`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`APPLE INC.
`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO. KG
`Patent Owner
`
`___________________
`
`Case IPR2016-01860
`Patent 8,966,144
`___________________
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`PETITIONER’S REPLY TO THE PATENT OWNER RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2016-01860
`Patent No. 8,966,144
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`TABLE OF CONTENTS
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`I.
`II.
`
`Introduction ........................................................................................................ 1
`Claim Construction ............................................................................................ 2
`The Phillips claim construction standard applies. .................................. 2
`A.
`“multi-purpose interface” and “customary device driver” ..................... 2
`B.
`“input/output device” ............................................................................... 4
`C.
`III. Response to PO’s Arguments ............................................................................ 5
`The applied combination teaches that “the processed analog data
`A.
`is stored in the data storage memory as at least one file of
`digitized analog data.” ............................................................................ 5
`The applied combination teaches or suggests “an automatic
`recognition process” and “at least one parameter to be
`automatically sent through the i/o port … wherein the at least
`one parameter provides identification information.” ...........................12
`The applied combination teaches or suggestions the negative
`limitation “without requiring any user-loaded file transfer
`enabling software to be loaded on or installed in the computer at
`any time.” ...............................................................................................19
`IV. PO does not raise arguments specific to the dependent claims. ...................... 23
`V.
`PO’s belief of unconstitutionality is not a request for relief. .......................... 24
`VI. Conclusion ....................................................................................................... 24
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`B.
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`C.
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`TABLE OF AUTHORITIES
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`Case IPR2016-01860
`Patent No. 8,966,144
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`Cases:
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`Apple Inc. v. Papst Licensing GMBH & Co.,
`IPR2016-01842 (Apr. 24, 2017) ............................................................................ 2, 3
`
`In re CBS-Sys. Int’l,
`832 F.3d 1335 (Fed. Cir. 2016).................................................................................. 2
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004)................................................................................ 10
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012).................................................................................. 6
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003).................................................................................. 3
`
`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).............................................................................. 2, 3
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .................................................................................... 4
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`EXHIBIT LIST
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`Case IPR2016-01860
`Patent No. 8,966,144
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`
`Exhibit
`1001
`1002
`1003
`
`1004
`1005–1006
`1007
`
`1008
`1009
`1010
`1011
`1012
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`1013
`1014
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`1015
`1016
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`1017
`1018
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`1019
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`1020
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`1021–1023
`1024
`1025–1029
`1030
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`1031
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`1032–1040
`1041
`
`Description
`U.S. Patent 8,966,144 to Tasler
`File History Excerpts for U.S. Patent 8,966,144 to Tasler
`Declaration of Dr. Erez Zadok in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,966,144
`Curriculum Vitae of Dr. Erez Zadok
`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).
`Intentionally Left Blank
`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
`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
`Pucci, M., “Configurable Data Manipulation in an Attached
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`Exhibit
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`1042
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`1043
`1044
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`1045
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`1046–1051
`1052
`1053
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`1054
`1055
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`1056
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`
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`Description
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`Case IPR2016-01860
`Patent No. 8,966,144
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`Multiprocessor, “1991
`U.S. Patent No. 4,790,003 to Kepley et al., titled “Message Service
`System Network”
`Intentionally Left Blank
`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, Jr., titled “Electro-Optical
`and Electronic Switching Systems”
`Intentionally Left Blank
`Declaration of Michele Nelson, USENIX
`U.S. Patent No. 5,617,423 to Li et al., titled “Voice Over Data
`Modem With Selectable Voice Compression”
`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”)
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`I.
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`Introduction
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`Case IPR2016-01860
`Patent No. 8,966,144
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`Choosing not to cross-examine Petitioner’s expert, Patent Owner (PO) filed a
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`response presenting three unsupported, conclusory arguments that are legally
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`insufficient and technically incorrect. Each of Petitioner’s rebuttal arguments
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`ignores the actual combination set forth in the Petition; instead dissecting the
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`combination and addressing only the primary reference, Pucci, in isolation and out
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`of context. But PO goes further by not only mischaracterizing the teachings of Pucci
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`in its rebuttal arguments but also taking positions directly contrary to Pucci’s
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`express disclosures. For example, despite Pucci explicitly teaching the use of the
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`SCSI standard, PO argues that Pucci could not be combined with teachings of
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`Schmidt which describes the SCSI standard. PO continues its pattern of obfuscation,
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`arguing that a person having ordinary skill in the art (POSITA) would not have
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`known how to store data as files in Pucci’s system, despite its own expert admitting
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`that use of files to store data was well-known and Pucci explicitly stating that the
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`data stored in its device can be “traditional file system data.”
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`In this Reply, Petitioner exposes the technical flaws in PO’s analysis and
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`explains why the art supports a finding of obviousness under the correct
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`understanding of the technology at issue in this case.
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`II. Claim Construction
`Before replying to the arguments in the POR, Petitioner first presents
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`arguments and evidence for the appropriate construction of disputed claim terms per
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`the Board’s instruction in the Institution Decision. (See Inst. Dec., p. 8 n.8.)
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`A. The Phillips claim construction standard applies.
`The parties agree—the ’144 patent expires on March 3, 2018. (See POR,
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`p. 8.) Because the ’144 patent expires before the statutory deadline to issue a Final
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`Written Decision (i.e., April 17, 2018), the Phillips claim construction standard
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`applies in this proceeding. See In re CBS-Sys. Int’l, 832 F.3d 1335, 1342 (Fed. Cir.
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`2016). Because the prosecution history does not contain any disclaimers for the
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`claim terms at issue in this case, there is no meaningful difference between the
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`Phillips claim construction and the broadest reasonable interpretation.
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`“multi-purpose interface” and “customary device driver”
`B.
`The Board did not construe “multi-purpose interface” and “customary device
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`driver” in the present case. (Inst. Dec., pp. 7-8.) However, the Board construed these
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`terms in co-pending IPR2016-01842 addressing a patent sharing a common
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`specification with the ’144 Patent. See Apple Inc. v. Papst Licensing GMBH & Co.,
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`IPR2016-01842, Paper 10 at pp. 14-17 (Apr. 24, 2017). The Board should adopt the
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`same constructions in this inter partes review. In the IPR2016-01842 proceeding,
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`the Board construed “multi-purpose interface” to encompass a “SCSI Interface.”
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`(IPR2016-01842, Paper 10 at p. 15 (“On this record and for purposes of the
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`[Institution] Decision, we find it sufficient to construe a ‘multi-purpose interface’ to
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`encompass a ‘SCSI interface.’”) The Board also construed “customary device
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`driver” to encompass “a driver for a device normally present in most commercially
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`available host devices (e.g., a hard disk driver or a SCSI driver).” (IPR2016-01842,
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`Paper 10 at 17.) PO did not dispute these constructions. (IPR2016-01842, Paper 16
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`at 8-9.) And “unless otherwise compelled,…the same claim term in the same patent
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`or related patents carries the same construed meaning.” Omega Eng’g, Inc. v. Raytek
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`Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003).
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`With respect to the term “customary device driver,” the record is sufficiently
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`developed to resolve the dispute between the parties as to whether the customary
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`device driver must be customary at the time of the invention. Under Phillips, “the
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`ordinary and customary meaning of a claim term is the meaning that the term would
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`have to a person of ordinary skill in the art in question at the time of the invention,
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`i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp.,
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`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (emphasis added); see also PC
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`Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1359 (Fed. Cir. 2005)
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`(a claim term “must be interpreted as of [the] effective filing date”).
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`Consistent with the Phillips standard and the Federal Circuit’s finding in In re
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`Papst Licensing Digital Camera Patent Litig., the District Court construed
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`“customary” as including a limitation of “normally part of commercially available
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`computer systems at the time of the invention.” (Ex. 2007, Claim Construction
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`Order, pp. 27-28 (emphasis added)); see also In re Papst Licensing Digital Camera
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`Patent Litig., 778 F.3d 1255, 1269–70 (Fed. Cir. 2015). For consistency with the
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`District Court Construction Order, the Board should construe “customary device
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`driver” as a “driver for a device normally part of commercially available computer
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`systems at the time of the invention.” (See Ex. 2007, p. 28.)1
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`“input/output device”
`C.
`The Board did not construe “input/output device.” (Inst. Dec., pp. 7-8.) And
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`the Board need not construe “input/output device” in the Final Written Decision
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`because no construction is necessary to resolve the dispute between the parties. See
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). But
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`if the Board determines that “input/output device” does need a construction, the
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`Board should construe the “/” in this term as “and/or.” (See Petition, pp. 10-11.)
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`1 This construction should not change the Board’s finding that the customary
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`device driver encompasses a hard disk driver or a SCSI driver. As Dr. Zadok
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`explains, hard disk and SCSI drivers were both customary as of the earliest possible
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`priority date for the ’144 patent. (Zadok Decl., ¶132.)
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`PO’s expert explained during deposition that an input/output device at the time of
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`the alleged invention included input-only devices, output-only devices, and input-
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`and-output devices. (See Gafford Depn. I, 89:3-94:9.) This interpretation is also
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`consistent with the District Court’s interpretation of the symbol “/” in the term “data
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`transmit/receive device” in a related patent. (See Ex. 2007, pp. 36-37.)
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`III. Response to PO’s Arguments
`As Petitioner details below, the Board should find all challenged claims
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`unpatentable because each of PO’s three arguments rest on fundamental
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`misinterpretations of Pucci’s teachings and the SCSI Standard.
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`A. The applied combination teaches that “the processed analog data is
`stored in the data storage memory as at least one file of digitized
`analog data.”
` PO argues that Pucci fails to disclose that “the processed analog data is
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`stored in the data storage memory as at least one file of digitized analog data” as
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`recited in independent claims 1 and 86. (POR, pp. 15-16.) In the first instance, this
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`argument is misplaced because the Petition relies on the combination of Pucci and
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`Kepley—not Pucci alone—to disclose this claim limitation. (See Petition, pp. 12,
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`25.)
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`PO’s arguments against the combination of Pucci and Kepley are equally
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`flawed. PO does not dispute that Kepley teaches that “the processed analog data is
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`stored in the data storage memory as at least one file of digitized analog data.” (See
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`POR, pp. 15-16.) PO instead alleges that a person of ordinary skill in the art
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`(“POSITA”) would not have combined Pucci and Kepley because: (1) the
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`combination would have changed Pucci’s principle of operation; (2) the
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`combination would have rendered Pucci unsatisfactory for its intended purpose; and
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`(3) Pucci teaches away from storing digitized analog data as a file. (POR, pp. 13, 17,
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`34-35.) For the reasons that follow, a POSITA would have known how to
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`implement a file-storage system in Pucci while maintaining Pucci’s principle of
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`operation and intended purpose. A POSITA would have also been motivated to
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`implement a file-storage system in Pucci for the reasons established in the
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`Petition—reasons that PO did not address or refute in its Response. (Compare
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`Petition, pp. 26-27, with POR, p. 17.)
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`First, PO incorrectly concludes that combining Pucci and Kepley would
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`“significantly impact Pucci’s principle of operation.” (See POR, p. 17.) As an initial
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`matter, PO’s Response does not define Pucci’s principle of operation and therefore
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`lacks foundation for this conclusion. See In re Mouttet, 686 F.3d 1322, 1332 (Fed.
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`Cir. 2012) (broadly defining the principle of operation before determining whether a
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`combination would change the principle of operation). Irrespective of this flaw, the
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`conclusion is technically incorrect. Pucci uses a multiprocessor tasking system
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`(named ION) and a Small Computer Systems Interface (SCSI) to emulate a
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`peripheral device that a computer workstation (i.e., the host) knows how to deal
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`with. (See Petition, pp. 1-2 (citing Ex. 1041, Pucci, pp. 217, 220; Ex. 1003, Zadok
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`Decl., ¶¶63, 107, 136, 146; Gafford Depn. II, 60:2-61:11) (admitting that use of a
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`file system was well known and understood).) Storing digitized analog data as at
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`least one file in a file-storage system would not change Pucci’s use of ION and
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`SCSI to operate as an emulation device. (Zadok Decl. II, ¶¶9-14.) To the contrary,
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`Pucci provides explicit motivation to use a file-storage system for emulation
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`purposes. (See Pucci, pp. 220-21; Petition, pp. 26-27; Zadok Decl., ¶¶65, 100; see
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`also Gafford Depn. II, 42:17-8, 57:14-22 (admitting that use of a file system was
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`well known and understood).) Pucci states that its ION Node mimics the behavior of
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`a conventional device, and “[t]he ‘data’ contained in this pseudo-disk device can be
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`random read/write data, traditional file system data, or more complex objects for a
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`variety of applications managed by tasks running within the ION system.” (Pucci,
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`pp. 220-21 (emphasis added).) Using a well-known, well understood, and
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`“traditional” file system to store the digitized analog data as a file is not contrary to
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`Pucci’s principle of operation but entirely consistent with the teachings in the
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`reference and the understanding of a POSITA as of the earliest possible priority date
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`of the ’144 patent. (See Zadok Decl. II, ¶¶9-14.)
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`Second, combining Pucci and Kepley would not have prevented Pucci from
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`achieving its intended purpose even under the PO’s crimped definition. (Contra
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`POR, p. 17.) PO alleges that Pucci’s intended purpose is “permitting data flow into
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`the host.” (POR, p. 17.) However, notwithstanding this generic stated purpose, PO
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`applies extremely narrow constraints—namely that the alleged “data flow into the
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`host” is limited to writing into the host using a first in/first out (FIFO) approach.
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`(See POR, p. 15-16.) Pucci’s data transfer is not so limited. (Zadok Decl. II, ¶¶9-10.)
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`Moreover, storing data as a file (e.g., a collection of data blocks) would not be
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`contrary even under PO’s overly narrow (and incorrect) interpretation. A POSITA
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`would have understood that any system, including Pucci’s ION Node, could store
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`the file as data blocks in its buffer and transfer the data blocks to the host in a
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`manner similar to a FIFO transfer, as confirmed by PO’s expert. (See Gafford Depn.
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`II, 63:3-9 (“So the data from the large buffer memory could be stored in a file on
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`ION’s local storage, correct? …A. I don’t see anything in the disclosure of ION that
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`would prevent a user from writing software which did that.”).) Indeed, this
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`implementation would be similar to the “real-time input files” embodiment
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`described in the ’144 patent and discussed by PO’s expert, Mr. Gafford, at
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`deposition. (See Ex. 1001, ’144 patent, 6:6-35; Gafford Depn. II, 53:22-12
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`(confirming that an implementation of the interface device’s file system uses real-
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`time input files).) The ’144 patent “real-time input files” embodiment buffers data
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`blocks and transfers them in real-time. (’144 patent, 6:5-35.)
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`Moreover, PO misstates Pucci’s intended purpose. As Pucci sets forth on its
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`first page, the intended purpose of ION is to provide disk read and write accesses,
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`while achieving “a high degree of application portability.” (Pucci, p. 217; Zadok
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`Decl. II, ¶13.) Throughout discussions of its numerous applications, Pucci reiterates
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`that ION remains portable across workstation changes, operating system releases,
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`and complete operating system changes. (Pucci, pp. 219, 221, 223, 230.) Storing
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`data as a file is not contrary to the actual intended purpose of providing disk read
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`and write accesses, while achieving a high degree of application portability. (Zadok
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`Decl. II, ¶¶13-14.) Indeed, storing data as a file provides read and write access while
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`achieving portability by enabling file transfer between the ION-enabled voice
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`messaging service system and other messaging service systems. (See Zadok Decl.,
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`¶¶96-97; Zadok Decl. II, ¶13.) For at least these reasons, the combination is not
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`contrary to Pucci’s intended purpose.
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`Third, contrary to PO’s contentions, Pucci does not teach away from
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`accessing digitized analog data in the form of files. (Contra POR, p. 13.)2 “[T]he
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`prior art’s mere disclosure of more than one alternative does not constitute a
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`teaching away from any of these alternatives because such disclosure does not
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`2 The Board should disregard Mr. Gafford’s opinion that Pucci teaches away
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`from storage of data as files because his opinion is based on an incorrect
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`understanding of the legal standard. (See Gafford Decl., ¶30 (conflating teaching
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`away and other bases for nonobviousness); Gafford Depo. II, 99:10-21.)
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`criticize, discredit, or otherwise discourage the solution claimed.…” In re Fulton,
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`391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Pucci does not criticize, discredit, or
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`otherwise discourage the use of a file-storage system. (Zadok Decl. II, ¶¶9-10.)
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`Pucci instead expressly encourages the use of traditional file-storage systems: “[t]he
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`‘data’ contained in this pseudo-disk device can be random read/write data,
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`traditional file system data, or more complex objects for a variety of applications
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`managed by tasks running within the ION system.” (See Pucci, pp. 220-21
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`(emphasis added); see also Petition, p. 25; Zadok Decl., ¶97; Gafford Depn. II,
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`80:12-20 (“[W]here would traditional file system data be stored in a system such as
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`Pucci? A. Well, Pucci has both hard drive and solid-state volatile buffer memory
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`and you could store it either place. If you cared about not losing it, you would store
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`it on the local hard drive.”).) For the analog-to-digital conversion application, Pucci
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`describes how the system extracts raw data from a converter and utilizes storage
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`(e.g., a buffer). (Pucci, pp. 231-32.) The analog-to-digital conversion application
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`then retrieves the data from five channels by reading the data block address of the
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`desired channel until all buffered data has been obtained. (Pucci, pp. 231-32.) The
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`fact that Pucci’s analog-to-digital conversion application is silent on whether the
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`data can be stored as a file is not a teaching away but rather indicative of Pucci’s
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`compatibility with alternative storage systems—one that uses a buffer to read five
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`channels of raw converted data and others that use a traditional file-storage system.
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`Moreover, as explained above, the ’144 patent itself discloses an embodiment that
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`uses buffer-like structures, referred to as real-time files, for data transfer. (See ’144
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`patent, 6:6-35; Gafford Depn. II, 53:22-12 (confirming that an implementation of
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`the interface device’s file system uses real-time input files).)
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`Pucci does not teach away from storing digitized analog data in a file system
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`as a file, and a POSITA would have known how to store digitized analog data as a
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`file without changing Pucci’s principle of operation or making Pucci unsatisfactory
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`for its intended purpose. (Zadok Decl. II, ¶14.) The Petition and supporting
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`declaration provided a rationale for combining Kepley’s voice mail file teachings
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`with the teachings of Pucci. (See Petition, pp. 25-27; Zadok Decl., ¶¶ 64–66, 99–
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`100.) Pucci in view of Shinosky, further in view of Kepley and Schmidt teaches this
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`claim limitation. (See also Inst. Dec., p. 16.)
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` PO further manufactures an argument against a combination of teachings
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`from Kepley and Pucci that Petitioner never presented or even suggested. PO argues
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`that a POSITA would not have combined Pucci and Kepley because Kepley uses a
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`separate database processor for storing digitized voice files. (POR, pp. 17, 35.) But
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`Petitioner neither relies on Kepley’s separate processor nor does Pucci need a
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`separate processor to store data as a file. Therefore, a major redesign to
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`accommodate a separate processor, as PO suggests, is unnecessary in Petitioner’s
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`applied combination. (Zadok Decl. II. ¶¶9-11.)
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`B.
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`The applied combination teaches or suggests “an automatic
`recognition process” and “at least one parameter to be automatically
`sent through the i/o port … wherein the at least one parameter
`provides identification information.”
`PO argues that Pucci fails to disclose “an automatic recognition process” as
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`recited in independent claim 1 and “at least one parameter to be automatically sent
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`through the i/o port…wherein the at least one parameter provides identification
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`information” as recited in independent claim 86. (POR, pp. 19-21.) This argument is
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`again misplaced because the Petition relies on Schmidt in combination with Pucci—
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`not Pucci alone—to disclose this claim limitation. (See Petition, p. 30.) The Petition
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`acknowledges that “[a]lthough Pucci teaches that a SCSI ‘host controller’ resides
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`within the host system (Pucci, pp. 238-239), Pucci does not explicitly disclose how
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`the SCSI bus connects to a workstation.” (Petition, p. 30.) The Petition then relies on
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`the teachings of Schmidt—a textbook on the standardized SCSI Bus and IDS
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`Interface—to fill in the details not provided by Pucci. (Petition, p. 30.)
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`Neither PO nor Mr. Gafford dispute that Schmidt teaches an automatic
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`recognition process. (See POR, pp. 21-25.) PO instead alleges that “any such
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`automatic identification process (as discussed in Schmidt) would cause the ION
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`Workstation [in Pucci] to attempt to access and/or reconfigure the ION Node in an
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`unpredictable and potentially destructive manner.” (POR, pp. 19-20.) But PO
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`provides no evidence or further explanation to support this speculation. PO’s failure
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`is understandable because Pucci’s ION Node is intended to operate using the full
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`capabilities of the SCSI standard, including SCSI’s automatic recognition process.
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`(See Zadok Decl. II, ¶¶16-17.)
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`Ground 1 relies on Pucci—a system that uses SCSI—and Schmidt—a
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`textbook describing SCSI. (Petition, pp. 10-12.) As Dr. Zadok explained in his
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`original declaration and reiterates in his reply declaration, SCSI is a standardized
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`interface that utilizes standardized commands. (Zadok Decl., ¶¶37, 45-49, 106, 119,
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`123, 152; Zadok Decl. II, ¶¶16-17.) And PO’s expert, Mr. Gafford, agrees. (Gafford
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`Depn. I, 18:21-20:9 (explaining that the INQUIRY command was known by those
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`skilled in the art because the command was part of the SCSI specification).) When a
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`host computer having a SCSI bus is turned on, the SCSI bus initialization
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`automatically occurs. (Zadok Decl., ¶111.) The host computer’s SCSI controller
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`issues the INQUIRY command to discover any peripheral devices attached to the
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`SCSI bus. (Zadok Decl., ¶111; see also Gafford Depn. I, 39:25-40:16 (explaining
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`that a device must implement the INQUIRY command to be compliant with the
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`SCSI standard); Gafford Depn. II, 35:5-36:10.) PO does not dispute these facts, and
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`Schmidt corroborates Dr. Zadok’s testimony. (See POR, p. 23; Schmidt, pp. 88, 132,
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`133, 138-41.)
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`Schmidt explains that “the INQUIRY command is capable of delivering a
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`wide variety of useful information.” (Ex. 1007, Schmidt, p. 141.) For example, as
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`shown in Table 12.12 of Schmidt (annotated below), the peripheral’s response to the
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`INQUIRY command includes the device class. (Schmidt, p. 139 (“The standard
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`INQUIRY data is structured in the following manner (Table 12.12)”).) To identify
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`itself as a disk drive, the peripheral would respond to the INQUIRY command with
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`the code “00h” (as shown below in Table 12.1 of Schmidt). (See Schmidt, p. 132
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`(“Table 12.1 shows an example of the data returned from an INQUIRY
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`command.”); Zadok Decl. II, ¶17.)
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`(See Schmidt, pp. 133, 139.)
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` PO concedes, as it must, that peripheral devices that use SCSI automatically
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`respond to the INQUIRY commend. (See POR, p. 21 (”it is mandatory that a SCSI
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`device be capable of responding to an INQUIRY command”).) PO’s speculation that
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`somehow this automatic recognition would cause the workstation to begin accessing
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`and reconfiguring the ION Node in an unpredictable manner has no technical
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`foundation. (Zadok Decl. II, ¶¶19-21.) PO again provides no explanation or
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`evidence to support its conjecture. And even a cursory review of Schmidt
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`demonstrates the obvious defects in PO’s argument. (See Zadok Decl. II, ¶¶16-18.)
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`A host uses the INQUIRY command to identify useful information about a target,
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`such as a peripheral’s device class. (Zadok Decl. II, ¶17.) The workstation does not
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`simply start reading, writing, and configuring the peripheral device without first
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`identifying the device class. (Zadok Decl. II, ¶17.) Thus, with SCSI, the initiator
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`(e.g., the workstation) knows how to “deal with” the target.
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`Even if the ION Workstation was unable to initially identify the ION Node as
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`a hard disk, Pucci’s ION system would still operate properly by using the SCSI
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`protocol. The SCSI protocol provides functionality for an initiator and target to
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`handle unexpected and/or error conditions. (Zadok Decl. II, ¶¶22-25.) For example,
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`SCSI provides a mechanism using the CHECK CONDITION status and a
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`subsequent message including the DATA PROTECT sense key to inform the
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`workstation that it cannot read or write to a portion of the disk because that portion
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`of the disk is currently protected. (See Schmidt, pp. 142-44; see also Pucci, p. 221
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`(explaining that an advantage of Pucci is “its robustness in the face of application
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`failure” and that the “worst case scenario” merely places the ION Node into an off-
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`line condition).)
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`As shown above, the ION Node can respond to the INQUIRY command by
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`identifying the device class as a disk drive (i.e., with code 00h), a fact conceded by
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`the PO’s expert. (Zadok Decl. II, ¶¶17, 19-21; Gafford Depn II., 83:5-11 (“But you
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`would agree that the ION node could be implemented to identify itself as a disk
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`drive in response to an inquiry command? …A. Nothing in the ION spec suggests or
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`prevents doing so.”).) Because Pucci is used to emulate a local disk drive,
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`responding to an INQUIRY command by identifying the ION Node as a disk drive
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`(despite the ION Node not being a disk drive) is exactly what Pucci is designed to
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`do. (Zadok Decl. II, ¶19.) And a POSITA would not have encountered unpredictable
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`results because emulation within the context of SCSI was possible. (See Gafford
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`Depn. I, 21:6-22:25, 72:7-22, 73:9-19 (explaining that the preferred embodiment
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`responds to the INQUIRY command by identifying a peripheral as a hard drive,
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`albeit the peripheral not being an actual hard drive).) Responding to the INQUIRY
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`command by emulating a disk drive would not reconfigure the ION Node in a
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`destructive manner but instead achieve Pucci’s goal of having “[s]oftware running
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`within the ION system [that] mimics the behavior of a conventional device,
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`providing the workstation with a peripheral that it knows how to deal with.” (Pucci,
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`p. 220; Zadok Decl. II, ¶20.)
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`PO also presents a tangential argument that the ION Node would always
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`respond with a CHECK CONDITION status. This argument is premised on a
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`complete misunderstanding of SCSI. (See Zadok Decl. II, ¶¶22-27.) A CHECK
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`CONDITION status is a type of error and is only returned in response to an
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`INQUIRY “if the target is unable to return the requested inquiry data.” (Zadok Decl.
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`II, ¶23; Schmidt, pp. 88, 138).) In the limited circumstances when a CHECK
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`CONDITION status is returned, the host will follow up with a REQUEST SENSE
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`command. (Zadok Decl. II, ¶24; Schmidt, pp. 137, 142-43.) The ION Node would
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`then, in response to the REQUEST SENSE command, send detailed error
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`information to help remedy any issue. (Zadok Decl. II, ¶24; Schmidt, pp. 138, 143-
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`46.) A POSITA, knowing the SCSI standard, would have understood that the ION
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`Node would not always return a CHECK CONDITION status during normal
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`operation. Rather, as Petitioner’s expert explained in his original declaration, when
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`the peripheral is an unknown device, the response to the INQUIRY command
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`identifies th
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