`_______________
`
`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
`_______________
`___________________________________
`PAPST LICENSING GMBH & CO., KG’S ITEMIZED LISTING OF
`OBJECTIONABLE ARGUMENTS AND EVIDENCE FILED WITH
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`___________________________________
`
`
`
`
`
`
`Pursuant to the Board’s Order (Paper No. 27), Patent Owner submits the
`
`following listing of arguments/evidence submitted with Petitioner’s Reply (“Reply”) of
`
`October 18, 2017 (Paper 23) that are beyond the proper scope of a reply under 37 C.F.R.
`
`42.23(b) and Office Trial Practice Guide, Section II(I), 77 Fed. Reg. 48756, 48767:
`
`1. “Construing ‘an input/output device’ as ‘one or more input/output devices’ does not
`
`contradict the Federal Circuit or the District Court” and “For these reasons, the Board
`
`should construe the pronoun ‘it’ as the ‘inquired device.’” Reply at p. 4, 6-7; p. 7, 3-4.
`
`2. New Annotated Figures. Reply at p. 9 and bottom of p. 10.
`
`3. “Thus, the SCSI device converter responds to the INQUIRY directed at the Data
`
`Reading Unit with INQUIRY data. . .” Reply at p. 16, 6-7.
`
`4. “As described above in Section II.A, when the EWS inquires as to Kawaguchi’s data
`
`reading unit 12, Kawaguchi’s interface would respond that this unit has a type 00h,
`
`identifying itself as a disk drive. . .” Reply at p. 21, 13-15.
`
`5. “In either case, the EWS will send a separate INQUIRY command to each unit, and
`
`the SCSI device converter will respond to each command with separate INQUIRY data
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`identifying the inquired unit as a customary I/O device.” Reply at p. 22, 10-13.
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`6. “In summary, a POSITA would understand the phrase, ‘it is an input/output device’
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`to mean ‘the inquired device is one or more input and/or output devices.’” Exhibit 1032
`
`at ¶22 (p. 15, 1-3).
`
`7. “[A] POSITA would understand that Kawaguchi’s Inquiry step comprises separate
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`standard SCSI INQUIRY commands issued to each of Kawaguchi’s respective units
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`
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`regardless whether they have different SCSI IDs or are different LUNs associated with
`
`a given SCSI ID.” Exhibit 1032 at ¶31 (p. 20, 6-9).
`
`8. “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.” Exhibit
`
`1032 at ¶38 (p. 25, 12-14).
`
`9. “For example, in the combined system of Kawaguchi and Schmidt, the EWS sends
`
`an INQUIRY command to the SCSI device converter, specifically relating to the data-
`
`reading unit…the data-reading unit is the inquired device because it the device on the
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`SCSI bus that the INQUIRY is directed to.” Exhibit 1032 at ¶43 (p. 28, 6-10).
`
`10. “As described above in Section IV.A, each of Kawaguchi’s four units will receive
`
`a separate INQUIRY command and will respond with its own INQUIRY data
`
`identifying the inquired unit (e.g. data read unit or data write unit), as a single customary
`
`I/O device…That is, the EWS sends four INQUIRY commands to the SCSI device
`
`converter—one for each unit—and in response, the SCSI device converter would
`
`provide distinct INQUIRY data responses separately identifying each unit as a member
`
`of the disk drive class. . .” Exhibit 1032 at ¶53 (p. 33, 17-20 and p. 34, 12-15).
`
`11. “Thus, for each INQUIRY the SCSI device converter receives, it responds with
`
`INQUIRY data signaling that the inquired unit is a single hard disk which is
`
`consistent with the conventional routine for the SCSI Protocol.” Exhibit 1032 at ¶55
`
`(p. 35, 7-9).
`
`
`
`
`
`Date: December 5, 2017
`
`
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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
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of December 2017, a true and correct copy
`
`of the foregoing PAPST LICENSING GMBH & CO. KG’S ITEMIZED LISTING
`
`OF OBJECTIONABLE ARGUMENTS AND EVIDENCE FILED WITH
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE was served by
`
`electronic mail upon the following counsel of record for Apple, Inc.:
`
`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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