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`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 APPLE INC.’S RESPONSE TO
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`ON CROSS EXAMINATION
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Petitioner provides the following responses to Patent Owner’s observations.
`
`IPR2016-01842
`U.S. Patent No. 9,189,437
`
`
`Response to Observation #1
`
`Dr. Zadok’s testimony does not establish or suggest that user-loaded file
`
`transfer enabling software must be loaded on Pucci’s workstation. In the following
`
`testimony, cited by Patent Owner, Dr. Zadok merely testified that software runs on
`
`a workstation and interfaces with a standard SCSI driver—not that a user must load
`
`software on the workstation or that the software constitutes file transfer enabling
`
`software. The full context of the cited testimony is as follows:
`
`Q. Okay. And [Pucci] says, “The part of the A-to-D application
`that resides with an ION is structured around three cooperating
`tasks.” Does this imply that part of the A-to-D application
`resides in the ION, while another part resides in the host
`workstation?
`
`A. So I think what they imply here is that there is some
`application running on the workstation, and that interfaces with
`a SCSI driver or standard SCSI driver to the ION node itself,
`which then would accept these kinds of commands and process
`them, namely through these analog channels, reading data from
`them, digitizing them, and returning it back.
`
` (Ex. 2007, Zadok Depo. Tr., 87:19–88:10.) This testimony is consistent with Dr.
`
`Zadok’s declaration in support of the Petitioner’s Reply, where he testified that
`
`Pucci operates similar to the ’437 patent in that it does not require user-loaded
`
`
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`- 1 -
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`
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`software because the file-transfer enabling SCSI driver would have been pre-
`
`IPR2016-01842
`U.S. Patent No. 9,189,437
`
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`installed on the workstation. (See Ex. 1054, Zadok Decl. II, ¶¶30–33.) This
`
`testimony is also consistent with Dr. Zadok’s declaration in support of the
`
`Petitioner’s Reply, where he agreed with Mr. Gafford’s deposition testimony that
`
`the ’437 patent, like Pucci, uses application software to gather hard disk parameters,
`
`such as the maximum block size. (See Zadok Decl. II, ¶¶32–33 (citing Ex. 1056,
`
`Gafford Depo. Tr. II).)
`
`Response to Observation #2
`
`Dr. Zadok’s testimony does not suggest that user-loaded file transfer enabling
`
`software in addition to the operating system must be loaded on the workstation to
`
`permit data transfer. In the following testimony, cited by Patent Owner, Dr. Zadok
`
`merely testified that the software runs on a workstation and is separate from the file
`
`transfer enabling SCSI driver—not that a user must load software on the
`
`workstation or that the software is file transfer enabling software:
`
`Q. Okay. But you would agree with me that there’s an
`application that’s running on the workstation that’s requesting
`the converted data that’s separate and apart from any driver,
`correct?
`
`A. I would assume that this application is a user mode
`application that’s separate from the standard SCSI driver that’s
`
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`usually part of the operating system where that SCSI driver is
`what enables the transfer of the data.
`
`IPR2016-01842
`U.S. Patent No. 9,189,437
`
`
`(Zadok Depo. Tr., 89:22–90:9.) This testimony is consistent with Dr. Zadok’s
`
`declaration in support of the Petitioner’s Reply, where he testified that Pucci
`
`operates similar to the ’437 patent in that it does not require user-loaded software
`
`because the file-transfer enabling SCSI driver would have been pre-installed on the
`
`workstation. (See Zadok Decl. II, ¶¶30–33.)
`
`Regarding whether a user needs to load software on the workstation, Dr.
`
`Zadok testified that “[a]s long as you comply with [the SCSI] specification, then
`
`you will be seen as a standard SCSI device and be able to use standard, traditional
`
`SCSI driver software, an operating system, for example.” (Zadok Depo. Tr., 82:1–
`
`5.) And Dr. Zadok testified that Pucci’s ION system complies with the SCSI
`
`standard: “Q . . . Does Pucci’s ION system comply with the SCSI standard? A. Yes.
`
`I believe it does.” (Zadok Depo. Tr., 100:13–101:7.) Dr. Zadok then explained that
`
`Pucci’s system uses a standard SCSI driver, not specialized user-loaded software:
`
`Q. So in a reference like Pucci, where you’re installing software
`on the host device anyway, you could do something to avoid
`having a SCSI interface respond using the typical SCSI
`standard, correct?
`
`[A.] Since Pucci mentions SCSI repeatedly and SCSI standards,
`and even says that they didn’t have to change SCSI drivers,
`
`
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`- 3 -
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`IPR2016-01842
`U.S. Patent No. 9,189,437
`
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`there is no reason for me to believe that it used anything other
`than a standard SCSI driver. I think they even said somewhere
`that they upgraded their workstation and didn’t have to change
`the ION node or the SCSI drivers.
`
`(Zadok Depo. Tr., 106:10–107:2 (emphasis added) (objections omitted).) This
`
`testimony is consistent with Dr. Zadok’s declaration in support of the Petitioner’s
`
`Reply, where he testified that the ’437 patent, like Pucci, uses SCSI drivers. (See
`
`Zadok Decl. II, ¶¶32–33.) This testimony is also consistent with Dr. Zadok’s
`
`declaration in support of the Petitioner’s Reply, where he agreed with Mr. Gafford’s
`
`deposition testimony that the ’437 patent, like Pucci, uses application software to
`
`gather hard disk parameters, such as the maximum block size. (See Zadok Decl. II,
`
`¶¶32–33 (citing Gafford Depo. Tr. II).) Dr. Zadok therefore maintains that the
`
`system in Pucci does not require “user-loaded file transfer enabling software to be
`
`loaded on or installed in the computer at any time.”
`
`Response to Observation #3
`
`Dr. Zadok’s testimony does not establish that the prior art fails to disclose the
`
`misidentification signaling required in the claims. Dr. Zadok testified that he did not
`
`recall “a specific word ‘signal’ or signaling’” in Pucci. But Dr. Zadok further
`
`testified that the specific word is unnecessary because a POSA would have
`
`understood, based on Pucci’s use of the SCSI standard, that the system in Pucci
`
`responds to INQUIRY commands by emulating a hard drive:
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`- 4 -
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`
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`Q. So you would agree with me that Pucci does not explicitly
`disclose the use of an inquiry command, correct?
`
`IPR2016-01842
`U.S. Patent No. 9,189,437
`
`
`A. I don’t recall seeing, in Pucci, it describing specifically the
`inquiry command. It does mention SCSI and standards
`repeatedly, so those details are in the standards.
`
`Q. Okay. And you’ll agree with me that it also -- since it
`doesn’t disclose explicitly the use of an inquiry command, it
`also doesn’t explicitly disclose the response to an inquiry
`command, correct?
`
`A. Again, it doesn’t disclose the inquiry command or its
`response, other than pointing you to the SCSI specification and
`appendix. And I recall that I provided those details in the
`combination with Schmidt.
`
`Q. Okay. And since it doesn’t explicitly disclose a response, it
`certainly doesn’t explicitly disclose misidentification in a
`response to an inquiry command, correct?
`
`A. No. I think that’s wrong. If I recall, Pucci actually says
`that it emulates a hard disk.
`
`Q. Okay. But [Pucci] never says that a signal is sent
`indicating such, correct?
`
`A. So I don’t recall it specifically providing the details of the
`SCSI inquiry command. In my opinion, those details don’t
`have to be in Pucci. It’s enough for it to say that it uses SCSI.
`
`
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`- 5 -
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`IPR2016-01842
`U.S. Patent No. 9,189,437
`
`
`And a person of ordinary skill in the art would know what it
`means in all those details. I don’t see a need to take a reference
`like Pucci, which is, I don’t know, maybe a couple dozen pages,
`and encumber it with hundreds of pages of the SCSI
`specification where you can simply point to where it is.”
`
`(Zadok Depo. Tr., 114:15–115:11 (emphasis added).)
`
`Dr. Zadok reiterated this point later in the deposition:
`
`Q. Okay. So that’s something you’re inferring but is not
`explicitly stated in Pucci, correct?
`
`A. I think I provided enough details in my declaration to
`explain that this is what happens, given that Pucci uses the
`SCSI standards and emulates a hard disk. It would, to me, be
`clearly understood that it emulates a hard disk; and therefore,
`when it operates with all the appropriate SCSI standards, it
`has to return the appropriate signal back to the inquiry
`command.
`
`Q. Okay. But you agree that Pucci never uses the words
`indicating that it sends a signal explicitly that misidentifies the
`device as a hard drive, correct?
`
`A. I don’t think it uses, perhaps, specifically those words. But
`again, as I said before, it is well understood to a person of
`ordinary skill in the art that’s exactly what Pucci talks about
`and how it operates.
`
`
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`- 6 -
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`
`
`(Zadok Depo. Tr., 118:21–119:19 (emphasis added).) Dr. Zadok therefore
`
`IPR2016-01842
`U.S. Patent No. 9,189,437
`
`
`maintains that the system in Pucci responds to an INQUIRY command, according
`
`to the SCSI standard, to emulate a hard drive.
`
`Response to Observation #4
`
`Dr. Zadok’s testimony does not establish that the prior art fails to disclose the
`
`misidentification signaling required in the claims. In the cited passage, Dr. Zadok
`
`testified that he did not recall whether Schmidt “describes signals that emulate or
`
`misidentify.” But Dr. Zadok testified that Schmidt is used only to show how Pucci
`
`would have implemented standard commands and responses for emulation: “I’ve
`
`used Schmidt just to explain details of SCSI. For example, the inquiry command,
`
`the actual emulation part, is in the Pucci reference . . . .” (Zadok Depo. Tr., 104:19–
`
`105:1.) And Dr. Zadok explained, on multiple occasions, that Schmidt does not
`
`need to describe “signals that emulate or misidentify”; Schmidt is used only to
`
`describe how a system, such as Pucci’s SCSI-based system, would have
`
`implemented the SCSI standard:
`
`Q. And we’ve agreed, then, that Schmidt doesn’t talk about
`misidentification and signaling with a misidentification. And
`you agreed with me that Pucci also does not show signaling and
`misidentification explicitly, correct?
`
`MR. DUTTON: Objection. Mischaracterizes prior testimony.
`
`
`
`- 7 -
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`
`
`IPR2016-01842
`U.S. Patent No. 9,189,437
`
`
`THE WITNESS: So Schmidt describes the details of the SCSI
`specification, including all the signaling and commands and
`messages and responses that have to go back and forth. It
`doesn’t necessarily -- Schmidt doesn’t have to disclose SCSI
`emulation because what happens behind the scenes and inside
`a device is independent up to the implementation of the
`device.
`
`(Zadok Depo. Tr., 117:7–22 (emphasis added).)
`
`Q. . . . In your opinion, does the Schmidt reference teach
`misidentification of a device when responding to an inquiry
`command?
`
`A. I don’t think the SCSI specification or the Schmidt
`reference have to teach any principle of emulation of SCSI.
`All they have to tell you is how the SCSI protocol operates.
`What you do in the back end and how -- if you have a physical
`device or any kind of emulated device is up to the specific
`implementation. As long as you comply with this specification,
`then you will be seen as a standard SCSI device and be able to
`use standard, traditional SCSI driver software, an operating
`system, for example.
`
`(Zadok Depo. Tr., 81:12–82:5 (emphasis added).) Dr. Zadok further testified that
`
`“there’s nothing in those SCSI standards or the Schmidt book that says that a disk
`
`drive has to be a physical, actual, hard disk drive with a moving head and rotating
`
`
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`- 8 -
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`
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`platters. It could be anything that looks like it from the perspective of the SCSI
`
`IPR2016-01842
`U.S. Patent No. 9,189,437
`
`
`protocol.” (Zadok Depo. Tr., 82:6–83:2.) Dr. Zadok therefore maintains that Pucci’s
`
`system uses the SCSI standard to emulate a hard drive and that Schmidt explains
`
`how the system would have implemented standardized SCSI commands and
`
`responses to perform that function.
`
`
`
`
`
`
`
`Date: December 19, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Lori A. Gordon/
`
`Lori A. Gordon, Reg. No. 50,633
`Attorney for Petitioner
`
`
`
`- 9 -
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PETITIONER
`
`
`
`APPLE INC.’S RESPONSE TO PATENT OWNER’S MOTION FOR
`
`OBSERVATIONS ON CROSS EXAMINATION was served electronically via e-
`
`mail on December 19, 2017, in its entirety on the following:
`
`
`Gregory S. Donahue (Lead Counsel)
`Minghui Yang (Back-up Counsel)
`Michael R. Fleming (Back-up Counsel)
`Anthony L. Meola (Back-up Counsel)
`Jason A Murphy (Back-up Counsel)
`Victor J. Baranowski (Back-up Counsel)
`Arlen L. Olsen (Back-up Counsel)
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`mfleming@irell.com
`ameola@iplawusa.com
`jmurphy@iplawusa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Lori A. Gordon/
`
`Lori A. Gordon, Reg. No. 50,633
`Attorney for Petitioner
`
`
`
`
`Date: December 19, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
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