`
`
`
`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
`___________________
`
`PETITIONER’S REPLY TO THE PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Introduction ........................................................................................................ 1
`Claim Construction ............................................................................................ 2
`The Phillips claim construction standard applies. .................................. 2
`A.
`“multi-purpose interface” and “customary device driver” ..................... 2
`B.
`III. Response to POs Arguments ............................................................................. 4
`The applied combination teaches or suggests that “the processed
`A.
`and digitized analog data is stored in the data storage memory
`as at least one file of digitized analog data” (Ground 1). ....................... 5
`The applied combination teaches or suggests that “an automatic
`recognition process” (Ground 1) and “automatically generating
`and transmitting . . . an identification parameter” (Ground 5). ...........11
`The applied combination teaches or suggests that “without
`requiring any user-loaded file transfer enabling software”
`(Ground 1) and “without requiring the user to load the device
`driver” (Ground 5).................................................................................18
`IV. PO does not raise arguments specific to the dependent claims. ...................... 24
`V.
`PO’s belief of unconstitutionality is not a request for relief. .......................... 24
`VI. Conclusion ....................................................................................................... 24
`
`
`
`
`B.
`
`C.
`
`
`
`
`
`- i -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`TABLE OF AUTHORITIES
`
`
`Cases:
`
`In re CBS-Sys. Int’l,
`832 F.3d 1335 (Fed. Cir. 2016).................................................................................. 2
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004).................................................................................. 9
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012).................................................................................. 6
`
`O2 Micro Intern. v. Beyond,
`521 F.3d 1351, 1362 (Fed. Cir. 2008) ....................................................................... 4
`
`PC Connector Solutions LLC v. SmartDisk Corp.,
`406 F.3d 1359 (Fed. Cir. 2005).................................................................................. 3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005).........................................................................passim
`
`
`- ii -
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`Exhibit
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`
`1013
`1014
`
`1015-1017
`1018
`1019
`1020
`
`1021-1023
`1024
`1025-1029
`1030
`
`1031
`
`1032-1036
`1037
`1038
`1039
`1040
`
`Description
`U.S. Patent 9,189,437 to Tasler
`File History Excerpts for U.S. Patent 9,189,437
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 9,189,437
`Curriculum Vitae of Dr. Erez Zadok
`Intentionally left blank
`Intentionally left blank
`“The SCSI Bus and IDE Interface Protocols, Applications and
`Programming,” Schmidt, Friedhelm, 1995
`Intentionally left blank
`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.
`Intentionally left blank
`IEEE Dictionary
`Intentionally left blank
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`Intentionally left blank
`Declaration of Scott Bennett
`Intentionally left blank
`Misc. Action No. 07-493 (RMC), MDL No. 1880, Order Regarding
`Claims Construction
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30,
`1994 (“PNP SCSI”)
`Intentionally left blank
`U.S. Patent No. 6,111,831 to Alon et al.
`U.S. Patent No. 4,856,871 to Van Sant
`U.S. Patent No. 5,515,237 to Ogami et al.
`U.S. Patent No. 5,590,375 to Sangveraphunsiri et al.
`
`- iii -
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`Description
`Pucci, M., “Configurable Data Manipulation in an Attached
`Multiprocessor, “1991
`U.S. Patent No. 4,790,003 to Kepley et al., titled “Message Service
`System Network”
`U.S. Patent No. 5,081,454 to Campbell, Jr. et al., titled “Automatic
`A/D Converter Operation Using Programmable Sample Time”
`U.S. Patent No. 5,353,374 to Wilson et al., titled “Low Bit Rate
`Voice Transmission for Use in a Noisy Environment”
`U.S. Patent No. 4,065,644 to Shinosky
`
`Intentionally left blank
`’144 German Application (DE 197 08 755)
`’144 German Application Translated (DE 197 08 755)
`Intentionally left blank
`USENIX Declaration
`Intentionally left blank
`Declaration of Dr. Erez Zadok in Support of Reply (“Zadok II”)
`October 10, 2017 Deposition Transcript of Thomas Gafford
`(“Gafford I”)
`October 11, 2017 Deposition Transcript of Thomas Gafford
`(“Gafford II”)
`
`
`
`Exhibit
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046-1048
`1049
`1050
`1051
`1052
`1053
`1054
`1055
`
`1056
`
`
`
`
`- iv -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`I.
`
`Introduction
`
`Choosing not to cross-examine Petitioner’s expert, Patent Owner (PO) filed a
`
`response presenting three unsupported, conclusory arguments that are legally
`
`insufficient and technically incorrect. Each of Petitioner’s rebuttal arguments
`
`ignores the actual combination set forth in the Petition; instead dissecting the
`
`combination and addressing only the primary reference, Pucci, in isolation and out
`
`of context. But PO goes further by not only mischaracterizing the teachings of Pucci
`
`in its rebuttal arguments but also taking positions directly contrary to Pucci’s
`
`express disclosures. For example, despite Pucci explicitly teaching the use of the
`
`SCSI standard, PO argues that Pucci could not be combined with teachings of
`
`Schmidt which describes the SCSI standard. PO continues its pattern of obfuscation,
`
`arguing that a person having ordinary skill in the art (POSITA) would not have
`
`known how to store data as files in Pucci’s system, despite its own expert admitting
`
`that use of files to store data was well-known and Pucci explicitly stating that the
`
`data stored in its device can be “traditional file system data.”
`
`In this Reply, Petitioner exposes the technical flaws in PO’s analysis and
`
`explains why the art supports a finding of obviousness under the correct
`
`understanding of the technology at issue in this case.
`
`
`
`- 1 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`II. Claim Construction
`Before replying to the arguments in the POR, Petitioner first presents
`
`arguments and evidence for the appropriate construction of disputed claim terms per
`
`the Board’s instruction in the Institution Decision. (See Inst. Dec., Paper 10, p. 13
`
`n.5.)
`
`A. The Phillips claim construction standard applies.
`The parties agree—the ’437 patent expires on March 3, 2018. (See POR, , p. 8
`
`(“the ‘437 Patent is set to expire on March 3, 2018”).) Because the ’437 patent
`
`expires before the statutory deadline to issue a Final Written Decision (i.e., April 27,
`
`2018), the Phillips claim construction standard applies in this proceeding. See In re
`
`CBS-Sys. Int’l, 832 F.3d 1335, 1342 (Fed. Cir. 2016) (“once a patent expires, the
`
`PTO should apply the Phillips standard for claim construction”). However, because
`
`the prosecution history does not contain any disclaimers for the claim terms at issue
`
`in this inter partes review, there is no meaningful difference between the claim
`
`construction standard in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and
`
`the broadest reasonable interpretation standard.
`
`“multi-purpose interface” and “customary device driver”
`B.
`The Board’s constructions in the Institution Decision for “multi-purpose
`
`interface” and “customary device driver” should carry over to the Final Written
`
`Decision. In the Institution Decision, the Board construed “multi-purpose interface”
`
`- 2 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`to encompass a “SCSI Interface.” (Inst. Dec., p. 15 (“On this record and for
`
`purposes of the [Institution] Decision, we find it sufficient to construe a ‘multi-
`
`purpose interface’ to encompass a ‘SCSI interface.’”); see also Ex. 1054, Gafford
`
`Depn. I, 17:6-9 (“Q. All right. So would you consider a SCSI interface to be a
`
`multipurpose interface? A. Yes.”).) The Board also construed “customary device
`
`driver” to encompass “a driver for a device normally present in most commercially
`
`available host devices (e.g., a hard disk driver or a SCSI driver).” (Inst. Dec., p. 17.)
`
`PO did not dispute these constructions. (POR, pp. 8-9.)
`
`With respect to the term “customary device driver,” the Board determined
`
`that it was unnecessary to specify that the customary device driver must be
`
`customary “at the time of the invention.” (Inst. Dec., p. 17.) But the record is now
`
`sufficiently developed to resolve this dispute between the parties. Under Phillips,
`
`“the ordinary and customary meaning of a claim term is the meaning that the term
`
`would have to a person of ordinary skill in the art in question at the time of the
`
`invention, i.e., as of the effective filing date of the patent application.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (emphasis added); see
`
`also PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1359 (Fed.
`
`Cir. 2005) (a claim term “must be interpreted as of [the] effective filing date”).
`
`Consistent with the Phillips claim construction standard and the Federal
`
`Circuit’s finding in In re Papst Licensing Digital Camera Patent Litig., the District
`
`- 3 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`Court construed “customary” as including a limitation of “normally part of
`
`commercially available computer systems at the time of the invention.” (Ex. 2006,
`
`Claim Construction Order, pp. 27-28 (emphasis added)); see also In re Papst
`
`Licensing Digital Camera Patent Litig., 778 F.3d 1255, 1269–70 (Fed. Cir. 2015).
`
`For consistency with the District Court Construction Order under the Phillips
`
`standard, the Board should construe “customary device driver” as a “driver for a
`
`device normally part of commercially available computer systems at the time of the
`
`invention.” (See Ex. 2006, p. 28.)1 Cf. O2 Micro Intern. v. Beyond, 521 F.3d 1351,
`
`1362 (Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding
`
`the scope of a claim term, it is the court’s duty to resolve it.”).
`
`III. Response to POs Arguments
`The PO Response presents three primary arguments. Petitioner replies to each
`
`argument in turn and explains why PO’s arguments rest on fundamental
`
`misinterpretations of Pucci’s teachings and the SCSI Standard.
`
`
`1 This construction should not change the Board’s finding that the customary
`
`device driver encompasses a hard disk driver or a SCSI driver. As Dr. Zadok
`
`explains, hard disk and SCSI drivers were both customary as of the earliest possible
`
`priority date for the ’437 patent. (Zadok Decl., ¶129.)
`
`- 4 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`A. The applied combination teaches or suggests that “the processed
`and digitized analog data is stored in the data storage memory as at
`least one file of digitized analog data” (Ground 1).
`PO argues that Pucci fails to disclose 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. (POR, pp. 15-16.) In the first instance, this
`
`argument is misplaced because the Petition relies on the combination of Pucci and
`
`Kepley—not Pucci alone—to disclose this claim limitation. (See Petition, pp. 11-12
`
`(stating that “Pucci does not explicitly disclose that the converted digital data is
`
`stored as a file on the ION node” and relying on Kepley for this claim limitation);
`
`p. 22 (“Pucci does not explicitly disclose the storage format for its digital voice
`
`data.”).)
`
`PO’s arguments against the combination of Pucci and Kepley are equally
`
`flawed. PO does not dispute that Kepley teaches that “the processed and digitized
`
`analog data is stored in the data storage memory as at least one file of digitized
`
`analog data.” (See POR, pp. 16-17.) PO instead alleges that a POSITA would not
`
`have combined Pucci and Kepley because: (1) the combination would have changed
`
`Pucci’s principle of operation; (2) the combination would have rendered Pucci
`
`unsatisfactory for its intended purpose; and (3) Pucci teaches away from storing
`
`digitized analog data as a file. (POR, pp. 13, 16-17, 33-35.) For the reasons that
`
`follow, a POSITA would have known how to implement a file-storage system in
`
`- 5 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`Pucci while maintaining Pucci’s principle of operation and intended purpose. A
`
`POSITA would have also been motivated to implement a file-storage system in
`
`Pucci for the reasons established in the Petition—reasons that PO neither addressed
`
`nor refuted in its PO Response. (Compare Petition, pp. 23-24, with POR, pp. 16-17.)
`
`First, PO incorrectly concludes that combining Pucci and Kepley would
`
`“significantly impact Pucci’s principle of operation.” (See POR, p. 17.) As an initial
`
`matter, the PO Response does not define Pucci’s principle of operation and therefore
`
`lacks the foundation for this conclusion. See In re Mouttet, 686 F.3d 1322, 1332
`
`(Fed. Cir. 2012) (broadly defining the principle of operation before determining
`
`whether a combination would change the principle of operation). Irrespective of this
`
`flaw, the conclusion is technically incorrect. Pucci uses a multiprocessor tasking
`
`system (named ION) and a Small Computer Systems Interface (SCSI) to emulate a
`
`peripheral device that a computer workstation (i.e., the host) knows how to deal
`
`with. (See Petition, pp. 1-2 (citing Ex. 1041, Pucci, pp. 217, 220); Ex. 1003, Zadok
`
`Decl., ¶¶130, 140-41, 199, 209; Gafford Depn., II, 60:2-61:11 (admitting that use of
`
`a file system was well known and understood).) Storing digitized analog data as at
`
`least one file in a file-storage system would not change Pucci’s use of ION Node
`
`and SCSI to operate as an emulation device. (Zadok Decl. II, ¶¶9-14.) To the
`
`contrary, Pucci provides explicit motivation to use a file-storage system for
`
`emulation purposes. (See Pucci, pp. 220-21; Petition, pp. 23-24; Zadok Decl., ¶97;
`
`- 6 -
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`see also Gafford Depn. II, 42:17-8, 57:14-22 (admitting that use of a file system was
`
`
`
`well known and understood).) Pucci states that its ION Node mimics the behavior of
`
`a conventional device, and “[t]he ‘data’ contained in this pseudo-disk device can be
`
`random read/write data, traditional file system data, or more complex objects for a
`
`variety of applications managed by tasks running within the ION system.” (Pucci,
`
`pp. 220-21 (emphasis added).) Using a well-known, well understood and
`
`“traditional” file system to store the digitized analog data as a file is not contrary to
`
`Pucci’s principle of operation but entirely consistent with the teachings in the
`
`reference and the understanding of a POSITA as of the earliest possible priority date
`
`of the ’437 patent. (See Zadok Decl. II, ¶¶9-14.)
`
`Second, combining Pucci and Kepley would not have prevented Pucci from
`
`achieving its intended purpose even under the PO’s crimped definition. (Contra
`
`POR, p. 17.) PO alleges that Pucci’s intended purpose is “permitting data flow into
`
`the host.” (POR, p. 17.) However, notwithstanding this generic stated purpose, PO
`
`applies extremely narrow constraints—namely that the alleged “data flow into the
`
`host” is limited to writing into the host using a first in/first out (FIFO) approach.
`
`(See POR, pp. 15-16.) Pucci’s data transfer is not so limited. (Zadok Decl. II, ¶¶9-
`
`10.) Moreover, storing data as a file (e.g., a collection of data blocks) would not be
`
`contrary even under PO’s overly narrow (and incorrect) interpretation. A POSITA
`
`would have understood that any system, including Pucci’s ION Node, could store
`
`- 7 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`the file as data blocks in its buffer and transfer the data blocks to the host in a
`
`manner similar to a FIFO transfer, as confirmed by PO’s expert. (See Gafford Depn.
`
`II, 63:3-9 (“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.”).) Indeed, this
`
`implementation would be similar to the “real-time input files” embodiment
`
`described in the ’437 patent and discussed by PO’s expert, Mr. Gafford, at
`
`deposition. (See Ex. 1001, ’437 patent, 6:6-35; Gafford Depn. II, 53:22-12
`
`(confirming that an implementation of the interface device’s file system uses real-
`
`time input files).) The ’437 patent “real-time input files” embodiment buffers data
`
`blocks and transfers them in real-time. (’437 patent, 6:5-35.)
`
`Moreover, PO misstates Pucci’s intended purpose. As Pucci sets forth on its
`
`first page, the intended purpose of ION is to provide disk read and write accesses,
`
`while achieving “a high degree of application portability.” (Pucci, p. 217; Zadok
`
`Decl. II, ¶13.) Throughout discussions of its numerous applications, Pucci reiterates
`
`that ION remains portable across workstation changes, operating system releases,
`
`and complete operating system changes. (Pucci, pp. 219, 221, 223, 230.) Storing
`
`data as a file is not contrary to the actual intended purpose of providing disk read
`
`and write accesses, while achieving a high degree of application portability. (Zadok
`
`Decl., II, ¶¶13-14.) Indeed, storing data as a file provides read and write access
`
`- 8 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`while achieving portability by enabling file transfer between the ION-enabled voice
`
`messaging service system and other messaging service systems. (See Zadok Decl.,
`
`¶¶96-97; Zadok Decl., II, ¶13.) For at least these reasons, the combination is not
`
`contrary to Pucci’s intended purpose.
`
`Third, contrary to PO’s contentions, Pucci does not teach away from
`
`accessing digitized analog data in the form of files. (Contra POR, p. 13.)2 “[T]he
`
`prior art’s mere disclosure of more than one alternative does not constitute a
`
`teaching away from any of these alternatives because such disclosure does not
`
`criticize, discredit, or otherwise discourage the solution claimed. . . .” In re Fulton,
`
`391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Pucci does not criticize, discredit, or
`
`otherwise discourage the use of a file-storage system. (Zadok Decl., II, ¶¶9-10.)
`
`Pucci instead expressly encourages the use of traditional file-storage systems: “[t]he
`
`‘data’ contained in this pseudo-disk device can be random read/write data,
`
`traditional file system data, or more complex objects for a variety of applications
`
`managed by tasks running within the ION system.” (See Pucci, pp. 220-21
`
`
`2 The Board should disregard Mr. Gafford’s opinion that Pucci teaches away
`
`from storage of data as files because Mr. Gafford’s opinion is based on an incorrect
`
`understanding of the legal standard. (See Gafford Decl., ¶ 30 (conflating teaching
`
`away and other bases for nonobviousness); Gafford Depn. II, 99:10-21.)
`
`- 9 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`(emphasis added); see also Petition, p. 22; Zadok Decl., ¶94; Gafford Depn. II,
`
`80:12-20 (“[W]here would traditional file system data be stored in a system such as
`
`Pucci? A. Well, Pucci has both hard drive and solid-state volatile buffer memory
`
`and you could store it either place. If you cared about not losing it, you would store
`
`it on the local hard drive.”).) For the analog-to-digital conversion application, Pucci
`
`describes how the system extracts raw data from a converter and utilizes storage
`
`(e.g., a buffer). (Pucci, pp. 231-32.) The analog-to-digital conversion application
`
`then retrieves the data from five channels by reading the data block address of the
`
`desired channel until all buffered data has been obtained. (Pucci, pp. 231-32.) The
`
`fact that Pucci’s analog-to-digital conversion application is silent on whether the
`
`data can be stored as a file is not a teaching away but rather indicative of Pucci’s
`
`compatibility with alternative storage systems—one that uses a buffer to read five
`
`channels of raw converted data and others that use a traditional file-storage system.
`
`Moreover, as explained above, the ’437 patent itself discloses an embodiment that
`
`uses buffer-like structures, referred to as real-time files, for data transfer. (See ’437
`
`patent, 6:6-35; Gafford Depn. II, 53:22-12 (confirming that an implementation of
`
`the interface device’s file system uses real-time input files).)
`
`Pucci does not teach away from storing digitized analog data in a file system
`
`as a file, and a POSITA would have known how to store digitized analog data as a
`
`file without changing Pucci’s principle of operation or making Pucci unsatisfactory
`
`- 10 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`for its intended purpose. (Zadok Decl. II, ¶14.) The Petition and supporting
`
`declaration provides a rationale for combining Kepley’s voice mail file teachings
`
`with the teachings of Pucci.” (See Petition, pp. 11-12, 23-24; Zadok Decl., ¶¶ 95–
`
`97.) Pucci in view of Kepley, further in view of Schmidt, teaches this claim
`
`limitation. (See also Inst. Dec., p. 25.)
`
`PO further manufactures an argument against a combination of techniques in
`
`Kepley and Pucci that Petitioner never presented or even suggested. PO argues that
`
`a POSITA would not have combined Pucci and Kepley because Kepley uses a
`
`separate database processor for storing digitized voice files. (POR, pp. 17, 35.) But
`
`Petitioner does not rely on Kepley’s separate processor, nor does Pucci need a
`
`separate processor to store data as a file. Therefore, a major redesign to
`
`accommodate a separate processor, as PO suggests, is unnecessary in Petitioner’s
`
`applied combination. (Zadok Decl. II. ¶¶9-11.) Specifically, PO argues that
`
`“[i]mplementing such a processor on the ION Node would require a major redesign
`
`of the ION Node embedded software . . . .” (POR, pp. 17-18.)
`
`B.
`
`The applied combination teaches or suggests that “an automatic
`recognition process” (Ground 1) and “automatically generating and
`transmitting . . . an identification parameter” (Ground 5).
`PO argues that Pucci fails to disclose “an automatic recognition process” as
`
`recited in independent claim 1 and “automatically generating and transmitting . . .
`
`an identification parameter” as recited in independent claim 43. (POR, pp. 19-21.)
`
`- 11 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`This argument is again misplaced because the Petition relies on Schmidt in
`
`combination with Pucci—not Pucci alone—to disclose this claim limitation. (See
`
`Petition, p. 26.) The Petition acknowledges that “[a]lthough Pucci teaches that a
`
`SCSI ‘host controller’ resides within the host system (Pucci, pp. 238-239), Pucci
`
`does not explicitly disclose how the SCSI bus connects to a workstation.” (Petition,
`
`p. 26.) The Petition then relies on the teachings of Schmidt—a textbook on the
`
`standardized SCSI Bus and IDS Interface—to fill in the details not provided by
`
`Pucci. (Petition, pp. 26-27.)
`
`Neither PO nor Mr. Gafford dispute that Schmidt teaches an automatic
`
`recognition process. (See POR, pp. 21-24.) PO instead alleges that “any such
`
`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.) But PO provides
`
`no evidence or further explanation to support this speculation. PO’s failure is
`
`understandable because Pucci’s ION Node is intended to operate using the full
`
`capabilities of the SCSI standard, including SCSI’s automatic recognition process.
`
`(See Zadok Decl. II, ¶¶16-17.)
`
`Grounds 1 and 5 both rely on Pucci—a system that uses SCSI—and
`
`Schmidt—a textbook describing SCSI. (Petition, pp. 10-12, 60-66.) As Dr. Zadok
`
`explained in his original declaration and reiterates in his reply declaration, SCSI is a
`
`- 12 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`standardized interface that utilizes standardized commands. (Zadok Decl., ¶¶37, 45,
`
`46, 49, 101, 120, 136; Zadok Decl. II, ¶¶16-17.) And PO’s expert, Mr. Gafford,
`
`agrees. (Gafford Depn. I, 18:21-20:9 (explaining that the INQUIRY command was
`
`known by those skilled in the art because the command was part of the SCSI
`
`specification).) When a host computer having a SCSI bus is turned on, the SCSI bus
`
`initialization automatically occurs. (Zadok Decl., ¶109.) The host computer’s SCSI
`
`controller issues the INQUIRY command to discover any peripheral devices
`
`attached to the SCSI bus. (Zadok Decl., ¶109; see also Gafford Depn. I, 39:25-40:16
`
`(explaining that a device must implement the INQUIRY command to be compliant
`
`with the SCSI standard); Gafford Depn. II, 35:5-36:10.) PO does not dispute these
`
`facts, and Schmidt corroborates Dr. Zadok’s testimony. (See POR, p. 23; Schmidt,
`
`pp. 88, 132, 133, 138-41.)
`
`Schmidt explains that “the INQUIRY command is capable of delivering a
`
`wide variety of useful information.” (Ex. 1007, Schmidt, p. 141.) For example, as
`
`shown in Table 12.12 of Schmidt (annotated below), the peripheral’s response to the
`
`INQUIRY command includes the device class. (Schmidt, p. 139 (“The standard
`
`INQUIRY data is structured in the following manner (Table 12.12)”).) To identify
`
`itself as a disk drive, the peripheral would respond to the INQUIRY command with
`
`the code “00h” (as shown below in Table 12.1 of Schmidt). (See Schmidt, p. 132
`
`- 13 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`(“Table 12.1 shows an example of the data returned from an INQUIRY
`
`command.”); Zadok Decl. II, ¶17.)
`
`
`
`
`
`(See Schmidt, pp. 133, 139.)
`
`PO concedes, as it must, that peripheral devices that use SCSI automatically
`
`respond to the INQUIRY command. (See POR, p. 21 (”it is mandatory that a SCSI
`
`device be capable of responding to an INQUIRY command”).) PO’s speculation that
`
`somehow this automatic recognition would cause the workstation to begin accessing
`
`and reconfiguring the ION Node in an unpredictable manner has no technical
`
`foundation. (Zadok Decl. II, ¶¶19-21.) PO again provides no explanation or
`
`evidence to support its conjecture. And even a cursory review of Schmidt
`
`demonstrates the obvious defects in PO’s argument. (See Zadok Decl. II, ¶¶16-18.)
`
`A host uses the INQUIRY command to identify useful information about a target,
`
`such as a peripheral’s device class. (Zadok Decl. II, ¶17.) The workstation does not
`
`simply start reading, writing, and configuring the peripheral device without first
`
`- 14 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`identifying the device class. (Zadok Decl. II, ¶17.) Thus, with SCSI, the initiator
`
`(e.g., the workstation) knows how to “deal with” the target.
`
`Even if the ION Workstation was unable to initially identify the ION Node as
`
`a hard disk, Pucci’s ION system would still operate properly by using the SCSI
`
`protocol. The SCSI protocol provides functionality for an initiator and target to
`
`handle unexpected and/or error conditions. (Zadok Decl. II, ¶¶22-25.) For example,
`
`SCSI provides a mechanism using the CHECK CONDITION status and a
`
`subsequent message including the DATA PROTECT sense key to inform the
`
`workstation that it cannot read or write to a portion of the disk because that portion
`
`of the disk is currently protected. (See Schmidt, pp. 142-44; see also Pucci, p. 221
`
`(explaining that an advantage of Pucci is “its robustness in the face of application
`
`failure” and that the “worst case scenario” merely places the ION Node into an off-
`
`line condition).)
`
`As shown above, the ION Node can respond to the INQUIRY command by
`
`identifying the device class as a disk drive (i.e., with code 00h), a fact conceded by
`
`the PO’s expert. (Zadok Decl. II, ¶¶17, 19-21; Gafford Depn. II, 83:5-11 (“But you
`
`would agree that the ION node could be implemented to identify itself as a disk
`
`drive in response to an inquiry command? . . . A. Nothing in the ION spec suggests
`
`or prevents doing so.”).) Because Pucci is used to emulate a local disk drive,
`
`responding to an INQUIRY command by identifying the ION Node as a disk drive
`
`- 15 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`(despite the ION Node not being a disk drive) is exactly what Pucci is designed to
`
`do. (Zadok Decl. II, ¶19.) And a POSITA would not have encountered unpredictable
`
`results because emulation within the context of SCSI was possible. (See Gafford
`
`Depn. I, 21:6-22:25, 72:7-22, 73:9-19 (explaining that the preferred embodiment
`
`responds to the INQUIRY command by identifying a peripheral as a hard drive,
`
`albeit the peripheral not being an actual hard drive).) Responding to the INQUIRY
`
`command by emulating a disk drive would not reconfigure the ION Node in a
`
`destructive manner but instead achieve Pucci’s goal of having “[s]oftware running
`
`within the ION system [that] mimics the behavior of a conventional device,
`
`providing the workstation with a peripheral that it knows how to deal with.” (Pucci,
`
`p. 220; Zadok Decl. II, ¶20.)
`
`PO also presents a tangential argument that the ION Node would always
`
`respond with a CHECK CONDITION status. This argument is premised on a
`
`complete misunderstanding of SCSI. (See Zadok Decl. II, ¶¶22-27.) A CHECK
`
`CONDITION status is a type of error and is only returned in response to an
`
`INQUIRY “if the target is unable to return the requested inquiry data.” (Zadok Decl.
`
`II, ¶23; 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. (Zadok Decl. II, ¶24; Schmidt, pp. 137, 142-43.) The ION Node would
`
`then, in response to the REQUEST SENSE command, send detailed error
`
`- 16 -
`
`
`
`
`
`
`
`Case IPR2016-01842
`Patent No. 9,189,437
`
`
`information to help remedy any issue. (Zadok Decl. II, ¶24; Schmidt, pp. 138, 143-
`
`46.) A POSITA, knowing the SCSI standard, would have understood that the ION
`
`Node would not always return a CHECK CONDITION status during its normal
`
`operation. Rather, as Petitioner’s expert explained in his original declaration, when
`
`the peripheral is an unknown device, the response to the INQUIRY command
`
`identifies the device class as unknown (by using the 1Fh code). (Zadok Decl., ¶¶46-
`
`48.) And in instances where Pucci uses its ION Node to emulate conventional
`
`device classes, the ION Node would return the code that corresponds with the
`
`device class (e.g., the 00h code that corresponds with the disk drive class in the
`
`SCSI standard implemented by ION). (Zadok Decl., ¶¶106, 109, 123, 202.)
`
`PO’s argument that the INQUIRY command would somehow reconfigure the
`
`ION Node in an unpredictable and destructive manner is especially problematic
`
`because the ’437 patent itself uses SCSI and the INQUIRY command during
`
`emulation. (See ’437 patent, Abstract, 4:8-20, 5:17-30, claim 21; Gafford Depn. I,
`
`15:1-22:7 (describing the use of SCSI and the INQUIRY command in a related
`
`patent).) The ’437 patent does not describe any challenge that would need to be
`
`overcome to em
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
