`
`
`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 IPR2016-01842
`Patent 9,189,437
`___________________
`
`
`DECLARATION OF EREZ ZADOK, PH.D.
`IN SUPPORT OF THE REPLY TO THE PATENT OWNER RESPONSE
`
`
`Apple 1054
`IPR2016-01842
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`Background..................................................................................................... 1
`The disputed features of independent claims 1 and 43. ................................. 2
`A. Ground 1: “the processed and digitized analog data is stored in
`the data storage memory as at least one file of digitized analog
`data.” ...................................................................................................... 3
`B. Grounds 1 and 5: “an automatic recognition process” and
`“automatically generating and transmitting . . . an identification
`parameter.” ............................................................................................ 7
`C. Grounds 1 and 5: “without requiring any user-loaded file
`transfer enabling software” and “without requiring the user to
`load the device driver.” ........................................................................ 16
`Conclusion .................................................................................................... 20
`
`
`- i -
`
`
`I.
`II.
`
`III.
`
`
`
`
`
`
`
`
`
`I.
`
`Background
`
`I, Dr. Erez Zadok, declare as follows:
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`1.
`
`I submit this declaration in support of Apple Inc.’s Reply to the Patent
`
`Owner Response in the Inter Partes Review of U.S. Patent No. 9,189,437 (“the
`
`’437 patent”). I understand that the ’437 patent is currently assigned to Papst
`
`Licensing GmbH & Co. KG.
`
`2.
`
`This declaration supplements my October 11, 2016 declaration
`
`submitted as Exhibit 1003 in the above-referenced proceeding.
`
`3.
`
`I understand that my curriculum vitae has been submitted into the
`
`record of this proceeding as Exhibit 1004.
`
`4.
`
`In preparing this declaration, in addition to my knowledge and
`
`experience, I have reviewed and am familiar with the following references:
`
`Configurable Data Manipulation in an Attached
`Multiprocessor by Marc F. Pucci (“Pucci”) (Ex. 1041);
`
`The SCSI Bus and IDE Interface—Protocols,
`Applications and Programming by Friedhelm Schmidt
`(“Schmidt”) (Ex. 1007);
`
`U.S. Pat. No. 4,790,003 to Kepley et al., titled “Message
`Service System Network” (“Kepley”) (Ex. 1042);
`
`Declaration of Thomas A. Gafford (“Gafford Decl.”)
`(Exhibit 2005);
`
`
`
`
`- 1 -
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`Transcripts of the 1st and 2nd depositions of Mr.
`Gafford (“Gafford Depn. I” and “Gafford Depn. II”)
`(Exhibits 1055 and 1056);
`
`The Institution Decision (“Inst. Dec.”); and
`
`Patent Owner’s Response to the Petition for Inter
`Partes Review (“POR”).
`
`5.
`
`I have also considered all other materials cited herein and cited in my
`
`declaration in support of the Petition.
`
`II. The disputed features of independent claims 1 and 43.
`I understand the Board instituted the following grounds.
`6.
`
`Ground Claims
`
`Basis References
`
`1, 4-6, 9-12, 14, 15, 30, 34 § 103 Pucci, Kepley, Schmidt
`
`16
`
`13, 18
`
`32
`
`43
`
`45
`
`§ 103 Pucci, Kepley, Schmidt, Shinosky
`
`§ 103 Pucci, Kepley, Schmidt, Campbell
`
`§ 103 Pucci, Kepley, Schmidt, Wilson
`
`§ 103 Pucci, Schmidt
`
`§ 103 Pucci, Schmidt, Campbell
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`
`
`
`
`
`- 2 -
`
`
`
`7.
`
`I understand that the Patent Owner (“Papst”), in its Patent Owner
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`
`Response, provided arguments specific to only the independent claims. In this
`
`declaration, I reiterate why a person having ordinary skill in the art (“POSITA”)
`
`would have combined the references in a manner that teaches the disputed features.
`
`A. Ground 1: “the processed and digitized analog data is stored in the
`data storage memory as at least one file of digitized analog data.”
`I understand that Papst argues that a POSITA would not have
`
`8.
`
`combined Pucci, Kepley, and Schmidt such that “the processed and digitized
`
`analog data is stored in the data storage memory as at least one file of digitized
`
`analog data,” as recited in independent claim 1. Specifically, I understand that
`
`Papst argues that incorporating Kepley’s “file storage system” into Pucci 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.” (POR,
`
`p. 17.) In support of this position, Mr. Gafford testified that using files in Pucci’s
`
`ION system would run counter to Pucci’s “requirement for moving analog data”
`
`based on “memory buffered data transfer.” (Ex. 2005, Gafford Decl., ¶ 52.) I
`
`disagree.
`
`9.
`
`Pucci does not criticize, discredit, or otherwise discourage the use of a
`
`file-storage system. Pucci instead encourages the use of a traditional file-storage
`
`system. As Mr. Gafford acknowledged during his deposition, data in the buffer can
`
`
`
`
`- 3 -
`
`
`
`
`be stored as part of the ION’s local storage. (Ex. 1056, Gafford Depn. II, 62:23-
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`63:9 (“A. Well, files are for storing data. There’s nothing special about the data in
`
`the large buffer memory. Data can be stored in a file . . . . Q. Okay. So the data
`
`from the large buffer memory could be stored in a file on ION’s local storage,
`
`correct? . . . A. I don’t see anything in the disclosure of ION that would prevent a
`
`user from writing software which did that.”) (emphasis added).) Below is Figure 1
`
`of Pucci, which is annotated to illustrate Mr. Gafford’s acknowledgement.
`
`Data
`
`
`
`
`
`
`
`
`Voice mail
`file
`
`10. Mr. Gafford’s acknowledgement is consistent with Pucci’s explicit
`
`disclosure. In Pucci, the ION Node uses a file-storage system to store data as a file.
`
`As Pucci states, the data can be stored within an ION system as “traditional file
`
`system data” (Ex. 1041, Pucci, p. 221), and the local ION storage “may consist of
`
`
`
`
`- 4 -
`
`
`
`
`file system data.” (Pucci, p. 222.) As shown above in Figure 1, the local ION
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`storage is connected to the ION Node through a disk interface. (Pucci, p. 222
`
`(“Additional disk interfaces are used to control local node storage”).) Accordingly,
`
`Pucci is already designed to accommodate a file-storage system. Mr. Gafford’s
`
`acknowledgement is also consistent with a POSITA’s understanding that buffering
`
`(and/or caching) were well known to temporarily store data for applications and
`
`I/O devices. (Zadok Decl., ¶ 157.)
`
`11. Pucci discloses a “platform for analog to digital (A-to-D) services for
`
`a voice messaging application.” (Pucci, p. 231.) These services involve “A-to-D
`
`data” (Pucci, p. 232), but Pucci does not completely explain how the data is stored
`
`for this application. As I explained in my previous declaration, a POSITA would
`
`have been motivated to use a file-storage system in Pucci’s A-to-D application.
`
`(Zadok Decl., ¶¶ 95–97.) And based on Pucci’s explicit disclosure and a POSITA’s
`
`understanding of data storage in general, a POSITA would have understood that
`
`the ION Node could use a file-storage system for the A-to-D application without a
`
`major redesign.
`
`12. What Kepley provides in the proposed combination is an explicit
`
`disclosure of storing digitized A-to-D converted data (such as converted audio
`
`data) as a file. (Ex. 1042, Kepley, Abstract (“digitally encoded and compressed
`
`voice mail message”), 15:59-16:4 (“voice mail message is a data file”).) Based on
`
`
`
`
`- 5 -
`
`
`
`
`this teaching in Kepley and the known advantages of using a file-storage system to
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`store data as a file (e.g., to enable computer-to-computer data file transfer, ensure
`
`data integrity, and send the message sender’s name), a POSITA would have found
`
`it obvious to store digitized data as a file within Pucci’s ION system. (Zadok Decl.,
`
`¶¶ 94, 96; Kepley, Abstract, 15:59-16:4; Ex. 1013, Silberschatz, pp. 349–50).)
`
`13. Storing digitized analog data as at least one file within the local ION
`
`storage would not have impacted Pucci’s use of the ION Node because Pucci
`
`explicitly describes storing data as files, and such an understanding is consistent
`
`with a POSITA’s understanding of file systems in general. (Pucci, p. 221
`
`(“traditional file system data”); Silberschatz, p. 350 (“a file is the smallest
`
`allotment of logical secondary storage; that is, data cannot be written to secondary
`
`storage unless they are within a file”).) Storing digitized analog data as at least one
`
`file is also consistent with Pucci’s intended purpose of achieving a high degree of
`
`application portability because “[t]o provide an efficient and convenient access to
`
`the disk [or the emulated disk], the operating system imposes a file system to allow
`
`the data to be stored, located and retrieved easily.” (Silberschatz, p. 384.)
`
`14.
`
`Incorporating Kepley’s file-storage system into Pucci would not have
`
`impacted the ION’s ability to operate as an emulation device. Pucci provides
`
`explicit motivation to use a file-storage system for emulation purposes. (Pucci,
`
`pp. 220–21; Zadok Decl., ¶ 97.) For example, Pucci states that “[a] workstation
`
`
`
`
`- 6 -
`
`
`
`
`sees ION as though it were physically a local disk drive . . . the ION system
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`mimics the behavior of a conventional device.” (Pucci, p. 220.) Pucci also states
`
`that “[t]he ‘data’ contained in this pseudo-disk device can be . . . traditional file
`
`system data.” (Pucci, p. 221.) Given these disclosures, incorporating Kepley’s
`
`“digitally encoded and compressed voice mail message” into Pucci’s ION system
`
`is nothing more than including the voice mail message in Pucci’s local ION
`
`storage. Using Pucci’s local ION storage to store digitized data as a file would not
`
`have changed Pucci’s principle of operation or rendered Pucci unsatisfactory for its
`
`intended purpose. Pucci also does not teach away from using a file-storage system
`
`to store digitized data as a file because Pucci itself states that the ION Node can
`
`store traditional file system data. For these reasons and the reasons in my previous
`
`declaration, a POSITA would have found it obvious to use a file-storage system to
`
`store digitized data as a file in Pucci’s A-to-D application.
`
`B. Grounds 1 and 5: “an automatic recognition process” and
`“automatically generating and transmitting . . . an identification
`parameter.”
`I understand that Papst argues that a POSITA would not have
`
`15.
`
`combined Pucci, Kepley, and Schmidt to have “an automatic recognition process,”
`
`as recited in independent claim 1. I also understand that Papst argues that a
`
`POSITA would not have combined Pucci and Schmidt to “automatically
`
`generat[e] and transmit[] . . . an identification parameter,” as recited in
`
`
`
`
`- 7 -
`
`
`
`
`independent claim 43. Specifically, I understand that Papst argues that Pucci and
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`Schmidt cannot be combined because “any automatic identification process (as
`
`discussed in Schmidt) would cause the ION Workstation [in Pucci] to attempt to
`
`access and/or reconfigure the ION Node in an unpredictable and potentially
`
`destructive manner.” (POR, p. 19.) I disagree.
`
`16. The ION Node in Pucci uses the Small Computer Systems Interface
`
`(SCSI) to connect to the ION Workstation. (Pucci, p. 217 (“The ION Data Engine .
`
`. . is a back-end system, connecting to a workstation via the Small Computer
`
`Systems Interface (SCSI) disk interface”).) As Pucci explains and as a POSITA
`
`would have understood, “SCSI . . . is a protocol definition for connecting
`
`processors, disk drives, printers and other devices.” (Pucci, p. 238.) A person
`
`looking to implement Pucci’s system based on the SCSI protocol would have
`
`looked to the prior art and/or well-known knowledge for possible techniques for
`
`how to implement Pucci’s ION. That person would have arrived at Schmidt—a
`
`textbook on SCSI, which supplements Pucci with explicit disclosures of the SCSI
`
`protocol.
`
`17. As I explained in my previous declaration, SCSI is a standardized
`
`interface that uses standardized commands. (Zadok Decl., ¶¶ 37, 45, 46, 49, 101,
`
`120, 136.) One of the standardized commands is the INQUIRY command. The
`
`INQUIRY command is a command used to identify useful information. (Schmidt,
`
`
`
`
`- 8 -
`
`
`
`
`p. 138.) A host does not simply start reading, writing, and configuring a peripheral
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`device without first identifying the device. In SCSI, a host sends an INQUIRY
`
`command to a peripheral, and the peripheral will respond to the INQUIRY
`
`command by returning a device-class identifier within an INQUIRY response (e.g.,
`
`the code “00h” to signify the disk drive class). (Schmidt, pp. 132, 138–39
`
`(displaying INQUIRY data format and identifying it as a [M]andatory command).)
`
`Mr. Gafford’s confirmed that a POSITA would have understood that the
`
`INQUIRY command is part of the SCSI standard. (Ex. 1055, Gafford Depn. I,
`
`19:21-20:9 (“Q. So this portion of the ’399 sentence – patent says it issues, ‘an
`
`instruction known by those skilled in the art as the inquiry instruction.’ So I’m
`
`trying to understand why that was a type of instruction that would’ve been known
`
`by those skilled in the art at the time of the ’399 patent? A. It’s part of the SCSI
`
`spec, and it’s described in the SCSI spec as the way in which a host can determine
`
`what type of device it’s talking to over the multipurpose SCSI interface.”).)1
`
`18. Mr. Gafford testified that “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.” (Gafford Decl., ¶ 57.) To
`
`1 Mr. Gafford’s testimony about the specification of the ’399 patent also
`
`applies to the ’437 patent.
`
`
`
`
`- 9 -
`
`
`
`
`support this position, Mr. Gafford testified that Pucci only implements certain
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`aspects of the SCSI protocol but not all of it. (Gafford Depn. II, 66:10-16 (“But
`
`what’s – what aspects are you saying that Pucci would be limited to in the SCSI
`
`protocol? A. I didn’t say it was limited to anything. I said it uses some aspects of it.
`
`We don’t know which aspects because they haven’t told us yet”).) In my opinion,
`
`this position is without merit because the position ignores: (1) the disclosures in
`
`Pucci that would have informed a POSITA exactly how Pucci utilizes the SCSI
`
`standard protocol; (2) Pucci’s citation to the ANSI 3.131 SCSI standard; and (3) a
`
`POSITA’s understanding of the standard SCSI protocol, including the mandatory
`
`commands such as INQUIRY.
`
`19. Responding to the INQUIRY command by emulating a hard disk
`
`would not reconfigure the ION Node in an unpredictable and destructive manner.
`
`Indeed, the ION Node in Pucci is intended to do just that—emulate a conventional
`
`device. Pucci explains that “[s]oftware running within the ION system mimics the
`
`behavior of a conventional device.” (Pucci, p. 220, (emphasis added).) This
`
`concept of mimicry, or emulation, was well known to a POSITA at the time of the
`
`’437 patent. As I explained in my previous declaration, emulation allowed a host
`
`computer to interact with a peripheral device using existing drivers (Zadok Decl., ¶
`
`36), which is consistent with Pucci’s goal of “providing the workstation with a
`
`peripheral that it knows how to deal with.” (Pucci, p. 220.) A POSITA would have
`
`
`
`
`- 10 -
`
`
`
`
`understood that this mimicry of a “conventional device” could be accomplished by
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`“exactly simulat[ing] the characteristics and responses of the normal computer
`
`hardware which it replaces.” (Zadok Decl., ¶ 36 (citing Maclean (Ex. 1010), 4:49-
`
`53), (emphasis added).)
`
`20. Pucci also discloses that the ION system mimics a conventional SCSI
`
`disk drive. (Pucci, p. 220 (“Each workstation views its ION connection as though it
`
`were a large conventional disk drive”), p. 220 (“A workstation sees ION as though
`
`it were physically a local disk drive (an ION drive) with a data capacity of 2
`
`terabytes (the SCSI limit).”) Because the workstation views the ION system as a
`
`SCSI disk drive (i.e., mimics a SCSI device), a POSITA would have reasonably
`
`understood that the ION system provides the appropriate SCSI signaling to the
`
`workstation to accomplish this subterfuge. Accordingly, a POSITA would have
`
`understood that the ION system “mimics the behavior of a conventional device” by
`
`simulating the characteristics and responses of the normal computer hardware and
`
`using the full capabilities of the SCSI standard, including the SCSI automatic
`
`recognition process taught in Schmidt.
`
`21. Further, Pucci provides no indication that the ION Node would be
`
`unable to return the requested inquiry data per the conventional procedures of the
`
`INQUIRY command. (Schmidt, p. 138.) Indeed, while Pucci does not specifically
`
`disclose the use of an INQUIRY command, Pucci’s description of the SCSI
`
`
`
`
`- 11 -
`
`
`
`
`implementation is consistent with Schmidt and the SCSI standard. Pucci explains
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`that “an initiator (usually the host processor) starts an operation by arbitrating for
`
`the SCSI bus and selecting a target device (such as a disk drive) to respond to its
`
`request.” (Pucci, p. 239, (emphasis added).)
`
`22. Mr. Gafford testified that “it is not mandatory for a SCSI target such
`
`as the ION to respond with inquiry data or with particular inquiry data” but can
`
`instead return a “CHECK CONDITION message.”2 (Gafford Decl., ¶ 58.) Mr.
`
`Gafford’s explanation of the CHECK CONDITION status is incomplete and
`
`misleading because it leaves out important details and makes assumptions counter
`
`to Pucci’s disclosures.
`
`23. Schmidt states that “INQUIRY will only return CHECK
`
`CONDITION if the target is unable to return the requested inquiry data.”
`
`(Schmidt, p. 138, (emphasis added).) In other words, a response to an INQUIRY
`
`command is required—either INQUIRY data or a CHECK CONDITION status.
`
`(Schmidt, p. 88 (describing that, in response to setting to zero the EVPD bit in the
`
`INQUIRY command, “the target shall return the standard INQUIRY data” and
`
`2
`CHECK CONDITION is a status, not a message. (Compare Schmidt,
`
`p. 137 (listing status bytes), with Schmidt, p. 119 (listing SCSI message codes).)
`
`
`
`
`
`
`- 12 -
`
`
`
`
`when the bit is set to 1, then a CHECK CONDITION status is returned) (emphasis
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`added).) In normal operating conditions, the target peripheral device will return the
`
`requested INQUIRY data.
`
`24. A CHECK CONDITION status is a type of error condition and is only
`
`returned in response to an INQUIRY “if the target is unable to return the requested
`
`inquiry data.” (Schmidt, pp. 88, 138.) In the limited circumstances when a CHECK
`
`CONDITION status is returned, the host will follow up with a REQUEST SENSE
`
`command. (Schmidt, pp. 137, 142-43.) The REQUEST SENSE command is used
`
`by the initiator “to determine just exactly what has occurred.” (Schmidt, p. 133.) In
`
`response to the REQUEST SENSE command, the target would provide “in more
`
`detail the nature of the problem.” (Schmidt, p. 138.)
`
`25. Mr. Gafford’s comment that “a target device may be configured to
`
`response with a simple CHECK CONDITION message” (Gafford Decl., ¶ 58,
`
`(emphasis added)) is therefore misleading because devices that implement the
`
`SCSI standard are configured to provide a CHECK CONDITION status. Devices
`
`that implement the SCSI standard are configured to provide the CHECK
`
`CONDITION status when appropriate (i.e., when an error happens). (Schmidt, p.
`
`137 (“All Commands end with a status phase” and Table 12.9 provides one
`
`example of a status is CHECK CONDITION).) And devices that implement the
`
`
`
`
`- 13 -
`
`
`
`
`SCSI standard are configured to follow up the receipt of a CHECK CONDITION
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`status with a REQUEST SENSE command to identify the nature of the problem.
`
`26. Nothing in Pucci suggests that the system deviated from the standard
`
`SCSI protocol. Rather, a POSITA would have understood that the system would
`
`have closely followed the SCSI standard to benefit from that protocol’s
`
`standardization and existing software drivers. (Pucci, pp. 219–20 (“The low level
`
`connection between these components is the . . . (SCSI) disk interface, ANSI
`
`X3.131 . . . . ION using its local disk system, which is a stable, well-defined
`
`interface, there is no need to change vendor supplied host system software.”), pp.
`
`238–40 (an appendix providing SCSI details).)
`
`27. Moreover, a POSITA would have understood that the ION Node
`
`would not simply return a CHECK CONDITION status to the host workstation.
`
`“The command REQUEST SENSE is always used in response to a CHECK
`
`CONDITION in order to read the sense data.” (Schmidt, p. 142.) Sense data is an
`
`important part of this process because it “gives information concerning the reason
`
`why the preceding command ended abnormally.” (Schmidt, p. 142.) Sense data
`
`includes a sense key. (Schmidt, p. 143.) Examples of sense keys include error
`
`messages such as NOT READY (the addressed LUN is not ready to be accessed),
`
`MEDIUM ERROR (the target detected a data error on the medium), and DATA
`
`PROTECT (access to the data is blocked). (Schmidt, p. 144 (Table 12.18).)
`
`
`
`
`- 14 -
`
`
`
`
`Because sense data is returned in response to a CHECK CONDITION status,
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`CHECK CONDITION provides diagnostic information when something has gone
`
`wrong. In the context of an INQUIRY command and contrary to Mr. Gafford’s
`
`allegation, CHECK CONDITION is not a message but an indication to the target
`
`device that the INQUIRY command was not properly executed. When executed
`
`properly by the ION system, an INQUIRY command from the host computer
`
`would result in the ION Node returning an indication that it is a conventional SCSI
`
`disk drive using the appropriate SCSI signaling.
`
`28. Papst argues that the INQUIRY command would somehow
`
`reconfigure the ION Node in an unpredictable and destructive manner. (POR, p.
`
`22.) I disagree for reasons I have discussed above with respect to how to achieve
`
`Pucci’s goal of having the ION Node mimicking a conventional disk drive. This
`
`position is also directly contradicted by Pucci’s statement that “[s]oftware running
`
`within the ION system mimics the behavior of a conventional device.” (Pucci, p.
`
`220 (emphasis added).) A POSITA would understand that this software would
`
`respond to the workstation SCSI INQUIRY command in a manner that would
`
`“provid[e] the workstation with a peripheral that it knows how to deal with.”
`
`(Pucci, p. 220.)
`
`
`
`
`- 15 -
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`C. Grounds 1 and 5: “without requiring any user-loaded file transfer
`enabling software” and “without requiring the user to load the
`device driver.”
`I understand that Papst argues that the combination of Pucci, Kepley,
`
`29.
`
`and Schmidt does not teach the limitation of “without requiring any user-loaded
`
`file transfer enabling software,” as recited in independent claim 1. I also
`
`understand that Papst argues that the combination of Pucci and Schmidt does not
`
`teach the limitation of “without requiring the user to load the device driver,” as
`
`recited in independent claim 43. Specifically, Papst contends that “installation of
`
`the controlling program/application on the ION Workstation is required for the
`
`ION Workstation to communicate with the ION Data Engine so it knows which
`
`block addresses to access, i.e., ‘where’ to read from the ION Node for the actions
`
`to access the information from peripheral devices attached to the ION Node.”
`
`(POR, p. 28.) Mr. Gafford also testifies that “the ION Workstation still requires
`
`installed software for the transfer of data to occur.” (Gafford Decl., ¶ 63.) I
`
`disagree with Papst and Mr. Gafford on these points.
`
`30.
`
`I refer back to Pucci’s statement that “[s]oftware running within the
`
`ION system mimics the behavior of a conventional device.” (Pucci, p. 220.) A
`
`POSITA would have understood that the workstation would communicate with the
`
`ION Node as if it were a conventional device, such as a conventional disk drive.
`
`This understanding is consistent with Pucci’s stated goal of “providing the
`
`
`
`
`- 16 -
`
`
`
`
`workstation with a peripheral that it knows how to deal with.” (Pucci, p. 220.) This
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`understanding is also consistent with Pucci’s stated goal of having a system where
`
`“there is no need to change vendor supplied host system software.” (Pucci, pp.
`
`219–20.)
`
`31.
`
`In the context of an analog-to-digital conversion system, Pucci
`
`acknowledges the benefits of using a customary device driver. “Additionally, since
`
`the hardware dependent A-to-D code remains within ION, no driver changes to
`
`the host’s operating system are necessary upon workstation upgrade.” (Pucci, p.
`
`231 (emphasis added).) Although not directly related to its SCSI implementation,
`
`this statement demonstrates Pucci’s understanding of the benefits of including the
`
`software within the peripheral device itself. With respect to Pucci’s ION Node
`
`including software for mimicking the behavior of a conventional device, a
`
`POSITA would have understood that driver changes to the host computer would be
`
`unnecessary for the SCSI implementation to know where to read and write data.
`
`(Pucci, pp. 219–20.)
`
`32.
`
`I also understand that Papst argues that Pucci necessarily has loaded
`
`software on the workstation because the ION Workstation needs to know “where”
`
`(e.g., which data blocks) to read from the ION Node. (POR, p. 28.) This argument
`
`ignores Pucci’s implementation of the standard SCSI protocol, Pucci’s stated goal
`
`of having the ION Node mimic a conventional disk drive, and Schmidt’s
`
`
`
`
`- 17 -
`
`
`
`
`disclosures of the conventional SCSI signals that allow for a host to communicate
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`with a peripheral device.
`
`33. This understanding of Pucci’s “software” within the ION system is
`
`consistent with Mr. Gafford’s explanation that user-loaded software was
`
`unnecessary for the SCSI embodiment disclosed in the ’437 patent. Mr. Gafford
`
`explains that the booting routine was performed through existing SCSI drivers in
`
`the operating system. (Gafford Depn. II, 29:24-30:5 (“Q. And then for Windows
`
`and UNIX, the operating system, it would rely on BIOS routines for the SCSI
`
`driver? A. Yeah. No need for the user to do anything. They would just notice that
`
`the device was there and reconfigure it to make it usable”).) And in the context of
`
`DOS, this routine also did not need user-loaded software because the routine ran
`
`on the existing BIOS. (Gafford Depn. II, 29:5-29:18 (“So for the DOS operating
`
`system, it would rely on BIOS routines for the SCSI driver? A. Sure.”), 21:15-
`
`22:10 (“A. Well, a SCSI type of interface embodies what’s described here as a
`
`multipurpose interface, and the software that runs the SCSI interface would either
`
`be a BIOS resident or OS resident driver for – made for use with that interface. Q.
`
`And so it would be SCSI driver either resident in the BIOS or the operating
`
`system? A. Yes”).) This software would treat the peripheral device as a hard disk,
`
`and once the software identified the peripheral device as a hard disk, the software
`
`would gather the hard disk parameters, such as size and maximum block size.
`
`
`
`
`- 18 -
`
`
`
`
`(Gafford Depn. I, 18:4-15 (“A. Typically, in the world of SCSI software, it would
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`inquire as to specific parameters of the device to try to understand what capabilities
`
`– let’s see. Actually, given that these were general purpose SCSI hard disk
`
`drivers…the software would treat the attached device in Figure 1 [of the ’437
`
`Patent] as a hard disk, and once it knows it’s hard disk, it would gather the hard
`
`disk parameters, such as size, maximum block size”).) This implementation is
`
`similar to what is described in Pucci and is consistent with a POSITA’s
`
`understanding of the SCSI protocol.
`
`
`
`
`
`
`
`
`- 19 -
`
`
`
`
`III. Conclusion
`In signing this declaration, I recognize that the declaration will be
`34.
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office. I recognize that I may be subject to
`
`cross-examination in the case and that cross-examination will take place within the
`
`United States. If cross-examination is required, I will appear for cross-examination
`
`within the United States during the allotted time.
`
`35.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Executed on the 23rd day of October, 2017.
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________________________
`Erez Zadok
`
`
`
`
`- 20 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
