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 MOTION
`FOR OBSERVATION RELATED TO DEPOSITION TESTIMONY OF DR.
`EREZ ZADOK
`___________________________________
`
`
`
`
`
`
`1
`
`
`_______________
`
`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 MOTION
`FOR OBSERVATION RELATED TO DEPOSITION TESTIMONY OF DR.
`EREZ ZADOK
`___________________________________
`
`
`
`
`
`
`1
`
`
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`Papst Licensing GMBH & Co., KG (“Patent Owner”) submits this Motion for
`
`Observation Related to the Deposition Testimony of Dr. Erez Zadok, identifying
`
`specific portions of Dr. Zadok’s November 28, 2017 deposition transcript (Exhibit
`
`2005) for the Patent Trial and Appeal Board’s consideration. Dr. Zadok is a reply
`
`declarant of Petitioner Apple, Inc. (“Petitioner”). Patent Owner submits the
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`following observations:
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`
`
`Observation No. 1
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`In Exhibit 2005, on page 11, lines 6-18, the witness testified, in response to
`
`a question about the District Court’s claim construction of a storage input-output
`
`device customary in a host device referring to a singular device, “Yes. I see that,
`
`at least in the construction.” This testimony is relevant to the proper claim
`
`construction for “input/output device customary in a host device” discussed on
`
`pages 19-20 of Patent Owner’s Response (Paper 17) and pages 3-5 of Petitioner’s
`
`Reply (Paper 23). This testimony is relevant because it suggests that a singular
`
`interface device, rather than multiple devices, are responding to an inquiry from the
`
`host device based on the claim language.
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`
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`Observation No. 2
`
`In Exhibit 2005, on page 25, lines 14-21, the witness testified, “I don’t think
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`
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`2
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`
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`it is limited to only that” when asked “despite the language saying that
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`‘…responding to the inquiry from the host device by the interface device in such a
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`way that it is an input-output device customary in a host device,’ you do not believe
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`the ‘it’ refers to the interface device.” This testimony is relevant to the arguments
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`made on pages 19-20 of Patent Owner’s Response (Paper 17) and pages 5-7 of
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`Petitioner’s Reply (Paper 23). The testimony is relevant because it illustrates
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`Patent’s Owner’s contention that the interface device is the device responding to
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`the inquiry is consistent with the claim language, and Petitioner’s contention that
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`some other “inquired device,” and not necessarily the interface device, is the device
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`responding to the inquiry is contrary to the plain language of the claims.
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`
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`Observation No. 3
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`In Exhibit 2005, on page 29, lines 13-20, the witness testified “In the
`
`passages that I read in the original declaration, I don’t see this particular phrase”
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`when asked “did you see the use of the phrase ‘inquire[d]’ device in your original
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`declaration.” This testimony is relevant to the discussion of “inquired devices” on
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`pages 5-7 and 20-23 of Petitioner’s Reply (Paper 23). The testimony is relevant
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`because Petitioner asserts for the first time in the Reply Brief that the inquired
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`device is the data reading unit 12, and it is the data reading unit 12 that is identified
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`as a hard disk. This is inconsistent with Petitioner’s contention in the Petition
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`
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`3
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`
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`(Paper 2) on page 34, indicating that the SCSI device converter 3 identifies the
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`whole SCSI device converter 3, including all components therein (i.e., the four
`
`components identified as Data Writing Unit 11, Data Reading Unit 12, Control Data
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`Writing Unit 13 and Interrupt Data Reading Unit 14), as a single hard disk.
`
`
`
`Observation No. 4
`
`In Exhibit 2005, on page 55, lines 11-22 through page 56, lines 1-6, the
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`witness testified “the SCSI device converter is one thing, but it comprises multiple
`
`things inside…this paragraph 91 does not directly mention those four units.” This
`
`testimony is relevant to the discussion of “inquired devices” on pages 5-7 and 20-
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`23 of Petitioner’s Reply (Paper 23) and the inquiry of the SCSI device converter 3
`
`as a whole on page 34 in the Petition (Paper 2). This testimony is relevant because
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`Petitioner asserts for the first time in the Reply Brief that the inquired device is the
`
`data reading unit 12 or one of the other three units in the SCSI device converter 3,
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`and that the data reading unit 12 or one of the other three units in the SCSI device
`
`converter 3 is identified as a hard disk. The testimony is relevant because it
`
`illustrates the inconsistency between what Petitioner is alleging is the device being
`
`misidentified as a hard disk (the SCSI device converter 3 as a whole) in the Petition
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`versus what it is alleging is the device that is being misidentified as a hard disk
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`(Data Reading Unit 12, a component of the SCSI device converter 3) in the Reply.
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`
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`4
`
`
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`
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`Observation No. 5
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`In Exhibit 2005, on page 75, lines 1-10, the witness testified “what I meant
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`is that you have to take the SCSI device converter as a whole with all of its internal
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`components and that information is going to flow within these internal components
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`and flow in and out through the SCSI device converter” when asked, “within the
`
`paragraphs we went over in the original declaration, you repeatedly said the SCSI
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`device converter 3 is identified as a hard disk, not any individual unit, correct?”
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`This testimony is relevant to the discussion of “inquired devices” on pages 5-7 and
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`20-23 of Petitioner’s Reply (Paper 23) and the inquiry of the SCSI device converter
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`3 as a whole on page 34 in the Petition (Paper 2). This testimony is relevant because
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`Petitioner asserts for the first time in the Reply Brief that the inquired device is the
`
`data reading unit 12 or one of the other three units in the SCSI device converter 3,
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`and that the data reading unit 12 or one of the other three units in the SCSI device
`
`converter 3 is identified as a hard disk. The testimony is relevant because it
`
`illustrates the inconsistency between what Petitioner is alleging is the device being
`
`misidentified as a hard disk (the SCSI device converter 3 as a whole) in the Petition
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`versus what it is alleging is the device that is being misidentified as a hard disk
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`(Data Reading Unit 12) in the Reply.
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`
`
`
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`5
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`
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`Observation No. 6
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`In Exhibit 2005, on page 80, lines 10-22 through page 81, lines 1-5, the
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`witness testified “Kawaguchi is not an unfamiliar device” when asked “If an
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`unfamiliar device, such as Kawaguchi, was encountered, why wouldn’t it make
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`more sense, under the SCSI standard, for the SCSI device controller to return the
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`unknown code” and yet, he further testified he had not encountered a device like
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`Kawaguchi in his personal experience. This testimony is relevant to the arguments
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`on pages 19-20 of the Patent Owner Response (Paper 17) which indicate that
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`Kawaguchi’s SCSI device converter 3 as a whole cannot be represented to the EWS
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`as being an input/output device customary in a host device. The testimony is
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`relevant because it illustrates that Kawaguchi is not a customary device taken as a
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`whole and is not a device that could identify as a customary device taken as a whole.
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`
`
`Observation No. 7
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`In Exhibit 2005, on page 83, lines 10-16, the witness testified “I cannot recall
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`something like that in the Schmidt reference” when asked “you don’t recall seeing
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`anywhere where it [is] discussed, for example, a scanner being identified as a disk
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`drive or any device being identified as something that it is not, correct?” This
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`testimony is relevant to the discussion of Schmidt/SCSI Book on page 24 of Patent
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`Owner’s Response (Paper 17). The testimony is relevant because it confirms what
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`
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`6
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`
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`Patent Owner stated in its response (i.e., that Schmidt/SCSI Book does not disclose
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`
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`
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`Respectfully Submitted,
`
`
`
`
`
`/s/ Gregory S. Donahue
`Gregory S. Donahue
`Reg. No. 47,531
`DiNovo Price LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, TX 78731
`Telephone: (512) 539-2625
`Facsimile: (512) 539-2627
`
`Lead Counsel for Patent Owner Papst
`Licensing GMBH & Co., KG
`
`Michael R. Fleming
`Reg. No. 67,933
`mfleming@irell.com
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Back-Up Counsel for Patent Owner
`Papst Licensing GMBH & Co., KG
`
`misidentification of a device).
`
`
`Date: December 5, 2017
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`7
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of December 2017, a true and correct copy
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`of the foregoing Patent Owner Papst Licensing GMBH & Co., KG’s Motion for
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`Observation Related to Deposition Testimony of Dr. Erez Zadok was served by
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`electronic mail upon the following counsel of record for Apple, Inc.:
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`
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`Lori A. Gordon
`Steven W. Peters
`Tyler J. Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`tdutton-ptab@skgf.com
`ptab@skgf.com
`
`/s/ Gregory S. Donahue
`
`Gregory S. Donahue
`Reg. No. 47,531
`DiNovo Price LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, Texas 78731
`
`
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`8
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