IPR2016-01842, IPR2016-01860
`IPR2016-01863, IPR2016-01864
`
`Apple, Inc.,
`Petitioner
`v.
`Papst Licensing GmbH & Co. KG,
`Patent Owner
`
`U.S. Patent No. 9,189,437
`U.S. Patent No. 8,966,144
`U.S. Patent No. 8,504,746
`U.S. Patent No. 6,470,399
`
`1
`
`
`IPR2016-01863, IPR2016-01864
`
`Apple, Inc.,
`Petitioner
`v.
`Papst Licensing GmbH & Co. KG,
`Patent Owner
`
`U.S. Patent No. 9,189,437
`U.S. Patent No. 8,966,144
`U.S. Patent No. 8,504,746
`U.S. Patent No. 6,470,399
`
`1
`
`
`
`‘399 PATENT, ‘144 PATENT, ‘746 PATENT AND
`‘437 PATENT INTRODUCTION
`
`The ‘746 Patent recognizes that the existing options were wasteful and
`inefficient and presents a solution that would achieve high data transfer
`rates, without specialized software, while being sufficiently flexible to
`operate independent of device or host manufacturers. Id. at 2:22-41 and
`3:28-31. The resulting invention would allow a data acquisition system
`to identify itself as a type of common device so as to leverage the
`inherent
`capabilities
`of
`general-purpose,
`commercially-available
`computers. Id. at 4:13-27. Accordingly, users could avoid loading
`specific software;
`improve data transfer efficiency;
`save time,
`processing power, and memory space; and avoid the waste associated
`with purchasing specialized computers or loading specific software for
`each device. Id. at 3:28-31, 3:32-45, 7:32-65, 8:29-36, 9:16-19 and
`11:29-46. The ‘746 Patent claims variations of this concept and provides
`a crucial, yet seemingly simple, method and apparatus for a high data
`rate, device-independent information transfer. Id. at 3:28-31.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 2-3; Exhibit 1001
`(‘746 Patent IPR2016-01863) at 2:22-41, 3:28-31, 4:13-27, 3:32-45, 7:32-65, 8:29-36, 9:16-19 and 11:29-46
`
`2
`
`
`
`‘399 PATENT, ‘144 PATENT, ‘746 PATENT AND
`‘437 PATENT INTRODUCTION
`
`In contrast, the interface device of the ‘746 Patent avoids this problem because it
`simulates, both in terms of hardware and software, the way a hard drive works.
`Consequently, it can respond to a SCSI inquiry that it is a hard drive without
`risking destructive interactions with the host device or reconfigurations of the
`interface device by the host device. Exhibit 1001 (‘746 Patent) at 4:14-18 (“The
`interface device according to the present invention therefore simulates, both in
`terms of hardware and software, the way in which a conventional input/output
`device functions, preferably that of a hard disk drive.”).
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 23;
`Exhibit 1001 (‘746 Patent IPR2016-01863) at 4:14-18
`
`3
`
`
`
`PRIOR ART INTRODUCTION - PUCCI
`
`The ION system couples an analog to digital converter (“ADC”) to a
`SCSI target interface through a memory buffer. The SCSI target responds
`to disk drive commands for reading. However, access by the host to
`ADC data is done by means of the host reading a single block address in
`the simulated disk drive. Thus, the ADC data is not provided by files in a
`file system. The ION reference also has the ability to emulate a file
`system, but it teaches that this is only used for disk drive performance
`analysis, not for ADC access. Id. at 236. As such, the reference teaches
`away from accessing ADC data in the form of files because files exist
`but are not used for ADC data. ADC data is accessed by an application
`that does not use the host computer’s file system, and instead reads a
`certain disk block to obtain ADC data. Id. at 221.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 12-13;
`Exhibit 1041 (Pucci IPR2016-01863) at 221
`
`4
`
`
`
`PRIOR ART INTRODUCTION - PUCCI
`
`Exhibit 1041 (Pucci IPR2016-01863) at Figure 1; Paper 2 (Petition IPR2016-01863) at 18
`
`5
`
`
`
`PRIOR ART INTRODUCTION - SCHMIDT
`
`“Schmidt describes the SCSI bus and IDE Integrated Drive Electronics
`(“IDE”)
`interface, which both are American Nation[al] Standards
`Institute (“ANSI”) standards.” IPR2016-01842, Paper 10 (Institution
`Decision) at 21; Exhibit 1007 (Schmidt) at Preface. “According to
`Schmidt, these interfaces are two of the most important interfaces for
`computer peripherals in use at that time, and almost all computers at
`that time, from PCs to workstations to mainframes, were equipped with
`a SCSI interface.” Id. “The SCSI bus is designed for hard drives, as well
`as tape drives, CD-ROM, scanners, and printers.” Id.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 13; Paper 10 (Institution Decision IPR2016-01842) at
`21; Exhibit 1007 (Schmidt IPR2016-01863) at Preface
`
`6
`
`
`
`PRIOR ART INTRODUCTION - SCHMIDT
`
`Exhibit 1007 (Schmidt IPR2016-01863) at 133; Paper 2 (Petition IPR2016-01863) at 20
`
`7
`
`
`
`PRIOR ART INTRODUCTION - KEPLEY
`
`The Kepley invention “relates to business communication systems and,
`in particular, to a message service system network that interconnects a
`plurality of message service systems and provides a voice mail message
`transfer capability between voice mail message service systems.”
`Exhibit 1042 (Kepley) at Abstract. “The voice mail message transfer is
`performed as a computer-to-computer data file transfer operation over
`high speed data lines.” Id. “The data file consists of the digitally
`encoded and compressed voice mail message to which is appended the
`message sender’s name and telephone number as well as the message
`recipient’s telephone number.” Id.
`
`Paper 16 (Patent Owner Response IPR2016-1863) at 13-14; Exhibit 1042 (Kepley IPR2016-01863) at Abstract
`
`8
`
`
`
`COMMON GROUNDS INVOLVING PUCCI,
`SCHMIDT AND KEPLEY
`
`Paper 10 (Institution Decision IPR2016-01863) at 4-5;
`Exhibit 1001 (‘746 Patent IPR2016-01863) at 11:48-12:26
`
`9
`
`
`
`COMMON GROUNDS INVOLVING PUCCI,
`SCHMIDT AND KEPLEY
`
`Paper 10 (Institution Decision IPR2016-01842) at 5-7;
`Exhibit 1001 (‘437 Patent IPR2016-01842) at 11:57-12:42
`
`10
`
`
`
`COMMON GROUNDS INVOLVING PUCCI,
`SCHMIDT AND KEPLEY
`
`Paper 10 (Institution Decision IPR2016-01860) at 4-6;
`Exhibit 1001 (‘144 Patent IPR2016-01860) at 11:57-12:36
`
`11
`
`
`
`COMMON GROUNDS INVOLVING PUCCI,
`SCHMIDT AND KEPLEY
`
`48. Pucci describes the digitization of analog data as follows:
`The third task interfaces to the SCSI bus and returns data to the
`workstation when requested. This task defines a SCSI action function
`which contains 4 block addresses for each of 5 A-to-D channels. Each
`channel contains a block address to start conversion, stop conversion,
`return status, and retrieve A-to-D data.
`The part of the application that runs on the workstation requests
`converted data in response to a start/stop signal from other system
`hardware, which indicates the beginning and end of a recording session.
`Upon start,
`the workstation reads the A-to-D start address for an
`appropriate channel, activating the device. It then retrieves data by
`reading the data block address for that channel, while also monitoring
`for an end-of-session indication.
`When the latter occurs, the workstation reads the stop address, halting
`the data conversion. It continues to read the data address until all
`buffered data have been obtained. The channel is then available for
`reuse.
`Exhibit 1041 (Pucci) at 232 (emphasis added).
`Paper 16 (Patent Owner Response IPR2016-01863) at 14-16;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶ 48
`
`12
`
`
`
`COMMON GROUNDS INVOLVING PUCCI,
`SCHMIDT AND KEPLEY
`
`49. The above passage shows that the ION uses a first in/first out (FIFO)
`approach to data writing and reading, and not a file format approach,
`because the data is being accessed by the workstation while new data is
`being collected. New data is collected until the workstation reads a stop
`address and previously collected data is read “until all buffered data have
`been obtained.” Id. Thus, data is being buffered instead of being stored in
`a file.
`
`50. Further, it was well known to a POSITA at the time that it is not
`necessary to store data in files. Nor would it be obvious to store sensor
`data in a file in a system where one may choose to access and read data
`that was first available prior to all of the data of a “file” being written,
`such as in the ION voice messaging application.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 14-16;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶¶ 49-50
`
`13
`
`
`
`COMMON GROUNDS INVOLVING PUCCI,
`SCHMIDT AND KEPLEY
`
`52. Dr. Zadok also argues that Kepley discloses a “digitally encoded and
`compressed voice mail message” as a file. Exhibit 1003 (Zadok
`Declaration) at ¶109. This has no pertinence to a validity analysis here.
`Of course, other systems exist that have files. The teaching of the Pucci
`reference is that memory buffered data transfer, not
`files,
`is the
`developer’s requirement for moving analog data in the Pucci system. The
`design of the ION Node permits data to flow into the host as it is
`acquired, rather than to be stored in its entirety in a file and then
`transferred, and that alone is a major difference in performance that Dr.
`Zadok does not address.
`
`53. Kepley discloses a separate database processor for storing digitized
`voice files. Implementing such a processor on the ION Node would
`require a major redesign of the ION Node embedded software (which is
`disclosed and designed to be self-contained), and of the ION Node host
`software so that files and not dynamically allocated buffers would be
`used to transfer data, with no assurance of success or improved or even
`equal performance. It is pure hindsight to propose changing a design
`paradigm such as substituting memory buffers with named files.
`Paper 16 (Patent Owner Response IPR2016-01863) at 16-17;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶¶ 52-53
`
`14
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 10 (Institution Decision IPR2016-01863) at 4-5;
`Exhibit 1001 (‘746 Patent IPR2016-01863) at 11:48-12:26
`
`15
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 10 (Institution Decision IPR2016-01842) at 5-7;
`Exhibit 1001 (‘437 Patent IPR2016-01842) at 11:57-12:42
`
`16
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 10 (Institution Decision IPR2016-01860) at 4-6;
`Exhibit 1001 (‘144 Patent IPR2016-01860) at 11:57-12:36
`
`17
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 13 (Institution Decision IPR2016-01864) at 4-5;
`Exhibit 1001 (‘399 Patent IPR2016-01864) at 12:42-13:12
`
`18
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`55. The ION Data Engine is a multiprocessor tasking system for providing data manipulation
`services for collections of workstations. Exhibit 1041 (Pucci) at 217. The ION Data Engine
`allows applications residing in the workstation to implement specific functions by enabling
`the reading or writing of specific block addresses within the ION drive. Id. at 221. For
`example,
`
`ION supports an analog to digital (A-to-D) conversion application that provides
`voice messaging service for a prototype telephone switch. The bulk of the
`application resides in a conventional workstation, while the peripheral devices
`are located within ION. The application's interface to the A-to-D converters is
`implemented as an action defined on a set of 5 disk block addresses, each
`corresponding to 1 of the 5 analog channels. The controlling program within
`the workstation merely reads from one of these designated disk block
`addresses to obtain the converted data (lseek() followed by read() in the Unix
`domain). By defining such interactions in terms of standard disk read and write
`accesses, the application remains portable across workstation changes operating
`system releases, and to a large degree, complete operating system changes (e.g.,
`Unix to VMS), while preserving any existing special purpose hardware
`investments.
`
`Id.; see also id. at 232 (“This task defines a SCSI action function which contains 4 block
`addresses for each of 5 A-to-D channels. . . .The part of the application that runs on the
`workstation requests converted data in response to a start/stop signal from other system
`hardware . . . .”).
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 19-20;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶ 55
`
`19
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`56. Pucci does not disclose responding to an inquiry from the ION
`Workstation or sending a signal or a parameter identifying the analog
`data generating and processing device. Indeed, Dr. Zadok’s statements
`regarding the functionality of the ION omits any claim that the ION
`responds to an inquiry command from the ION workstation or sends a
`signal that the ION is a digital storage device or any other type of
`device; instead relying on what one skilled in the art would allegedly
`believe from knowing the ION node can connect to the ION node
`workstation with a SCSI connection and being familiar with the SCSI
`standard discussed in SCSI Book/Schmidt. Exhibit 1003 (Zadok
`Declaration) at ¶¶114-125. Nothing in Pucci or
`in Dr. Zadok’s
`discussion of Pucci reveals a response of ION to an inquiry from the
`ION Workstation that identifies ION as a digital storage device or any
`other type of device.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 19-20;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶ 56
`
`20
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`58. Even if one adds SCSI device identification as a normal SCSI
`procedure as described in the SCSI Book/Schmidt, the combination does
`not render obvious the claimed identification, because there is no
`teaching in the SCSI book/Schmidt of a device identifying itself as
`something other
`than what
`it actually is.
`In other words, SCSI
`Book/Schmidt does not disclose causing at
`least one parameter
`identifying the analog data generating and processing device as a digital
`storage device instead of as an analog data generating and processing
`device to be automatically sent through the i/o port and to the multi-
`purpose interface of the computer. SCSI Book/Schmidt only discloses
`sending a signal that properly identifies the device and that does not
`involve sending a signal
`to the host device which signals that
`the
`attached device is a digital storage device instead of an analog data
`generating and processing device.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 21;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶ 58
`
`21
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`59. Furthermore, it would have been illogical for a POSITA to configure
`an ION device to respond with data indicating a digital storage device,
`such as an 00h (disk drive) class, without first having user intervention to
`ensure the workstation has had the proper software installed to work with
`ION, since otherwise a workstation may have prematurely believed ION to
`actually be a disk drive. This situation would lead to unpredictable results,
`since the ION is not a disk drive, and in fact only responds to commands
`from the workstation based on accessing of specific block addresses that
`must be known to the workstation through installed software and not by
`way of customary drivers before it can make any proper use of the ION.
`Exhibit 1041 (Pucci) at 221, 232. If the ION was to respond to a
`workstation that it was a disk drive without proper ION software installed
`and operating on the workstation, the workstation would most reasonably
`attempt to access the ION and/or reconfigure the ION in an unpredictable
`and potentially destructive manner. There would have been no benefit, and
`in fact
`it would have been counter-productive,
`to have the ION
`misrepresent itself to a workstation without user intervention, given the
`requirement of having to modify the workstation first with ION custom
`application software for the system to work.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 21-22;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶ 59
`
`22
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`the CPU on an SBC (part of the recited
`116. As shown below,
`“processor”) is involved in the “automatically caus[ing] at least one
`parameter indicative of the class of devices to be sent to the computer”
`by sending the response to the INQUIRY command to the workstation.
`Pucci does not explicitly disclose that “the processor executes at least
`one instruction set stored in the program memory” to cause the “at least
`one parameter” to be sent from the ION node to the workstation.
`However, a POSITA would have found it obvious to implement the
`CPU as a programmable device that “executes at least one instruction
`set stored in the program memory” to cause the INQUIRY response to
`be sent to the workstation. Instructions are a fundamental element of
`any computer system that drive the function and operation of the
`computer system and its components. (Schmidt, p. 3 (“The CPU
`executes the instructions of a program, which, along with the necessary
`data, must reside in main memory at execution time”); Microsoft
`Computer Dictionary, p. 84 (“The central processing unit… has the
`ability to fetch, decode, and execute instructions”).)
`
`Paper 2 (Petition IPR2016-01863) at 31-32; Exhibit 1003 (Zadok Declaration IPR2016-01863) at ¶ 116
`
`23
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`12 Q. But based on that, you'll agree, Pucci
`13 does not explicitly show the sending of a
`signal
`14 that misidentifies a device as a hard drive,
`15 correct?
`16 MR. DUTTON: Objection. Asked and
`17 answered.
`18 THE WITNESS: I think this is well
`19 understood in Pucci when it says that it
`emulates
`20 a hard disk and it treats it as if it were
`21 physically a local disk drive.
`1 BY MR. DONAHUE:
`2 Q. Okay. But again, there's no mention of
`3 signaling there, correct?
`4 A. I don't recall a specific word "signal"
`5 or "signaling" there. Those, again, are sort of
`6 details of the SCSI specification.
`
`Paper 21 (Motion for Observation IPR2016-01863) at 3;
`Exhibit 2008 (Zadok Deposition Transcript IPR2016-01863) at 116:12-117:6
`
`24
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`4 Q. Okay. But neither explicitly discloses
`5 sending a signal that misidentifies a device as
`
`a6
`
` hard drive, correct?
`7 MR. DUTTON: Objection. Asked and
`8 answered several times.
`9 THE WITNESS: So I don't recall, again,
`10 in Schmidt that it describes signals that
`emulate
`11 or misidentify. Again, there might be
`something
`12 there, but I don't recall offhand.
`
`Paper 21 (Motion for Observation IPR2016-01863) at 4;
`Exhibit 2008 (Zadok Deposition Transcript IPR2016-01863) at 118:4-12
`
`25
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 10 (Institution Decision IPR2016-01863) at 4-5;
`Exhibit 1001 (‘746 Patent IPR2016-01863) at 11:48-12:26
`
`26
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 10 (Institution Decision IPR2016-01842) at 5-7;
`Exhibit 1001 (‘437 Patent IPR2016-01842) at 11:57-12:42
`
`27
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 10 (Institution Decision IPR2016-01860) at 4-6;
`Exhibit 1001 (‘144 Patent IPR2016-01860) at 11:57-12:36
`
`28
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`Paper 13 (Institution Decision IPR2016-01864) at 4-5;
`Exhibit 1001 (‘399 Patent IPR2016-01864) at 12:42-13:12
`
`29
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`65. The ION Data Engine is a multiprocessor tasking system for providing data manipulation
`services for collections of workstations. Exhibit 1041 (Pucci) at 217. The ION Data Engine allows
`applications residing in the workstation to implement specific functions by enabling the reading or
`writing of specific block addresses within the ION drive. Id. at 221. For example,
`
`ION supports an analog to digital (A-to-D) conversion application that provides voice
`messaging service for a prototype telephone switch. The bulk of the application
`resides in a conventional workstation, while the peripheral devices are located within
`ION. The application's interface to the A-to-D converters is implemented as an action
`defined on a set of 5 disk block addresses, each corresponding to 1 of the 5 analog
`channels. The controlling program within the workstation merely reads from one
`of these designated disk block addresses to obtain the converted data (lseek() followed
`by read() in the Unix domain). By defining such interactions in terms of standard disk
`read and write accesses, the application remains portable across workstation changes
`operating system releases, and to a large degree, complete operating system changes
`(e.g., Unix to VMS), while preserving any existing special purpose hardware
`investments.
`
`Id.; see also id. at 232 (“This task defines a SCSI action function which contains 4 block addresses
`for each of 5 A-to-D channels. . . .The part of the application that runs on the workstation requests
`converted data in response to a start/stop signal from other system hardware . . . .”).
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 25-27;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶ 65
`
`30
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`
`66. Consequently, installation of the controlling program/application on
`the ION Workstation is required for the Workstation to communicate
`with the ION Data Engine so it knows which block addresses to access,
`i.e., “where” to read from the ION for the actions to access the
`information from peripheral devices attached to the ION. The ION
`Workstation uses installed software for
`the transfer of data,
`i.e.
`communication,
`to occur. Without
`installation of
`the controlling
`program/application (i.e., “user-loaded file transfer enabling software”),
`the workstation would not know that there is a defined action on a given
`disk block address in ION.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 25-27;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶ 66
`
`31
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`67. In the underlying litigation related to the ‘746 patent, the district court
`construed “user-loaded” to mean “loaded by a user other than as necessary to
`load or maintain an operating system.” Exhibit 2007 (Claim Construction) at
`42. The controlling program/application for ION discussed in Pucci and located
`in the ION Workstation is clearly not necessary to load or maintain an operating
`system, but instead is for an “experimental platform for voice mail services in a
`user-programmable telephone switch prototype.” Exhibit 1041 (Pucci) at 218.
`
`68. Dr. Zadok opines that because the ION node of Pucci appears to the ION
`workstation as a hard disk and interfaces with the ION workstation over a SCSI
`bus, communication by the host device/ION workstation with the ION node
`must be by means of the driver for the input/output device customary in the
`host device. Exhibit 1003 (Zadok Declaration) at ¶¶133. Dr. Zadok’s
`conclusions regarding the sufficiency of the SCSI protocol
`to effectuate
`communication between the host device and the ION node is erroneous for the
`same reasons as I have given above regarding the necessity of the installation
`and use of the controlling program/application in the host. Indeed, Dr. Zadok
`fails to cite any disclosure in Pucci relating to the ION node communicating by
`means of the SCSI driver.
`
`Paper 16 (Patent Owner Response IPR2016-01863) at 27-28;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶¶ 67-68
`
`32
`
`
`
`COMMON GROUNDS INVOLVING
`PUCCI AND SCHMIDT
`22 Does this imply that part of the A-to-D
`1 application resides in the ION, while another part
`2 resides in the host workstation?
`3 A. So I think what they imply here is that
`4 there is some application running on the
`5 workstation, and that interfaces with a SCSI
`6 driver or standard SCSI driver to the ION node
`7 itself, which then would accept these kinds of
`8 commands and process them, namely through these
`9 analog channels, reading data from them,
`10 digitizing them, and returning it back.
`
`22 Q. Okay. But you would agree with me that
`1 there's an application that's running on the
`2 workstation that's requesting the converted data
`3 that's separate and apart from any driver,
`4 correct?
`5 A. I would assume that this application is a
`6 user mode application that's separate from the
`7 standard SCSI driver that's usually part of the
`8 operating system where that SCSI driver is what
`9 enables the transfer of the data.
`Paper 21 (Motion for Observation IPR2016-01863) at 1-2;
`Exhibit 2008 (Zadok Deposition Transcript IPR2016-01863) at 87:22-88:10 and 89:22-90:9
`
`33
`
`
`
`CONSIDERATIONS WEIGHING AGAINST
`COMBINATION OF PUCCI WITH SCHMIDT
`
`As previously discussed, it would have been illogical for a POSITA to configure
`an ION Node to transfer data to and from an ION Workstation without the proper
`communication software installed to work with the ION Node, since otherwise a
`workstation may have believed the ION Node to actually be a disk drive. This
`situation would lead to unpredictable results, since the ION Node is not a disk
`drive, and in fact only communicates with the workstation based on accessing of
`specific block addresses that must be known to the workstation through installed
`software and not by way of customary drivers before it can make any proper use
`of the ION Node. Exhibit 1041 (Pucci) at 221, 231. If the ION Node were to
`attempt to communicate to a workstation that it was a disk drive without proper
`ION software installed and operating on the workstation, the workstation would
`most reasonably attempt to access the ION Node and/or reconfigure the ION
`Id. at 220
`Node in an unpredictable and potentially destructive manner.
`(Workstation sees ION as a 2 TB drive when it does not have nearly that
`capacity.). Exhibit 2006 (Gafford Declaration) at ¶¶ 59, 69.
`
`As such, it would potentially render the Pucci invention inoperable if the ION
`Node/interface device of Pucci responded to any Inquiry in the context of the
`SCSI standard by saying the device at that ID is a digital storage device/hard
`drive because the device at that ID would be incapable of performing the
`functions of a hard drive. Exhibit 2006 (Gafford Declaration) at ¶¶ 59, 69.
`
`Paper 16 (PO Response IPR2016-01863) at 33-34;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶¶ 59, 69
`
`34
`
`
`
`CONSIDERATIONS WEIGHING AGAINST
`COMBINATION OF PUCCI WITH KEPLEY
`As also discussed previously, Petitioner argues that Kepley’s file system would
`be combined with Pucci to disclose the “file of digitized analog data” claimed in
`claim 1 of the ‘746 Patent. However, Pucci discloses that memory buffered data
`transfer, not files, is the developer’s requirement for moving analog data in the
`Pucci system. The ION Node in Pucci is specifically designed to permit data to
`flow into the host as it is acquired, and not to be stored in its entirety in a file and
`then transferred. Therefore, it would significantly impact Pucci’s principle of
`operation and prevent Pucci from achieving its purpose of permitting data flow
`into the host as it is acquired to combine Pucci’s ION Node with Kepley’s file
`storage system. Exhibit 2006 (Gafford Declaration) at ¶ 52.
`
`Kepley, as discussed supra, also discloses a separate database processor for
`storing its digitized voice files. Exhibit 1042 (Kepley) at 7:58-65 and FIG. 1.
`Implementing such a processor on the ION Node of Pucci would require a major
`redesign of the ION Node embedded software (which is disclosed and designed
`to be self-contained) and of the ION Node host software so that files and not
`dynamically allocated buffers would be used to transfer data, with no assurance
`of success or improved or even equal performance. Therefore, it is pure hindsight
`to propose changing a design paradigm such as substituting memory buffers of
`Pucci with named files of Kepley to achieve the ‘746 Patent’s claimed invention.
`Exhibit 2006 (Gafford Declaration) at ¶ 53.
`
`Paper 16 (PO Response IPR2016-01863) at 34-35;
`Exhibit 2006 (Gafford Declaration IPR2016-01863) at ¶¶ 52-53
`
`35
`
`
`
`IPR2016-01839
`
`Apple, Inc.,
`Petitioner
`v.
`Papst Licensing GmbH & Co. KG,
`Patent Owner
`
`U.S. Patent No. 6,470,399
`
`36
`
`
`
`‘399 PATENT INTRODUCTION
`
`involves a unique method for achieving high data
`The ’399 Patent
`transfer rates for data acquisition systems (e.g., still pictures, videos,
`voice recordings) to a general-purpose computer, without requiring a user
`to purchase, install, and/or run specialized software for each system.
`Exhibit 1001 (’399 Patent) at 4:23-27. At the time of the invention, there
`were an increasing number and variety of data acquisition systems with
`the ability to capture high volumes of information. Id. at 1:34-52. As
`such, there was an increasing demand to transfer that information to
`commercially-available, general purpose computers. Id. at 1:20-32. But at
`that time—and today—performing that data transfer operation required
`either loading specialized, sophisticated software onto a general purpose
`computer, which increases the risk of error and the level of complexity
`for the operator, or specifically matching interface devices for a data
`acquisition system to a host system that may maximize data transfer rates
`but lacks the flexibility to operate with different devices. Id. at 1:17-3:21.
`
`Paper 17 (Patent Owner Response) at 2; Exhibit 1001 (‘399 Patent) at 4:23-27, 1:34-52, 1:20-32 and 1:17-3:21
`
`37
`
`
`
`‘399 PATENT INTRODUCTION
`
`In sharp contrast, the ‘399 Patent states, “[t]he interface device
`according to the present invention therefore simulates, both in terms of
`hardware and software, the way in which a conventional input/output
`device functions, preferably that of a hard disk drive,” thus affirming
`that the ‘399 Patent’s “interface device” signals “that it is an
`input/output device customary in a host device” (i.e., a single hard disk
`drive using a single ID capable of reading and writing as was customary
`at the time of the invention). Exhibit 1001 (‘399 Patent) at 5:6-9.
`Exhibit 2002 (Gafford Declaration) at ¶¶ 55, 64-72.
`
`Paper 17 (Patent Owner Response) at 23; Exhibit 1001 (‘399 Patent) at 5:6-9;
`Exhibit 2002 (Gafford Declaration) at ¶¶ 55, 64-72
`
`38
`
`
`
`PRIOR ART INTRODUCTION - KAWAGUCHI
`
`Kawaguchi generally relates to a SCSI device adapter (also referred to
`as a SCSI device converter or “SDC”) for connecting non-SCSI
`peripheral devices to an engineering work station. Exhibit 2004
`(Kawaguchi) at 2-3, Exhibit 1005 (Kawaguchi) at 3. In particular,
`Kawaguchi states: “the object of the present invention is to provide a
`general-use SCSI device adapter that can easily connect a peripheral
`device that has a standard bus that is different from that of a SCSI bus,
`such as a PC-compatible bus, or the like, to the SCSI interface of an
`EWS that was built for the purpose of connecting with a hard disk, and,
`in particular, to provide a general-use SCSI device adapter that can
`apply an interrupt from the peripheral device side.” Exhibit 2004
`(Kawaguchi) at 3, Exhibit 1005 (Kawaguchi) at 3.
`
`Paper 17 (Patent Owner Response) at 13; Exhibit 1005 (Kawaguchi) at 3
`
`39
`
`
`
`PRIOR ART INTRODUCTION - KAWAGUCHI
`
`Kawaguchi discloses that the device converter is able to input and
`output data to the SCSI interface of an Engineering Work Station (EWS)
`from a peripheral device using four separate portions or units each
`identified as a different logical device, including a data writing unit, a
`data reading unit, a control data writing unit, and an interrupt data
`reading unit. Exhibit 2004 (Kawaguchi) at 4; Exhibit 1005 (Kawaguchi)
`at 3, 8. Kawaguchi discloses: “[t]he SCSI device adapter performs
`input/output of data to/from an EWS SCSI interface through the same
`standard as the SCSI interface for a hard disk, the EWS to write and
`read arbitrary data to/from four types of data writing portions and
`reading portions that function as data relays with the peripheral device.”
`Exhibit 2004 (Kawaguchi) at 3; Exhibit 1005 (Kawaguchi) at 4.
`
`Paper 17 (Patent Owner Response) at 13-14; Exhibit 1005 (Kawaguchi) at 3-4 and 8
`
`40
`
`
`
`PRIOR ART INTRODUCTION - KAWAGUCHI
`
`10 Q. If an unfamiliar device, such as
`11 Kawaguchi, was encountered, why wouldn't it make
`12 more sense, under the SCSI standard, for the SCSI
`13 device controller to return the unknown code?
`14 MR. DUTTON: Objection. Calls for
`15 speculation.
`16 THE WITNESS: Kawaguchi is not an
`17 unfamiliar device. It explicitly says that it
`18 identifies itself, each of its units, as hard
`19 disks repeatedly. And so it would clearly return
`20 the device code 00H.
`21 BY MR. DONAHUE:
`22 Q. Do you -- have you ever encountered a
`1 device like Kawaguchi in your experience?
`2 A. Specifically something like that --
`3 Q. Yes.
`4 A. -- personal experience? I -- no. I
`5 mean, I don't think so.
`
`Exhibit 2005 (Zadok Deposition Transcript) at 80:10-81:5; Paper 29 (Motion for Observation) at 6
`
`41
`
`
`
`PRIOR ART INTRODUCTION - KAWAGUCHI
`
`Exhibit 1005 (Kawaguchi) at FIG. 1; Paper 2 (Petition) at 13
`
`42
`
`
`
`PRIOR ART INTRODUCTION - SCHMIDT
`
`As the Board stated, “Schmidt describes the SCSI bus and IDE
`(Integrated Drive Electronics)
`interface, which both are ANSI
`(American Nation Standards Institute) standards.” Paper 15 (Institution
`Decision) at 14; Exhibit 1007 (Schmidt) at Preface. “According to
`Schmidt, these interfaces are two of the most important interfaces for
`computer peripherals in use at that time, and almost all computers at
`that time, from PCs to wo
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