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`the multi-purpose interface of the host device.” (Zadok II, ¶43.)
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`PO also does not dispute that Kawaguchi discloses a “first command
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`interpreter” (claim 1) or an “interface device” (claim 11) that “sends a signal to the
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`host device” in response to receiving the inquiry. The dispute is whether the
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`response disclosed in the combination “signals to the host device that [the inquired
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`device] is an input/output device customary in a host device,” and whether such
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`signaling would cause “the host device [to] communicate[] with the interface device
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`by means of the driver for the input/output device customary in a host device.”
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`The record shows that the combination of Kawaguchi and Schmidt discloses
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`the recited signaling. As previously noted, “the EWS (1) can identify, in appearance,
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`[the four units] as four hard disk devices.” (Kawaguchi, p. 6.) Kawaguchi further
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`clarifies that “the EWS (1) writes or reads data to each writing unit or from each
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`reading unit using the same method as that for four hard disks.” (Kawaguchi, p. 6.)
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`Thus, the SCSI device converter responds to the INQUIRY directed at the Data
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`Reading Unit with INQUIRY data (“sends a signal3… to the host device”)
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`identifying that unit’s device type as a disk drive (“which signals to the host device
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`that [the inquired device] is an input/output device customary in a host device”).
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`(Zadok II, ¶44.)
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`Finally, Kawaguchi states that its system enables use of a “SCSI driver of the
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`EWS [that] has been developed as a driver for connecting to a hard disk.”
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`(Kawaguchi, p. 7.) Thus, after identifying its Data Reading Unit as a disk drive, the
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`EWS uses the SCSI driver to communicate with the Data Reading Unit of the SCSI
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`device converter (“the host device communicates with the interface device by means
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`3 There is also no dispute that the signal sent by Kawaguchi is sent
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`“regardless of the type of the data transmit/receive device attached to the second
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`connecting device of the host device.”
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`of the driver for the input/output device customary in a host device”). (Zadok II,
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`¶¶45–46.)
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`III. PO’s arguments have no merit.
`PO’s missing element and motivation to combine arguments stem from the
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`same technical misrepresentations, which are founded on no more than the
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`unsupported, conclusory statements of its expert Mr. Gafford. PO misinterprets the
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`claims and ignores the detailed teachings of Kawaguchi and Schmidt that disprove
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`its arguments.
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`A.
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`PO’s arguments regarding an allegedly missing limitation are
`based on technical inaccuracies having no support in the record.
`PO makes two primary arguments related to the disputed “wherein”
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`limitation. First, PO argues that Kawaguchi’s individual units cannot purport to be
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`customary I/O devices because, according to PO, its four units are either read-only
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`or write-only. (POR, p. 20.) PO also argues that the units, operating together in the
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`SCSI device converter, also cannot purport to be a single customary I/O device
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`because it was allegedly not customary to use different SCSI IDs to accomplish
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`reading and writing. (POR, p. 21.) PO’s arguments have no merit because they are
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`contrary to the language of the ’399 claims, the ’399 specification, and the record
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`evidence.
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`PO’s “read-only” argument.
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`1.
`PO’s arguments lack merit because they depend on an unreasonable
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`interpretation of “input/output” as established in Section I.C. Nevertheless, even
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`under PO’s construction its arguments are inconsistent with the express teachings of
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`the prior art and lack any supporting evidentiary foundation. PO argues that
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`Kawaguchi’s four units “can only read or write but not both,” and therefore “it
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`would not make sense for any [unit] to report that it is a customary hard drive to the
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`EWS.” (POR, p. 20.) As an initial matter, PO never provides any evidence
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`supporting its limited view of what constitutes a “customary” hard drive at the time
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`of the invention. Instead, PO appeals to its own notion of hard drives as having both
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`read and write capabilities. But as Petitioner details below, this notion is incorrect.
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`PO attempts to create the impression that Kawaguchi’s individual units
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`identify themselves as specialized read-only or write-only hard drives. (See POR,
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`p. 20.) However, PO mischaracterizes Kawaguchi. Kawaguchi’s EWS expressly
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`recognizes each unit as a hard drive. (See Kawaguchi, p. 6.) Kawaguchi places no
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`further limitation on the identification of these units. And PO offers no explanation
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`as to how the EWS would recognize the units as hard drives without them being
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`identified as such in response to the mandatory INQUIRY command. In deposition,
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`Mr. Gafford admitted that the units could be identified as such (Gafford Depn.,
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`70:1–20; 74:7–15), and admitted that the respective read and write functionalities
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`would perform successfully (Gafford Depn., 82:19–83:4). Mr. Gafford’s alternative
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`explanation for how Kawaguchi would operate (i.e., with a modified driver and an
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`INQUIRY response identifying an “unknown device”) (Gafford Depn., 70:22–
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`71:6.), contradicts Kawaguchi’s express teaching of using a “procedure as provided
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`in the SCSI standards” as well as using a driver that “has been developed as a driver
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`for connecting a hard disk.” (Kawaguchi, p. 7.)
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`PO simply argues, without evidence or expert support, that it would not make
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`sense for the units to respond in this fashion. But the prior art shows that it would
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`have made perfect sense: Kawaguchi discloses that the units appear as hard disks,
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`and Schmidt teaches how to identify as a hard disk in response to an INQUIRY—a
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`response that is mandatory for compliance with the SCSI standard used by
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`Kawaguchi. (Zadok II, ¶47.)