Filed on behalf of Apple Inc.
`By:
`Lori A. Gordon
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`Sterne, Kessler, Goldstein & Fox PLLC
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`1100 New York Avenue, NW
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`Washington, D.C.
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`Tel: (202) 371-2600
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`Fax: (202) 371-2540
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,470,399
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`TABLE OF CONTENTS
`
`C.
`D.
`E.
`
`
`I. Mandatory notices (37 C.F.R. § 42.8(a)(1)). ....................................................... 2
`II. Grounds for standing (37 C.F.R. § 42.104(a)). .................................................... 3
`III. Identification of challenge (37 C.F.R. § 42.104(b)). ........................................... 4
`A.
`Citation of Prior Art ....................................................................................... 4
`B.
`Statutory grounds for the challenge. .............................................................. 5
`IV. The ’399 patent. .................................................................................................... 6
`A.
`Overview of the ’399 patent. ......................................................................... 6
`B.
`The challenged claims of the ’399 patent are not entitled to priority benefit
`of the March 1997 German Application. ....................................................... 9
`Summary of the prosecution history. ........................................................... 14
`Level of ordinary skill in the art. ................................................................. 15
`Claim construction. ...................................................................................... 16
`“data transmit/receive device” [claims 1, 3, 11, 14] .....................................18
`V. Ground 1: The combination of Ard, Schmidt, and Webb renders claims 1, 3, 5,
`11, and 14 obvious. ............................................................................................ 19
`A.
`Overview of Ard. ......................................................................................... 19
`B.
`Overview of Schmidt. .................................................................................. 22
`C.
`Overview of Webb. ...................................................................................... 24
`D.
`The combination of Ard, Schmidt, and Webb renders claims 1, 11, and 14
`obvious. ........................................................................................................ 25
`1. The combination of Ard, Schmidt, and Webb discloses the preamble of
`independent claims 1, 11, and 14. ..........................................................25
`a) The combination of Ard, Schmidt, and Webb discloses an interface
`device and a method “for communication between a host device…
`and a data transmit/receive device.” ...........................................26
`b) The combination of Ard, Schmidt, and Webb discloses the host
`device limitations of the preamble. .............................................28
`c) The combination of Ard, Schmidt, and Webb discloses the data
`transmit/receive device architecture limitation of the preamble. 30
`2. The combination of Ard, Schmidt, and Webb discloses the architectural
`elements of the interface device. ............................................................32
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`a) The combination of Ard, Schmidt, and Webb discloses that the
`interface devices comprise “a processor” and “a memory.” .......33
`b) The combination of Ard, Schmidt, and Webb discloses the “first
`connecting device” limitations. ...................................................35
`c) The combination of Ard, Schmidt, and Webb suggests the “second
`connecting device” limitations. ...................................................38
`3. The combination of Ard, Schmidt, and Webb discloses the recognition
`limitations of the independent claims. ...................................................41
`a) The combination of Ard, Schmidt, and Webb discloses the inquiry
`and response elements of the recognition limitations. ................43
`b) The combination of Ard, Schmidt, and Webb teaches “whereupon
`the host device communicates with the interface device by means
`of the [driver].” ............................................................................48
`4. The combination of Ard, Schmidt, and Webb discloses the transfer
`limitations of the independent claims. ...................................................49
`a) The combination of Ard, Schmidt, and Webb teaches “a data
`request command from the host device to the type of input/output
`device.” ........................................................................................50
`b) The combination of Ard, Schmidt, and Webb teaches that a “second
`command interpreter… interpret[s] [the] data request
`command… as a data transfer command for initiating a transfer
`of the digital data to the host device.” .........................................53
`The combination of Ard, Schmidt, and Webb renders claim 3 obvious. .... 56
`E.
`VI. The combination of Ard, Schmidt, Webb, and Johnson renders claim 5 obvious.
`
`57
`A.
`Overview of Johnson. .................................................................................. 57
`The combination of Ard, Schmidt, Webb, and Johnson discloses that “the
`B.
`processor is a digital signal processor” as recited in claim 5. .................... 58
`VII. Conclusion. ......................................................................................................... 60
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`TABLE OF AUTHORITIES
`
`
`Cases:
`
`In re Cuozzo Speed Techs., LLC,
`778 F.3d 1271 (Fed. Cir. 2015)................................................................................ 16
`
`In re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015)................................................................................ 17
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007)................................................................................ 16
`
`Martin v. Mayer,
`823 F.2d 500 (Fed. Cir. 1987) .................................................................................. 10
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005).......................................................................... 17, 19
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008)................................................................................ 10
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991)................................................................................ 10
`
`York Prod. Inc. v. Central Tractor Farm & Family Center,
`99 F.3d 1568 (Fed. Cir. 1996) .................................................................................. 56
`
`Statutes:
`
`35 U.S.C. § 102(a) ................................................................................................. 4, 5
`35 U.S.C. § 102(b) ................................................................................................. 4, 5
`35 U.S.C. § 102(e) ................................................................................................. 4, 5
`35 U.S.C. § 112 .............................................................................................. 9, 18, 56
`35 U.S.C. § 120 .......................................................................................................... 9
`35 U.S.C. § 365(c) ..................................................................................................... 9
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`
`Regulations:
`
`37 C.F.R. § 42.8 ..................................................................................................... 2, 3
`37 C.F.R. § 42.100 ................................................................................................... 16
`37 C.F.R. § 42.104 ................................................................................................. 3, 4
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`EXHIBIT LIST
`
`Description
`U.S. Patent 6,470,399 to Tasler
`File History for U.S. Patent 6,470,399
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 6,470,399
`Curriculum Vitae of Dr. Erez Zadok
`Intentionally left blank
`Intentionally left blank
`The SCSI Bus and IDE Interface Protocols, Applications and
`Programming, by Schmidt, First Edition, Addison-Wesley, 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
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015).
`The Art of Electronics, by Horowitz et al., First Edition, Cambridge
`University Press, 1980.
`The IEEE Standard Dictionary of Electrical and Electronics Terms,
`Sixth Edition, 1996.
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language, Random House, 1996.
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`“Principles of Data Acquisition and Conversion,” Burr-Brown
`Application Bulletin, 1994.
`“Principles of Data Acquisition and Conversion,” Intersil Application
`Note, October 1986.
`“Sample-and-Hold Amplifiers,” Analog Devices MT-090 Tutorial,
`2009.
`Declaration of Scott Bennett
`- v -
`
`Ex. No.
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
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`1008
`1009
`1010
`1011
`1012
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`1013
`1014
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`1015
`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Description
`Discrete-Time Signal Processing, by Oppenheim et al., First Edition,
`Prentice-Hall, 1989
`Intentionally left blank
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30,
`1994 (“PNP SCSI”)
`Intentionally left blank
`U.S. Patent No. 4,970,605 to Fogaroli et al.
`Intentionally left blank
`U.S. Patent No. 5,915,106 to Ard, titled “Method and System for
`Operating a Scanner Which Emulates a Disk Drive”
`U.S. Patent No. 5,303,064 to Johnson et al., titled “Image Scanner
`with Calibration Mechanism to Obtain Full Dynamic Range and
`Compensated Linear Output”
`U.S. Patent No. 5,489,772 to Webb et al., titled “Variable Optical
`Sampling Rate Dependent on Requested Scan Resolution”
`’399 German Application (DE 197 08 755)
`’399 German Application Translated (DE 197 08 755)
`Foley, Computer Graphics: Principles and Practice, 2d Edition, 1987
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`- vi -
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`Ex. No.
`1025
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`1026-1030
`1031
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`1032
`1033
`1034-1045
`1046
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`1047
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`1048
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`1049
`1050
`1051
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`

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`Apple Inc. petitions for inter partes review of claims 1, 3, 5, 11, and 14 of
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`United States Patent No. 6,470,399 to Tasler, titled “Flexible Interface for
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`Communication Between a Host and an Analog I/O Device Connected to the
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`Interface Regardless the Type of the I/O Device” (hereinafter “the ʼ399 patent”).
`
`The ’399 patent claims priority benefit to a March 1997 German application.
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`However, the challenged claims recite limitations having no written description
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`support in the German application. Therefore, the earliest possible priority date of
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`the ’399 patent is the March 3, 1998 filing date of the PCT application. In the
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`present petition, Apple Inc. presents an intervening reference, U.S. Patent 5,915,106
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`to Ard (“Ard”) filed after the March 1997 German application date but before the
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`March 3, 1998 PCT application date. Apple demonstrates below that none of the
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`challenged claims are patentable in view of the intervening Ard reference.
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`The purported novelty of the ’399 patent is that, when attached to a host
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`computer, the interface identifies itself as “an input/output device customary in a
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`host device,” such as a hard disk drive, thereby allowing the host device to
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`“communicate with the interface device by means of the driver for the input/output
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`device customary in a host device.” (’399 patent, 13:4–8.) This technique is
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`commonly referred to as emulation.
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`The ’399 patent, however, was not the first disclosure of hard disk emulation
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`for interfacing to I/O devices. A U.S. patent to Ricoh Corp., filed nearly a year
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`before the ’399 priority date, described an image scanner that appears to a host
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`computer as a disk drive, providing the same benefits as the ’399 patent. The
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`scanner interfaces with the workstation using the well-known multi-purpose SCSI
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`interface.
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`The ’399 patent merely claims an obvious variation of hard disk emulation
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`previously disclosed by the Ricoh patent, in addition to many others. Accordingly,
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`Apple respectfully requests that the Board institute trial on the grounds set forth
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`herein.
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`I. Mandatory notices (37 C.F.R. § 42.8(a)(1)).
`REAL PARTY IN INTEREST: The real party-in-interest of Petitioner is Apple
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`Inc. (“Apple”).
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`RELATED MATTERS: The ’399 patent is the subject of the following civil
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`actions.
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`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-01095
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`(E.D. Tex.); Papst Licensing GmbH & Co., KG v. LG Electronics, Inc. et al., Case
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`No. 6-15-cv-01099 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. ZTE
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`Corporation et al., Case No. 6-15-cv-01100 (E.D. Tex.); Papst Licensing GmbH &
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`Co., KG v. Samsung Electronics Co Ltd. et al., Case No. 6:15-cv-01102 (E.D. Tex.);
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`Papst Licensing GmbH & Co., KG v. Lenovo (United States) Inc. et al., Case No. 6-
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`15-cv-01111 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. Huawei
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`Technologies Co., Ltd. et al., Case No. 6-15-cv-01115 (E.D. Tex.) and In Re Papst
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Licensing GmbH & Co., KG Patent Litigation, MDL No. 1880 (Misc. Action No.
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`07-493) relating to Nos. 07-cv-1118, 07-cv-1222, 07-cv-2086, 07-cv-2088, 08-cv-
`
`865, 08-cv-985, 08-cv-1406, and 09-cv-530.
`
`U.S. Application No. 14/859,266, filed on September 19, 2015, claims the
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`benefit of the ’399 patent.
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`Finally, Petitioner is filing concurrent petitions against the ’399 patent.
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`No other matters related to the ’399 patent are known to the Petitioner.
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`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. § 42.8(b)(3) and
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`42.10(a), Petitioner appoints Lori A. Gordon (Reg. No. 50,633) as its lead counsel
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`and Steven W. Peters (Reg. No. 73,193) as its back-up counsel, all at the address:
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`STERNE, KESSLER, GOLDSTEIN & FOX, 1100 New York Avenue, N.W., Washington,
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`D.C., 20005, phone number (202) 371-2600 and facsimile (202) 371-2540.
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`SERVICE INFORMATION: Petitioner consents to electronic service by email at
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`the email addresses: lgordon-PTAB@skgf.com, and speters-PTAB@skgf.com.
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`II. Grounds for standing (37 C.F.R. § 42.104(a)).
`The undersigned and Apple certify that the ʼ399 patent is available for inter
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`partes review. Apple certifies that it is not barred or estopped from requesting this
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`inter partes review on the grounds identified herein. The assignee of the ’399 patent,
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`Papst, filed a complaint against Apple alleging infringement of the ’399 patent on
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`November 30, 2015. (Ex. 1020.) The present petition is being filed within one year
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`of service of Petitioner.
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`III. Identification of challenge (37 C.F.R. § 42.104(b)).
`Citation of Prior Art
`A.
`The ’399 patent is the national stage of international application
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`PCT/EP98/01187, filed on March 3, 1998. The ’399 patent further claims priority to
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`a German application, filed on March 4, 1997.1 In support of the grounds of
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`unpatentability cited above, Apple cites the following prior art references:
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`U.S. Patent No. 5,915,106 to Ard, titled “Method and System for Operating a
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`Scanner Which Emulates a Disk Drive” (Ex. 1046), is prior art under at least 35
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`U.S.C. §§ 102(e) because it was filed on March 20, 1997, before the March 3, 1998
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`priority date of the ’399 patent.
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`The SCSI Bus and IDE Interface—Protocols, Applications and
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`Programming, by Friedhelm Schmidt (Ex. 1007), is prior art under at least 35
`
`U.S.C. §§ 102(a) and 102(b) because it was published in 1995, more than one year
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`before the earliest possible priority date of the ’399 patent. (See Ex. 1024.)
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`U.S. Patent No. 5,489,772 to Webb et al., titled “Variable Optical Sampling
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`Rate Dependent on Requested Scan Resolution” (Ex. 1048), is prior art under at
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`1 Apple does not acquiesce that the ’399 patent is entitled to priority benefit of
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`the 1997 German application.
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`least 35 U.S.C. §§ 102(a), 102(b), and 102(e) because it was filed on November 14,
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`1994, and issued February 6, 1996, more than one year before the March 3, 1998
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`priority date of the ’399 patent.
`
`U.S. Patent No. 5,303,064 to Johnson et al., titled “Image Scanner with
`
`Calibration Mechanism to Obtain Full Dynamic Range and Compensated Linear
`
`Output” (Ex. 1047), is prior art under at least 35 U.S.C. §§ 102(a), 102(b), and
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`102(e) because it was filed on February 20, 1991, and issued April 12, 1994, more
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`than one year before the March 3, 1998 priority date of the ’399 patent.
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`B. Statutory grounds for the challenge.
`Apple requests review of claims 1, 3, 5, 11, and 14 on the following grounds:
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`References
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`Basis
`
`Claims Challenged
`
`Ard, Schmidt, and Webb
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`§ 103
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`1, 3, 11, 14
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`Ard, Schmidt, Webb, and Johnson
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`§ 103
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`5
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`IV. The ’399 patent.
`Overview of the ’399 patent.
`A.
`The ’399 patent describes an interface device that enables communication
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`between a host device and a data transmit/receive device from which data is
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`acquired. (Ex. 1001, ’399 patent, 1:10–14.) The patent acknowledges that such
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`interface devices were known prior to earliest possible priority date of the ’399
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`patent. However, the patent alleges that these existing interfaces had limitations—
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`specifically, a tradeoff between high data transfer rates and host-device
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`independence. (Id., 3:24–27.) For example, in existing interfaces devices, high data
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`transfer rates could be achieved using host-specific interface devices; but these
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`interfaces were not suitable for use with other types of host systems. (’399 patent,
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`1:65 to 2:7.) In other alternative devices, host-device independence was achieved
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`through the use of standard interfaces; but these interfaces required specific driver
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`software that in turn, resulted in reduced data transfer speed. (Id., 1:22–30.)
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`The ’399 patent discloses an interface device that purportedly overcomes
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`these limitations and “provides fast data communication between a host device with
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`input/output interfaces and a data transmit/receive device.” (’399 patent, Abstract).
`
`As illustrated in Figure 1, reproduced below, the interface device 10 includes “[a]
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`first connecting device 12… attached to a host device (not shown) via a host line
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`11.” (’399 patent, 5:48–50.) The ’399 patent states that “[t]he first connecting device
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`is attached both to a digital signal processor 13 and to a memory means 14,” which
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`in turn are “attached to a second connecting device.” (’399 patent, 5:50–56.) In
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`some embodiments, the second connecting device is “attached by means of an
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`output line 16 to a data transmit/receive device… from which data is to be read, i.e.
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`acquired, and transferred to the host device.” (’399 patent, 5:56–60.)
`
`
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`The ’399 patent discloses techniques to make “the interface device appear[] to
`
`the host device as a hard disk.” (’399 patent, 6:58–59.) Specifically, the ’399 patent
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`relies on a known host system identification process: when a host device is booted,
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`an inquiry instruction as to devices attached to the host device is issued to the
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`input/output interfaces of the host device. (Id., 5:17–23, 4:11–13.) When the
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`interface device receives the inquiry instruction, the interface device identifies itself,
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`regardless of the type of attached data transmit/receive device, as a customary
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`input/output device to the host device. (See ’399 patent, 4:65 to 5:6.) This response
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`is handled by a “first command interpreter.” (’399 patent, 6:52–53.) The host can, in
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`addition, “send an instruction, known by those skilled in the art as ‘Test Unit
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`Ready,’ to the interface device to require more precise details.” (’399 patent, 6:16–
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`19.) Both the INQUIRY and Test Unit Ready commands were well known as part of
`
`the small computer system interface (SCSI) which was widely popular at the time of
`
`invention. (Ex. 1003, Zadok Decl., ¶¶33, 50, 51 (citing Schmidt, p. 165 (describing
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`conventional read and write commands for hard disk drives); see also ’399 patent,
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`4:40–44.)
`
`During operation, the interface device “simulates a hard disk with a root
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`directory whose entries are ‘virtual’ files which can be created for the most varied
`
`functions.” (’399 patent, 6:1–3.) When a user “wishes to read data from the data
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`transmit/receive device via the line 16, the host device sends a command, for
`
`example ‘read file xy’, to the interface device.” (’399 patent, 6:55–58.) The second
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`command interpreter then “begins to transfer data from the data transmit/receive
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`device via the second connecting device to the first connecting device and via the
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`line 11 to the host device.” (’399 patent, 6:64–67.) This operation emulates a “‘real-
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`time input’ file [that] then appears as a file whose length corresponds to the
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`anticipated volume of data” contained in a configuration file. (’399 patent, 7:5–7;
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`see also 7:1–5.)
`
`B.
`
`The challenged claims of the ’399 patent are not entitled to priority
`benefit of the March 1997 German Application.
`
`The ’399 patent is the national stage of international application
`
`PCT/EP98/01187, filed on March 3, 1998. The ’399 patent further claims priority to
`
`a German application, filed on March 4, 1997, referred to herein as “the ’399
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`German application” (Ex. 1049). A certified translation of the German application is
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`provided as Ex. 1050.
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`An international application designating the United States is entitled to the
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`right of priority based on a prior national application provided that the conditions of
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`35 U.S.C. § 120 are met. See 35 U.S.C. § 365(c). Section 120, in turn, requires that
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`the claims meet the written description and enablement requirements of 35 U.S.C.
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`§ 112 in order to obtain benefit of the earlier filing date. See 35 U.S.C. §§ 112 and
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`120. The challenged claims of the ’399 patent are not entitled to priority benefit of
`
`the ’399 German application because the ’399 German application does not provide
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`written description support for the challenged claims.
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`Each of the challenged claims requires that the host device comprises “a
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`multi-purpose interface.” (See ’399 patent, claim 1). Independent claim 1 further
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`specifies that the claimed interface device includes “a first connecting device for
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`interfacing the host device with the interface device via the multi-purpose interface
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`of the host device.” The ’399 German application fails to provide written
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`description support for the claimed “multi-purpose interface” of the host device.
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`To satisfy the written description requirement, the disclosure of the ’399
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`German application must “convey with reasonable clarity to those skilled in the art
`
`that, as of the filing date sought, [the inventor] was in possession of the invention.”
`
`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). To satisfy the
`
`written description requirement, the written description must actually or inherently
`
`disclose the claim element. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`
`1306 (Fed. Cir. 2008). Here, there is not a single reference in the written description
`
`of the German application which suggests that Mr. Tasler understood the invention
`
`to include a “multi-purpose interface” of the host device and its associated drivers.
`
`Nor is the inclusion of a multi-purpose interface and its associated drivers
`
`necessarily present in the ’399 German application. See Martin v. Mayer, 823 F.2d
`
`500, 505 (Fed. Cir. 1987)(holding that the written description requirement is “not a
`
`question of whether one skilled in the art might be able to construct the patentee’s
`
`device from the teachings of the disclosure…. Rather, it is a question whether the
`
`application necessarily discloses that particular device”) (emphasis in original).
`
`
`
`
`- 10 -
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`

`
`Indeed, the chart below highlights that the concept of a multi-purpose
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`interface and its associated drivers was specifically added as a new embodiment,
`
`after the filing of the ’399 German application.
`
`
`
`
`
`
`’399 Patent – Application As Filed
`
`“When the host device system with
`which the interface device according to
`the present invention is connected is
`booted and a data transmit/receive
`device is also attached to the interface
`device 10,
`
`usual BIOS routines or multi-purpose
`interface programs issue an
`instruction,
`
`known by those skilled in the art as the
`INQUIRY instruction,
`
`Corresponding Disclosure in
`’399 German Application
`
`“If the host device system with which
`the interface device as per the present
`invention is connected for which a data
`sending/receiving unit is also linked to
`the interface device 10, is booted,
`
`normal BIOS routines output a
`command
`
`to each input/output interface available
`in the host device
`
`that is recognized among experts as an
`“INQUIRY” command.”
`
`to the input/output interfaces in the host
`device.”
`
`(Ex. 1050, p. 3.)
`
`(Ex. 1002, p. 18.)
`
`“For persons skilled in the art it is
`however obvious that the interface
`device 10 is not necessarily signed on
`when the computer system is powered
`
`“However, it is obvious for experts that
`the interface device 10 is not
`necessarily registered when switching
`
`- 11 -
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Corresponding Disclosure in
`’399 German Application
`on the computer
`
`rather than a special BIOS routine
`
`can be started on the host device also
`while the computer runs in order to
`connect or “mount” the interface
`device 10 as an additional hard disk.”
`
`(Ex. 1050, p. 4.)
`
`’399 Patent – Application As Filed
`
`up
`
`but that a special BIOS routine or a
`driver for a multi-purpose interface
`
`can also be started on the host device
`during current operation of the
`computer system in order to sign on or
`mount the interface device 10 as an
`additional hard disk.”
`
`(Ex. 1002, p. 21.)
`
`“An important advantage of the
`interface device 10 of the present
`invention is that it also permits
`extremely high data transfer rates by
`using,
`
`“A significant advantage of the
`interface device 10 of this invention
`also consists of it enabling extremely
`high data transfer rates and this already
`by using
`
`for data interchange,
`
`the host unit’s own BIOS routines,
`
`the host device-own BIOS routines
`
`which are optimized for each host
`device by the host device manufacturer
`or BIOS system manufacturer, or by
`using driver programs which are
`normally optimized and included by
`the manufacturers of multi-purpose
`
`which the manufacturer of the host unit
`or BIOS system has optimized for each
`host unit,
`
`for exchanging data.”
`
`(Ex. 1050, p. 5.)
`
`
`
`
`- 12 -
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Corresponding Disclosure in
`’399 German Application
`
`’399 Patent – Application As Filed
`
`interfaces.”
`
`(Ex. 1002, p. 22.)
`
`
`
`The inventor also did not recognize BIOS routines implementing SCSI
`
`commands as a multi-purpose interface. (Zadok Decl., ¶134.) Rather, the inventor
`
`understood such BIOS routines as providing a “classical input/output interface.” For
`
`example, the ’399 patent includes the following disclosure not found in the ’399
`
`German application:
`
`Multi-purpose interfaces comprise both an interface card
`and specific driver software for the interface card. The
`driver software can be designed so that it can replace the
`basic input/output system (BIOS) driver routines.
`Communication between the host device and the devices
`attached to the multi-purpose interface then essentially
`takes place by means of the specific driver software for the
`multi-purpose interface and no longer primarily by
`means of BIOS routines of the host device. Recently
`however drivers for multi-purpose interfaces can also
`already be integrated in the BIOS system of the host
`device, as alongside classical input/output interfaces,
`multi-purpose interfaces are becoming increasingly
`common in host device.
`
`
`
`
`- 13 -
`
`

`
`(’399 patent, 4:44–56 (emphasis added).)
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Thus, the inventor understood multi-purpose interfaces as a replacement for
`
`BIOS routines integrating classical input/output interfaces. As such, the ’399
`
`German application does not explicitly or inherently disclose a multi-purpose
`
`interface.
`
`Because the ’399 German application does not actually or inherently disclose
`
`the “multi-purpose interface” limitations such that one skilled in the art would
`
`recognize such a disclosure, the challenged claims are not entitled to priority benefit
`
`of the ’399 German application. Accordingly, the earliest possible priority date for
`
`purposes of this inter partes review proceeding is the March 3, 1998 PCT
`
`application date.
`
`Summary of the prosecution history.
`
`C.
`The national stage application that matured into the ’399 patent was filed with
`
`a set of sixteen claims. The U.S. Patent Office initially rejected each of the sixteen
`
`originally-filed claims as obvious over the combination of applicant-admitted prior
`
`art (AAPA) and U.S. Patent No. 5,499,378 to McNeill et al. (Ex. 1002, p. 244.) The
`
`Examiner relied on McNeill primarily for its teaching of the response to a SCSI
`
`inquiry command allowing “the host device [to] communicate[] with the interface
`
`device by means of the driver for the I/O device customary in a host device.” (Ex.
`
`1002, p. 245.)
`
`
`
`
`- 14 -
`
`

`
`In response to the Office Action, the Applicant amended the independent
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`claims to add three limitations: (1) the data transmit/receive devices is “arranged for
`
`providing analog data;” (2) a sampling circuit to convert the analog data into a
`
`digital form; and (3) first and second command interpreters (claims 1 and 12). (Ex.
`
`1002, pp. 257–58.) To distinguish these amended claims over the cited rejection,
`
`Applicant argued that McNeill “provide[s] access to a non-SCSI device”—a
`
`magnetic disk—“via a SCSI bus” and therefore “does not disclose that the data
`
`transmit/receive device is arranged for providing analog data.” (Ex. 1002, p. 255.)
`
`Applicant also argued that McNeill “does not include a first command interpreter
`
`that… lies to the host computer as to the real nature of the data transmit/receive
`
`device.” (Ex. 1002, p. 256.) Based on these arguments, the Examiner subsequently
`
`allowed the claims. (Ex. 1002, p. 262.)
`
`Level of ordinary skill in the art.
`
`D.
`Based on the disclosure of the ’399 patent, a person having ordinary skill in
`
`the art at the rel