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 IPR2016-01844
`
`U.S. PATENT NO. 9,189,437
`
`______________________
`
`DECLARATION OF DR. KENNETH FERNALD UNDER 37 C.F.R. § 42.53
`
`Papst Licensing GmbH & Co., KG.
`Petitioner - Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01844
`EXH. 2001
`
`1
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE, INC.
`PETITIONER
`
`V.
`
`PAPST LICENSING GMBH & CO., KG
`PATENT OWNER
`______________________
`
`CASE IPR2016-01844
`
`U.S. PATENT NO. 9,189,437
`
`______________________
`
`DECLARATION OF DR. KENNETH FERNALD UNDER 37 C.F.R. § 42.53
`
`Papst Licensing GmbH & Co., KG.
`Petitioner - Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01844
`EXH. 2001
`
`1
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`TABLE OF CONTENTS ................................................................................................... II
`
`INTRODUCTION ............................................................................................................. 1
`
`QUALIFICATIONS .......................................................................................................... 1
`
`COMPENSATION AND PRIOR TESTIMONY .............................................................. 5
`
`INFORMATION CONSIDERED ..................................................................................... 5
`
`RELEVANT LEGAL STANDARDS ............................................................................... 6
`
`A. Written Description Requirements ........................................................................ 6
`
`B.
`
`Negative Claim Limitations ................................................................................... 6
`
`VII.
`
`PERSON OF ORDINARY SKILL IN THE ART ............................................................. 7
`
`VIII. SUMMARY OF THE ‘437 PATENT ............................................................................... 8
`
`IX.
`
`ANALYSIS AND OPINIONS .......................................................................................... 9
`
`A.
`
`B.
`
`C.
`
`The ‘755 Application Supports the Claimed “Multi-purpose Interface” ............... 9
`
`The ‘755 Application Supports the Claimed “File System” ................................ 14
`
`The ‘755 Application Supports the Claimed User Interaction Elements ............. 16
`
`CONCLUDING REMARKS ........................................................................................... 20
`
`EXHIBIT A: CURRICULUM VITAE OF DR. KENNETH W. FERNALD ................. 21
`
`X.
`
`XI.
`
`XII.
`
`EXHIBIT B: MATERIALS CONSIDERED................................................................... 27
`
`ii
`
`2
`
`
`
`II.
`
`INTRODUCTION
`
`1. My name is Kenneth Fernald, Ph.D. I have been retained by counsel for
`
`Papst Licensing GmbH & Co., KG as an expert witness in the above-captioned
`
`proceeding.
`
`2.
`
`I understand that Apple, Inc. (“Petitioner”) has alleged claims 1, 4–6, 9–
`
`16, 18, 30, 32, 34, 43, and 45 of U.S. Patent No. 9,189,437 ("the ‘437 Patent") are
`
`unpatentable over the prior art cited in the above-captioned inter partes review.
`
`3.
`
`I have been asked to provide an opinion regarding the sufficiency of the
`
`March 1997 German application (“the ‘755 application”) in supporting certain
`
`claimed features of the ‘437 patent.
`
`III. QUALIFICATIONS
`
`4. My qualifications are summarized here and are addressed more fully in
`
`my CV attached as EXHIBIT A. I earned my Bachelor of Science and Master of
`
`Science degrees in Electrical Engineering from North Carolina State University
`
`(NCSU) in 1985 and 1987. During this period, I worked for the Space Electronics
`
`Group developing software for predicting the effects of radiation environments on
`
`integrated circuits. I also consulted for the Naval Research Laboratory (NRL). My
`
`services to NRL included the design of dosimetry instrumentation and the execu-
`
`tion of radiation studies on electronic devices at various facilities around the
`
`
`
`1
`
`3
`
`
`
`United States. I joined NASA Langley Research Center in 1987 where I designed
`
`motor control instruments and firmware for ground and space station experiments.
`
`5.
`
`I returned to NCSU in 1988 to earn my Ph.D. in Electrical Engineering.
`
`My doctoral research efforts were funded by the National Science Foundation and
`
`focused on the development of medical systems utilizing wireless digital telemetry.
`
`My work included a thorough investigation of medical telemetry technology and
`
`design of a microprocessor-based system for the fast prototyping of implantable
`
`medical instruments. I also completed the design and testing of various compo-
`
`nents of this system, including a bidirectional digital telemetry integrated circuit
`
`(IC) and a general-purpose sensor interface and conversion IC. I completed my
`
`Ph.D. in 1992, after which I joined Intermedics Inc. in Angleton, Texas.
`
`6. My responsibilities at Intermedics included system and circuit design of
`
`telemetry, signal-processing, and control ICs for medical devices. Examples in-
`
`clude the design of a sensor acquisition, compression, and storage IC for implanta-
`
`ble pacemakers and defibrillators. I also worked on advanced wireless digital te-
`
`lemetry technology, control ICs for therapy delivery in defibrillators, and software
`
`development for sensor waveform compression and recovery. I left Intermedics in
`
`1998 to join Analog Devices Inc. in Greensboro, NC.
`
`
`
`2
`
`4
`
`
`
`7. My work at Analog Devices included the design of advanced ICs for
`
`wireless digital communication devices. Specific projects included the design, de-
`
`bug, and testing of a base-band receiver IC for digital satellite systems. This IC
`
`performed QPSK demodulation, symbol recovery, and forward-error correction for
`
`high-bandwidth wireless video signals. I also performed system design for a
`
`CDMA base-band transceiver IC for personal communication devices.
`
`8.
`
`I rejoined Intermedics in 1998 as the first employee of an IC design
`
`group in Austin, Texas. I continued to work on next-generation medical telemetry
`
`ICs until Intermedics was acquired by Guidant in 1999. At that time I joined Cyg-
`
`nal Integrated Products, a startup company in Austin, Texas. My responsibilities at
`
`Cygnal included the design and development of mixed-signal embedded products
`
`for industrial and instrumentation applications. Specific projects included the de-
`
`sign of a proprietary communication system for in-system debug, a proprietary
`
`clock recovery method for USB devices, and the design of numerous analog and
`
`digital circuits and systems. I remained at Cygnal until its acquisition by Silicon
`
`Laboratories Inc. in 2003, at which time I joined Zilker Labs, a start-up company
`
`in Austin, Texas, as their first VP of Engineering and later became their Chief
`
`Technical Officer.
`
`
`
`3
`
`5
`
`
`
`9. My responsibilities at Zilker Labs included the development of advanced
`
`IC technologies for power management and delivery for board-level electronic sys-
`
`tems. Specific duties included architecture design and firmware development for
`
`all Zilker Labs products. I left Zilker Labs in 2006 to join Keterex as their first VP
`
`of Engineering. My responsibilities at Keterex included management of engineer-
`
`ing resources, design and layout of application-specific integrated circuits, and de-
`
`velopment of software and firmware for Keterex products. I joined Silicon Labor-
`
`atories in 2010 as a Principal Design Engineer and now hold the title of Distin-
`
`guished Engineer. My responsibilities include architecture development and de-
`
`sign of 8-bit and 32-bit microcontrollers. Projects have included microcontrollers
`
`for metrology, motor control, and low-power and USB applications.
`
`10. I hold over 55 patents on technologies such as wireless telemetry for
`
`medical devices, low-power analog-to-digital converters, security in embedded
`
`systems, clock recovery in communication systems, serial communication proto-
`
`cols, and power management and conversion. I have authored or co-authored over
`
`20 articles, presentations, and seminars on topics including radiation effects in mi-
`
`croelectronics, wireless medical devices, low-power circuit design, circuit design
`
`for digital communications, microcontrollers and embedded systems, and power
`
`management. I am also a co-author of the PMBus™ Power System Management
`
`Protocol Specification.
`
`
`
`4
`
`6
`
`
`
`IV. COMPENSATION AND PRIOR TESTIMONY
`
`11. I am being compensated at a rate of $350 per hour for my work in this
`
`matter. I am being reimbursed for reasonable and customary expenses associated
`
`with my work in this investigation. My compensation is not contingent on the out-
`
`come of this matter or the specifics of my testimony.
`
`12. Within the last five years, I have testified by deposition in the following
`
`cases (with underline indicating the represented party):
`
` Papst Licensing GmbH & Co., KG v. Apple, Case 6:15-cv-1095, deposed
`December 1, 2016.
`
` InfoBionic, Inc. v. Braemar Manufacturing, LLC, Cases IPR2015-01679
`and IPR2015-01688, deposed July 26, 2016.
`
` Luminara Worldwide, LLC v. Liown Electronics Co. Ltd., et al., Civil No.
`14-cv-03103 (SRN/FLN), deposed March 30, 2016.
`
` Dane Technologies, Inc. v. Gatekeeper Systems, Inc., Civil No. 12-cv-
`2730-ADM-AJB, deposed April 21-22, 2015 and August 2014.
`
`
`
`V.
`
`INFORMATION CONSIDERED
`
`13. My opinions are based on my years of education, research, and experi-
`
`ence, as well as my investigation and study of relevant materials. In forming my
`
`opinions, I have considered the materials I identify in this report and those in-
`
`cluded in EXHIBIT B of this report.
`
`14. This report represents only those opinions I have formed to date. I re-
`
`serve the right to revise, supplement, and/or amend my opinions stated herein
`
`
`
`5
`
`7
`
`
`
`based on any new information and on my continuing analysis of the materials al-
`
`ready provided.
`
`VI. RELEVANT LEGAL STANDARDS
`
`A. Written Description Requirements
`
`15. My analysis discussed in this declaration relates to the sufficiency of the
`
`written description of the ‘755 application. I have been advised that the test for
`
`sufficiency of the written description is whether the disclosure reasonably conveys
`
`to those skilled in the art that the Inventor had “possession” of the claimed subject
`
`matter. I understand that “possession” must be demonstrated by the material
`
`within the four corners of the ‘755 application. In other words, the ‘755 applica-
`
`tion must describe an invention understandable to a person of ordinary skill in the
`
`art and show that the Inventor actually possessed what is claimed.
`
`B. Negative Claim Limitations
`
`16. Certain challenged claims recite a negative limitation, i.e. an element
`
`which must be missing from an embodiment of the invention as defined by a claim.
`
`It is my understanding that the written description requirement is met for negative
`
`claim limitations where the specification describes alternatives. Inphi Corp. v.
`
`Netlist, Inc., 805 F. 3d 1350, 1356 (Fed. Cir. 2015). It is further my understanding
`
`
`
`6
`
`8
`
`
`
`that describing alternatives provides an implicit reason to exclude and no addi-
`
`tional discussion of advantages of exclusion or disadvantages of inclusion is neces-
`
`sary to satisfy the written description requirement. Id. at 1355.
`
`VII. PERSON OF ORDINARY SKILL IN THE ART
`
`17. I understand the invention date of ‘437 Patent to be March 4, 1997, based
`
`on the ‘755 application date listed on the face of the ‘437 Patent. A person of ordi-
`
`nary skill in the art (“POSITA”) is a hypothetical person of ordinary creativity hav-
`
`ing “the capability of understanding the scientific and engineering principles appli-
`
`cable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (B.P.A.I.
`
`1988). After reviewing the technology of the ‘437 Patent, I consider the relevant
`
`art to be, generally speaking, “the transfer of data and in particular to interface de-
`
`vices for communication between a computer or host device and a data transmit/re-
`
`ceive device from which data is to be acquired or with which two-way communica-
`
`tion is to take place.” Exhibit 1001 (‘437 patent) at 1:18-22. I consider examples
`
`of a person of ordinary skill in the art, as of March 4, 1997, to include a person
`
`with at least a bachelor’s degree in a related field such as computer engineering or
`
`electrical engineering and at least three years of experience in the design, develop-
`
`ment, and/or testing of hardware and software components involved with data trans-
`
`fer or in embedded devices and their interfaces with host systems. Alternatively, a
`
`
`
`7
`
`9
`
`
`
`POSITA may have five or more years of experience in these technologies, without a
`
`bachelor’s degree.
`
`VIII. SUMMARY OF THE ‘437 PATENT
`
`18. The ‘437 Patent generally describes apparatus and methods for achieving
`
`high data transfer rates for data acquisition systems to a host computer, without re-
`
`quiring an end user to install specialized software for each host computer system.
`
`See, e.g., Exhibit 1001 (‘437 patent) at 3:33-37.
`
`19. At the time of the invention, there were an increasing number and variety
`
`of data acquisition systems with the ability to capture high volumes of information,
`
`and an increasing demand to transfer that information to commercially available,
`
`general purpose computers. Id. at 1:29-60. However, due to the hierarchical na-
`
`ture of computer system software, device-specific drivers generally provide higher
`
`data transfer rates, while more general-purpose drivers support a wider variety of
`
`devices at the cost of lower performance. Id. at 1:24-2:19. This is true today, as
`
`well as at the time of the invention. The invention of the ‘437 patent allows a data
`
`acquisition system to identify itself as a type of device normally found in host
`
`computers in order to leverage the capabilities of drivers for such devices. Id. at
`
`4:16-41. Accordingly, by using the invention, users could obtain high data transfer
`
`performance without loading specific software that may otherwise be required to
`
`
`
`8
`
`10
`
`
`
`support a given data acquisition device on a given host computer system. Id. at
`
`3:29-46, 7:38-64, 8:36-41, 9:23-27, 11:38-55.
`
`IX. ANALYSIS AND OPINIONS
`
`20. It is my understanding that Petitioner contends the ‘437 patent is not enti-
`
`tled to priority benefit of the ‘755 application because that application allegedly
`
`does not provide sufficient written description for the challenged claims. Paper 2
`
`(Petition) at 9. In the following sections I discuss my analysis and opinions for
`
`each of the claimed features for which Petitioner contends lacks support by the
`
`‘755 application.
`
`A. The ‘755 Application Supports the Claimed “Multi-purpose Inter-
`face”
`
`21. Based on the disclosure of the ‘755 application, it is my opinion that a
`
`person of ordinary skill in the art would understand the Inventor to be in posses-
`
`sion of an invention including a connection to a host system via a multi-purpose in-
`
`terface. A single-purpose interface is an interface designed to connect to one spe-
`
`cific type of device. For example, a classic floppy drive controller is one such sin-
`
`gle-purpose interface. A host computer simply assumes that a floppy disk drive
`
`(“FDD”) is attached to its floppy disk drive controller. Exhibit 1001 (‘437 Patent)
`
`at 3:17-22. As such, a single-purpose interface generally requires no means of de-
`
`termining what type of device is attached – the host simply assumes any attached
`
`
`
`9
`
`11
`
`
`
`device is of the expected type. The ‘755 application makes it clear that such a sin-
`
`gle-purpose interface is undesirable, stating “it is desirable that an interface be so
`
`flexible that very different electrical or electronic systems can be linked to a host
`
`device using an interface.” Exhibit 1050 (‘755 application) at 002 (underline
`
`added).
`
`22. As an alternative to a single-purpose interface, the ‘755 application de-
`
`scribes using a host “input/output interface” which supports the ability of the host
`
`to determine what type of device is attached. See, e.g., Exhibit 1050 (‘755 applica-
`
`tion) at 001 (“when the host device makes a request via the first coupling device
`
`[of the input/output interface] …”), and at 003 (“in the case of a request from the
`
`host device via the first connecting device, which affects the type of device that is
`
`linked to the host device,” “[when the host system is booted] normal BIOS routines
`
`output a command to each input/output interface … recognized among experts as
`
`an ‘INQUIRY’ command”). A person skilled in the art would understand an in-
`
`put/output interface which supports multiple device types, and as a consequence
`
`has the ability to determine what device type is attached, as a multi-purpose inter-
`
`face.
`
`23. Further, the ‘755 application describes at least two well-known multi-
`
`purpose interfaces, the Small Computer System Interface (“SCSI”) and the En-
`
`hanced Parallel Port interface (“EPP”), also known as the IEEE 1284 interface.
`
`
`
`10
`
`12
`
`
`
`See, e.g., Exhibit 1050 (‘755 application) at 002 and 003. The SCSI interface de-
`
`scribed in the ‘755 application is a multi-purpose interface which can connect to a
`
`variety of devices. The SCSI standard states “SCSI-2 includes command sets for
`
`magnetic and optical disks, tapes, printers, processors, CDROMs, scanners, me-
`
`dium changers, and communications devices.” Exhibit 1012 (ANSI INCITS 131-
`
`1994 [S2013]) at Abstract. The SCSI standard further describes the ability to de-
`
`termine which type of device is attached, stating “[t]he formalized sequence of re-
`
`quests identify the type of attached SCSI-2 device, the characteristic of the device,
`
`and all the changeable parameters supported by the device.” Exhibit 1012 (ANSI
`
`INCITS 131-1994 [S2013]) at 6 (underline added). Further, the SCSI standard
`
`states:
`
`The INQUIRY command may be used by a system to de-
`termine the configuration of the SCSI bus. Target devices
`respond with information that includes their type and
`standard level and may include the vendor’s identifica-
`tion, model number and other useful information.
`
`Exhibit 1012 (ANSI INCITS 131-1994 [S2013]) at 85 (underline
`
`added).
`
`24. In addition, the EPP interface described in the ‘755 application is also a
`
`multi-purpose interface which can connect to a variety of devices and has the abil-
`
`ity to detect what type of device is attached. The IEEE 1284-1994 standard de-
`
`
`
`11
`
`13
`
`
`
`scribes the EPP interface as providing “bidirectional parallel communications be-
`
`tween hosts and printers or other peripherals.” Exhibit 2004 (IEEE Std 1284-1994)
`
`at Abstract (underline added). This standard further describes, in part, the purpose
`
`of the EPP interface as follows:
`
`This standard was developed to provide an open path for
`communications between computers and more intelligent
`printers and peripherals. The availability of a standard bi-
`directional protocol will encourage the development of
`new peripherals that return significant data, as well as
`basic status, to the host.
`
`Exhibit 2004 (IEEE Std 1284-1994) at 1 (underline added). The EPP
`
`standard further describes the ability to determine what type of device is at-
`
`tached:
`
`Prior to the first peripheral-to-host transfer, the host does
`not know the type of device to which it is attached, or
`how to communicate with it. The device identification
`option allows the host to request ID information from the
`peripheral using one of the IEEE 1284 reverse data trans-
`fer modes (Nibble, Byte, or ECP). The peripheral identi-
`fies itself by sending a sequence of bytes to the host indi-
`cating its device type, device family, and language capa-
`bilities.
`
`Exhibit 2004 (IEEE Std 1284-1994) at 17 (underline added). As explained
`
`above, the ‘755 application describes a variety of multi-purpose interfaces and ex-
`
`pressly utilizes features common to multi-purpose interfaces, such as the ability to
`
`request the identity of the attached device, to achieve the goals of the invention.
`
`
`
`12
`
`14
`
`
`
`As such, it is my opinion that the ‘755 application demonstrates the Inventor pos-
`
`sessed an invention including a multi-purpose interface, as understood by a person
`
`of ordinary skill in the art.
`
`25. In what appears to be an attempt to identify the ‘437 patent’s inclusion of
`
`the term “multi-purpose interface” as new material, Petitioner contends that “the
`
`inventor understood multi-purpose interfaces as a replacement for BIOS routines
`
`integrating classical input/output interfaces.” Paper 2 (Petition) at 14 (underline
`
`added). I disagree. The evidence discussed below shows the Inventor understood
`
`the multi-purpose interface could be serviced by BIOS routines, a separate driver
`
`installed on the host system, or a combination of both.
`
`26. First, a citation offered by Petitioner actually contradicts the contention
`
`that the Inventor understood the drivers for a multi-purpose interface to be separate
`
`from the BIOS. Specifically, the ‘437 patent states “however drivers for multi-pur-
`
`pose interfaces can also already be integrated in the BIOS of the host device.” Ex-
`
`hibit 1001 (‘437 patent) at 3:64-66 (underline added). This material was cited by
`
`Petitioner, yet Petitioner neglected to comment on the underlined phrase. Paper 2
`
`(Petition) at 13. Further, the statement immediately following this material reads
`
`“[i]t is of course also possible to use BIOS routines in parallel with the specific
`
`driver software for the multi-purpose interface.” Exhibit 1001 (‘437 patent) at 4:1-
`
`3. The ‘437 patent further describes using either BIOS routines or separate drivers
`
`
`
`13
`
`15
`
`
`
`for operating the multi-purpose interface, stating “communication between the host
`
`device and the multi-purpose interface can take place not only via drivers for in-
`
`put/output device[s] customary in a host device which reside in the BIOS system of
`
`the host device but also via specific interface drivers which, in the case of SCSI in-
`
`terfaces, are known as multi-purpose interface ASPI (advanced SCSI programming
`
`interface) drivers.” Exhibit 1001 (‘437 patent) at 10:23-29.
`
`27. As indicated by the evidence cited above, the Inventor clearly did not un-
`
`derstand that drivers for a multi-purpose interface would necessarily replace BIOS
`
`routines. In fact, it is patently clear that the Inventor describes the multi-interface
`
`drivers as residing solely in the BIOS, residing as separately installed drivers, or
`
`operating as a parallel combination of both. As such, Petitioner’s incorrect conten-
`
`tion fails to show that the ‘755 application does not support the multi-purpose in-
`
`terface requirements of claims of the ‘437 patent.
`
`B.
`
`The ‘755 Application Supports the Claimed “File System”
`
`28. It is my understanding that Petitioner contends the ‘755 application “in-
`
`cludes no mention whatsoever of the ‘file system in the ADGPD’” and as such
`
`fails to support the requirements of a file system in claims of the ‘437 patent. Pa-
`
`per 2 (Petition) at 14. I disagree. As indicated by the evidence discussed below, a
`
`person of ordinary skill in the art would understand from the ‘755 application that
`
`the Inventor possessed an invention including a file system.
`
`
`
`14
`
`16
`
`
`
`29. In general, a file system is a scheme or method for storing data as a col-
`
`lection of files. The ‘755 application repeatedly describes multiple files stored in
`
`the interface device of the invention, and as discussed below, a person skilled in
`
`the art would understand the interface device inherently has a file system. For ex-
`
`ample, the ‘755 application states:
`
`Even files that can be executed by the host device, e.g.,
`batch files or executable files (BAT files or EXE files) or
`even help files can be implemented in the interface de-
`vice ... This is because these EXE files are already in-
`stalled on the interface device 10 and appear in the vir-
`tual root directory through which the host device can ac-
`cess any programs stored on the interface device 10.
`
`Exhibit 1050 (‘755 application) at 004 (underline added).
`
`30. Simply put, in order to be able to store these files and make them availa-
`
`ble to the host system, the interface device of the invention inherently implements
`
`a file system. Further, the ‘755 application explicitly describes a key component of
`
`this file system, e.g. a “file position table” (or “FAT”) when it states:
`
`Based on a command by the host device, the directory of
`the “virtual” hard disk drive, which is simulated by the
`interface device 10 to the host device, the digital signal
`processor responds to the host device exactly as a con-
`ventional hard disk would respond; namely, the file posi-
`tion table or FAT on a sector specified in the boot se-
`quence is read, which is normally the first writable sec-
`tor, and transferred to the host device.
`
`Exhibit 1050 (‘755 application) at 004 (underline added).
`
`
`
`15
`
`17
`
`
`
`31. As described above, the digital signal processor responds “exactly as a
`
`convention hard disk” by reading its “file position table.” In order to read this ta-
`
`ble, not only is the table clearly stored in the interface device, but it contains the in-
`
`formation necessary to locate the various files stored in the interface device, such
`
`as the BAT, EXE, and help files described above. See, e.g., Exhibit 1050 (‘755 ap-
`
`plication) at 003 (where the last paragraph describes a file position table as con-
`
`taining the position and length of files).
`
`C. The ‘755 Application Supports the Claimed User Interaction Ele-
`ments
`
`32. Petitioner contends that the ’755 application fails to support the claim
`
`limitation prohibiting “requiring any end user to interact with the computer to set
`
`up a file system in the ADGPD at any time.” Paper 2 (Petition) at 14. I disagree.
`
`As explained below, the ‘755 application repeatedly teaches alternatives where the
`
`user intervenes in the setup and operation of the interface device of the invention.
`
`And while it is my understanding that a motivation for excluding described alterna-
`
`tives is not required by the legal standards, the ‘755 application does teach mini-
`
`mizing user interaction as a means of reducing errors.
`
`33. The ‘755 application describes alternatives of user intervention in the
`
`setup and function of the interface device of the invention. For example, the ‘755
`
`application states “[t]he experienced user, despite the most simple operating plat-
`
`form, has at all times the option of a system-proximate intervention in the function
`
`
`
`16
`
`18
`
`
`
`of the interface device.” Exhibit 1050 (‘755 application) at 006 (underline added).
`
`More specifically, “[t]he user can [] create a configuration file from the host device
`
`to the interface device” which can “control various functions of the interface de-
`
`vice.” Exhibit 1050 (‘755 application) at 004 (underline added).
`
`34. Further, the ‘755 application explicitly describes avoiding user interven-
`
`tion in the installation of the interface device of the invention. This exclusion is
`
`accomplished, in part, by simulating a device known to the host, e.g. a hard disk
`
`drive, thereby supporting “plug-and-play” where “[t]he user no longer has to deal
`
`with the installation of the interface device [] on the host device by loading special
`
`drivers rather the interface [] is automatically made available when booting the
`
`host system.” Exhibit 1050 (‘755 application) at 004 (underline added).
`
`35. Petitioner contends that a description of a negative claim limitation must
`
`include “a reason to exclude the relevant limitation.” Paper 2 (Petition) at 14.
`
`While it is my understanding that no reason is required, the ‘755 application does
`
`describe reasons to not require user interaction, specifically as a means of reducing
`
`errors. A primary goal of the invention described in the ‘755 application is to “pre-
`
`vent operating errors” by providing a design in which a user “must not operate dif-
`
`ferent interfaces in different ways for every different application.” Exhibit 1050
`
`(‘755 application) at 002 (underline added). Instead, the invention strives to pro-
`
`
`
`17
`
`19
`
`
`
`vide “one universal interface service [] created for as large a number of applica-
`
`tions as possible.” Id. This is accomplished, in part, by simulating a device known
`
`to the host, e.g. a hard disk drive, thereby supporting “plug-and-play” where “[t]he
`
`user no longer has to deal with the installation of the interface device [] on the host
`
`device by loading special drivers rather the interface [] is automatically made
`
`available when booting the host system.” Exhibit 1050 (‘755 application) at 004
`
`(underline added). This simulation of a “virtual” hard drive “provides simple oper-
`
`ating and expansion options” and “simple deployment even in portable, flexible
`
`host units.” Exhibit 1050 (‘755 application) at 006 (underline added). Simply put,
`
`the ‘755 application describes an invention which strives to limit user interaction,
`
`e.g. by providing for simple operation of the device, as a means of “prevent[ing]
`
`operating errors.”
`
`36. As indicated by the above evidence, a person skilled in the art would un-
`
`derstand the alternative of user intervention in the operation of the interface device.
`
`As such, the ‘755 application satisfies the written description requirement for ex-
`
`cluding such user intervention, e.g. excluding requiring the user set up a file sys-
`
`tem in the interface device. Further, the ‘755 application describes reasons to
`
`avoid or restrict user interaction with the interface device, including examples such
`
`as “prevent[ing] operating errors,” eliminating “a source of errors,” and allowing
`
`the interface device to be “automatically recognized when switching on or booting
`
`
`
`18
`
`20
`
`
`
`the host system” such that “the user no longer has to deal with installation of the
`
`interface device.” As such, it is my opinion that the ‘755 application supports
`
`claim limitations such as “without requiring any end user to interact with the com-
`
`puter to set up a file system in the ADGPD at any time,” even under Petitioner’s
`
`understanding of the requirements.
`
`
`
`
`
`19
`
`21
`
`
`
`x.
`
`CONCLUDING REMARKS
`
`37. For the purpose of preparing this report, I have reviewed all the materials
`
`and conducted analyses that I believe are appropriate given the evidence available
`
`at this time. I understand that I will have the right to supplement or amend this re-
`
`port if additional evidence or information pertinent to my opinions becomes availa-
`
`ble, and I plan to do so if necessary.
`
`22
`
`
`
`XI. EXHIBIT A: CURRICULUM VITAE OF DR. KENNETH W. FERNALD
`
`DEGREES
`Ph.D., Electrical Engineering, North Carolina State University, 1992
`Dissertation: "A Microprocessor-Based System for the Fast Prototyping of Implantable Instru-
`ments for Biomedical Research Applications"
`M.S., Electrical Engineering, North Carolina State University, 1987
`Thesis: "Simulation of Circuit Response to Proton Environments"
`B.S., Electrical Engineering, North Carolina State University, 1985
`
`CONTINUED EDUCATION
` Analog Bipolar Cell Design, 1997
` Spread-Spectrum Wireless, IS-95 and Third Generation CDMA Digital Cellular Com-
`munications, 1997
` RF Design for Personal Communication Systems, 1995
` Switched Capacitor Circuit Design, 1994
` Low-Power CMOS Circuit Design, 1993
` Cardiac Pacing Technology, 1992
` Digital Signal Processing, 1988
` Adaptive Filter Design, 1987
`
`EXPERT WITNESS WORK (last five years)
` Papst Licensing GmbH & Co., KG v. Apple, Case 6:15-cv-1095, deposed Decem-
`ber 1, 2016.
` InfoBionic, Inc. v. Braemar Manufacturing, LLC, Cases IPR2015-01679 and
`IPR2015-01688, deposed July 26, 2016.
` Luminara Worldwide, LLC v. Liown Electronics Co. Ltd., et al., Civil No. 14-cv-
`03103 (SRN/FLN), deposed March 30, 2016.
` Dane Technologies, Inc. v. Gatekeeper Systems, Inc., Civil No. 12-cv-2730-ADM-
`AJB, deposed April 21-22, 2015 and August 2014.
`
`
`EXPERIENCE
`Consulting (Part-time)
`Provide technical analysis and design services to various clients. Projects include:
` IP analysis on topics such as circuit and system design, embedded systems, wired and
`wireless networking, firmware and software, consumer electronic platforms, etc.
` Design, fabrication, and testing of a high-speed USB isolator
` Software and firmware development for a USB-to-SPI/SMBus Serial Adapter
` Analysis and architecture design for a high-density, nano-device memory platform
` Analysis for a massively dense 3D integrated memory
` Design of a radiation-tolerant, nano-device memory IC
`
`
`
`
`21
`
`23
`
`
`
`
`Distinguished Engineer, Silicon Laboratories, Inc
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