Filed on behalf of Apple Inc.
`By:
`Lori A. Gordon
`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. 8,504,746
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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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`
`I.
`II.
`III.
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`IV.
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`V.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`TABLE OF CONTENTS
`
`Mandatory notices (37 C.F.R. § 42.8(a)(1)). ................................................. 2
`Grounds for standing (37 C.F.R. § 42.104(a))............................................... 4
`Identification of challenge (37 C.F.R. § 42.104(b)). ..................................... 4
`A. Citation of prior art. ....................................................................................... 4
`B. Statutory grounds for the challenge. .............................................................. 6
`The ’746 patent. ............................................................................................. 7
`A. Overview. ....................................................................................................... 7
`B. The challenged claims of the ’746 patent are not entitled to priority benefit
`of the March 1997 German application. ........................................................ 9
`C. Level of ordinary skill in the art. ................................................................. 15
`D. Claim construction. ...................................................................................... 16
`Ground 1: The combination of Ard, Schmidt, and Webb renders claims 1,
`6–8, 14, 20, 21, 30, and 34 obvious. ............................................................ 18
`A. Overview of Ard. ......................................................................................... 18
`B. Overview of Schmidt. .................................................................................. 21
`C. Overview of Webb. ...................................................................................... 23
`D. The combination renders claim 1 obvious. .................................................. 24
`1. The combination discloses the “analog data acquisition device” recited
`in the preamble of claim 1 [1P]. .......................................................... 24
`a) “analog data acquisition device” ................................................... 25
`b) Computer architecture/operation component ................................. 26
`2. The combination discloses the analog data acquisition device
`architectural limitations. ...................................................................... 30
`a) “program memory” [1A] ................................................................ 30
`b) “an analog signal acquisition channel for receiving a signal from an
`analog source” [1B] ........................................................................ 31
`c) The “processor” limitation [1C] .................................................... 33
`3. The combination discloses the “data generation process” limitations
`[1D]. ..................................................................................................... 36
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`a) “data generation process” [1D.1] ................................................... 37
`b) “analog data is processed and digitized” [1D.2] ............................ 38
`c) “file system” [1D.3] ....................................................................... 38
`4. The combination discloses claim limitation [1E]. .............................. 39
`a) “parameter indicative of the class of devices” [1E.2] .................... 39
`b) “the processor executes at least one instruction set” [1E.1] .......... 43
`c) “not within the class of devices” [1E.3]. ........................................ 43
`5. The combination discloses claim element [1F]. .................................. 44
`a) file transfer process [1F.2] ............................................................. 44
`b) “at least one other instruction set” [1F.1] ...................................... 46
`c) appearance of the device as part of the class of devices [1F.3] ..... 46
`6. The combination discloses claim limitation [1G]. .............................. 47
`E. The combination renders claim 6 obvious. .................................................. 49
`F. The combination renders claim 7 obvious. .................................................. 49
`G. The combination renders claim 8 obvious. .................................................. 50
`H. The combination renders claim 14 obvious. ................................................ 51
`I. The combination renders claim 20 obvious. ................................................ 52
`J. The combination renders claim 21 obvious. ................................................ 55
`K. The combination renders claim 30 obvious. ................................................ 56
`L. The combination renders independent claim 34 obvious. ........................... 58
`1. The combination discloses “[a] method for analog data acquisition and
`interfacing to a host device wherein the host device includes a device
`driver” as recited in the preamble of claim 34 [34P]. ......................... 59
`2. The combination discloses the “interfacing” step of claim 34 [34A]. 59
`3. The combination discloses the “acquiring” step of claim 34 [34B]. .. 60
`4. The combination discloses the “sending” step of claim 34 [34C]. ..... 61
`5. The combination discloses the “transferring” step of claim 34 [34D].62
`Ground 2: The combination of Ard, Schmidt, Webb, and Araghi renders
`claims 4 and 11 obvious. ............................................................................. 64
`A. The combination renders claim 4 obvious. .................................................. 64
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`VI.
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`VII.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`B. The combination renders claim 11 obvious. ................................................ 65
`Ground 3: The combination of Ard, Schmidt, Webb, and Steinle renders
`claims 10 and 35 obvious. ........................................................................... 67
`A. The combination renders claim 10 obvious. ................................................ 67
`B. The combination renders claim 35 obvious. ................................................ 70
`VIII. Ground 4: The combination of Ard, Schmidt, Webb, and Reisch renders
`claim 23 obvious. ......................................................................................... 72
`Conclusion. .................................................................................................. 73
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`IX.
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`TABLE OF AUTHORITIES
`
`
`Cases:
`
`In re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015) ................................................................................ 16
`
`Martin v. Mayer,
`823 F.2d 500 (Fed. Cir. 1987) .................................................................................. 10
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................................ 18
`
`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
`
`Statutes:
`
`35 U.S.C. § 102(a) ................................................................................................. 5, 6
`35 U.S.C. § 102(b) ................................................................................................. 5, 6
`35 U.S.C. § 102(e) ................................................................................................. 5, 6
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`
`EXHIBIT LIST
`
`Ex. No.
`1001
`1002
`1003
`
`1008
`1009
`1010
`1011
`1012
`
`1013
`1014
`
`Description
`U.S. Patent 8,504,746 to Tasler
`Excerpts of File History of U.S. Patent 8,504,746 to Tasler
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 8,504,746
`1004
`Curriculum Vitae of Dr. Erez Zadok
`1005–1006 Intentionally Left Blank
`The SCSI Bus and IDE Interface Protocols, Applications and
`1007
`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).
`1017–1018 Intentionally Left Blank
`Webster’s Encyclopedic Unabridged Dictionary of the English
`1019
`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
`1021–1023 Intentionally Left Blank
`1024
`Declaration of Scott Bennett
`Intentionally Left Blank
`1025
`U.S. Patent No. 4,698,131 to Araghi et al.
`1026
`Intentionally Left Blank
`1027
`1028
`U.S. Patent No. 5,706,216 to Reisch
`Intentionally Left Blank
`1029-1030
`
`1015
`1016
`
`1020
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`
`Ex. No.
`1031
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`1032
`1033
`1034
`1035
`1036-1045
`1046
`1047
`1048
`1049
`1050
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`1051-1053
`1054
`1055
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`1056
`1057
`
`Description
`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.
`U.S. Patent No. 5,623,556 to Murayama et al.
`U.S. Patent No. 5,196,946 to Balkanski et al.
`Intentionally Left Blank
`U.S. Patent No. 5,915,106 to Ard
`Intentionally Left Blank
`U.S. Patent No. 5,489,772 to Webb et al.
`German Patent Application DE 197 08 755 A1 to Tasler
`German Patent Application DE 197 08 755 A1 to Tasler (English
`Translation)
`Intentionally Left Blank
`Livingston, Brian “Windows 3.1 Secrets” (1992)
`RFC 1314, “A File Format for the Exchange of Images in the
`Internet,” published April 1992, https://tools.ietf.org/pdf/rfc1314.pdf
`U.S. Patent No. 5,300,767 to Steinle et al.
`MacPaint Manual
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`Apple Inc. petitions for inter partes review of claims 1, 4, 6–8, 10, 11, 14, 20,
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`
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`21, 23, 30, 34, and 35 of United States Patent No. 8,504,746 to Tasler (“the ʼ746
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`patent”). The ’746 patent claims priority benefit to a March 1997 German
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`application. However, the challenged claims recite limitations having no written
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`description support in the German application. Therefore, the earliest possible
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`priority date of the ’746 patent is the March 1998 filing date of the PCT application.
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`In the present petition, Apple presents an intervening reference, U.S. Patent
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`5,915,106 to Ard (“Ard”) filed after the German application date but before the
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`PCT application date. Apple demonstrates herein that a reasonable likelihood exists
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`that the challenged claims are unpatentable in view of the intervening Ard
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`reference.
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`
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`The challenged claims recite an analog data acquisition device and associated
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`method. The device performs well-known tasks such as acquiring analog data,
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`digitizing the analog data, storing the digitized data in memory, and allowing
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`transfer of the digitized data to a host computer. The purported novelty of the ’746
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`patent is that, when attached to a host computer, the analog data acquisition device
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`identifies itself as “automatically caus[ing] at least one parameter indicative of the
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`class of devices” of which the device is not a member, such that for file transfer, the
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`“analog data acquisition device appears to the computer as if it were a device of the
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`class of devices.” (Ex. 1001, ’746 patent, claim 1.) This technique is commonly
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`referred to as emulation.
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`Devices that emulated a digital storage device (e.g., hard disk drives) and
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`used the existing storage device’s driver for communication with a host computer
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`were well known before the March 3, 1998 filing date of the PCT application to
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`which the’746 patent claims priority (“the PCT application.”). For example, Ard,
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`filed more than a year before the filing date of the PCT application, disclosed a
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`scanner that emulates a disk drive such that a “general purpose computer identifies
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`the scanner as a disk drive” and controls the scanner “via standard operating system
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`disk drive commands without utilizing a specifically developed device driver.”
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`(Ard, Abstract, 1:15–16.)
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`
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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 ’746 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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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`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
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`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.
`
`The ’746 patent is also the subject of the following Inter Partes Review
`
`proceedings: Inter Partes Review by Canon Inc., IPR2016-01211 filed June 17,
`
`2016; Inter Partes Review by Canon Inc., IPR2016-01224 filed June 17, 2016; Inter
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`Partes Review by JVC Kenwood Corporation, IPR2016-01213 filed June 17, 2016;
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`Inter Partes Review by Panasonic Corporation, IPR2016-01223 filed June 17, 2016;
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`Inter Partes Review by Olympus Corporation., IPR2016-01206 filed June 16, 2016;
`
`and Inter Partes Review by Fujifilm Corporation, IPR2016-01200 filed June 14,
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`2016.
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`Additionally, Apple is filing additional petitions against claims of the ’746
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`patent.
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`No other matters related to the ’746 patent are known to the Petitioner.
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`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, and Yasser
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`Mourtada (Reg. No. 61,056) as its additional 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, speters-PTAB@skgf.com, and
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`ymourtad-PTAB@skgf.com.
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`II. Grounds for standing (37 C.F.R. § 42.104(a)).
`The undersigned and Apple certify the ʼ746 patent is available for inter partes
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`review. Apple certifies it is not barred or estopped from requesting this inter partes
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`review on the grounds identified herein. The assignee of the ’746 patent, Papst, filed
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`a complaint against Apple alleging infringement of the ’746 patent on November 30,
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`2015. (Ex. 1020.) The present petition is being filed within one year of service of
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`Petitioner.
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`III.
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`Identification of challenge (37 C.F.R. § 42.104(b)).
`A. Citation of prior art.
`The ’746 patent claims priority through a series of applications to U.S. Patent
`
`No. 6,470,399 which is the national stage of international application
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
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`PCT/EP98/01187, filed on March 3, 1998. The ’746 patent further claims priority to
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`a German application, filed on March 4, 1997. Apple demonstrates in Section IV.B
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`that none of the challenged claims are entitled to priority benefit of the German
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`application.1
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`Each of the following prior art documents applied in the grounds of
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`unpatentability were published prior to the PCT application date.
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`U.S. Patent No. 5,915,106 to Ard (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.
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`The SCSI Bus and IDE Interface—Protocols, Applications and
`
`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. (See Ex. 1024.)
`
`U.S. Patent No. 5,489,772 to Webb et al. (Ex. 1048), is prior art under at
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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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`1994, and issued February 6, 1996.
`
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`1 Apple does not acquiesce that the ’746 patent is entitled to benefit of the
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`PCT application or any earlier filed continuation or divisional applications.
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`However, these priority determinations are not necessary for the purposes of the
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`present petition.
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`U.S. Patent No. 4,698,131 to Araghi et al. (Ex. 1026) is prior art under at
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`least 35 U.S.C. §§ 102(a), 102(b), and 102(e) because it issued on October 6, 1987.
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`U.S. Patent No. 5,300,767 to Steinle et al. (Ex. 1056) is prior art under at
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`least 35 U.S.C. §§102(a), 102(b), and 102(e) because it issued on April 5, 1994.
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`U.S. Patent No. 5,706,216 to Reisch (Ex. 1028) is prior art under at least 35
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`U.S.C. §§ 102(a) and 102(e) because it was filed on July 28, 1995.
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`Statutory grounds for the challenge.
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`B.
`Apple requests review of claims 1, 4, 6–8, 10, 11, 14, 20, 21, 23, 30, 34, and
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`35 on the following grounds:
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`References
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`Basis
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`Claims Challenged
`
`Ard, Schmidt, and Webb
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`§ 103
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`1, 6–8, 14, 20, 21, 30, 34
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`Ard, Schmidt, Webb, and Araghi § 103
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`4, 11
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`Ard, Schmidt, Webb, and Steinle § 103
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`10, 35
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`Ard, Schmidt, Webb, and Reisch § 103
`
`23
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`IV. The ’746 patent.
`A. Overview.
`The ’746 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. (See ’746 patent, 1:20–24.) The patent acknowledges that such interface
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`devices were known. However, the patent alleges that these existing interfaces
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`traded high data transfer rates for host-device independence. (Id., 3:28–31.) For
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`example, in existing interfaces devices, high data transfer rates could be achieved
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`using host-specific interface devices; but, these interfaces were not suitable for use
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`with other types of host systems. (Id., 2:6–15.) In other alternative devices, host-
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`device independence was achieved through the use of standard interfaces; but these
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`interfaces required specific driver software that in turn, resulted in reduced data
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`transfer speed. (Id., 1:33–40.)
`
`The ’746 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.” (Id., Abstract.) As
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`illustrated in Figure 1 reproduced below, the interface device 10 includes “[a] first
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`connecting device 12…attached to a host device (not shown) via a host line 11.”
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`(Id., 4:59–62.) The ’746 patent states “[t]he first connecting device is attached both
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`to a digital signal processor 13 and to a memory means 14” which, in turn, are
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
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`“attached to a second connecting device.” (Id., 4:62–67.) In some embodiments, the
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`second connecting device is “attached by means of an output line 16 to a data
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`transmit/receive device…from which data is to be read, i.e. acquired, and transferred
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`to the host device.” (Id., 4:67 to 5:4.)
`
`
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`The ’746 patent discloses techniques to make “the interface device appear[] to
`
`the host device as a hard disk.” (Id., 6:2–3.) Specifically, the ’746 patent relies on a
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`known host system identification process: when a host device is booted, an inquiry
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`instruction as to devices attached to the host device is issued to the input/output
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`interfaces of the host device. (Id., 5:14–20.) When the interface device receives the
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`inquiry instruction, the interface device identifies itself, regardless of the type of
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
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`attached data transmit/receive device, as a customary input/output device to the host
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`device. (See id., 4:5–13.) Thus, the host device uses its customary driver for the
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`identified input/output device or a corresponding driver for a multi-purpose interface
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`to communicate with the interface device. (Id., 3:49–55.)
`
`B.
`
`The challenged claims of the ’746 patent are not entitled to priority
`benefit of the March 1997 German application.
`
`The ’746 patent is the national stage of international application
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`PCT/EP98/01187 filed on March 3, 1998. The ’746 patent further claims priority to
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`a German application filed on March 4, 1997. (Exhibit 1049). A certified translation
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`of the German application is provided as Exhibit 1050.
`
`An international application designating the United States is entitled to
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`priority of a prior national application provided that the conditions of 35 U.S.C. §
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`120 are met. See 35 U.S.C. § 365(c). Section 120, in turn, requires the claims meet
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`the written description and enablement requirements of 35 U.S.C. § 112 in order to
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`obtain benefit of the earlier filing date. See 35 U.S.C. §§ 112 and 120. The
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`challenged claims of the ’746 patent are not entitled to priority benefit of the
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`German application because the German application does not provide written
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`description support for the challenged claims.
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`Each of the challenged claims requires the computer comprises “a
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`multipurpose interface.” (See ’746 patent, claim 1). Independent claim 1 further
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
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`specifies that the claimed analog data acquisition device is “operatively connectable
`
`to a computer through a multipurpose interface of the computer.” Claim 1 also
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`recites “the processed and digitized analog data is stored in a file system of the data
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`storage memory as at least one file of digitized analog data.” The German
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`application fails to provide written description support for the claimed “multi-
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`purpose interface” of the computer and “stor[age] in a file system of the data
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`storage memory” of the analog data acquisition device.
`
`To satisfy the written description requirement, the disclosure of the German
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`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
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`Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). Accordingly, the
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`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 the inventor understood the invention to include a
`
`“multipurpose interface” of the computer. Nor is the inclusion of a multipurpose
`
`interface necessarily present in the German application. See Martin v. Mayer, 823
`
`F.2d 500, 505 (Fed. Cir. 1987) (holding the written description requirement is “not a
`
`question of whether one skilled in the art might be able to construct the patentee’s
`
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`device from the teachings of the disclosure…. Rather, it is a question whether the
`
`application necessarily discloses that particular device”) (emphasis in original).
`
`The chart below compares language from the German application and the
`
`’746 application as filed (Exhibit 1002, pp. 223–245.) highlighting the concept of a
`
`multipurpose interface and its associated drivers was specifically added as a new
`
`embodiment, after the filing of the German application.
`
`
`
`
`
`’746 Application As Filed
`
`German Application
`
`“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,
`
`to the input/output interfaces in the host
`device.”
`
`(Ex. 1002, p. 231, ¶23.)
`
`“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.”
`
`(Ex. 1050, p. 3.)
`
`
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`’746 Application As Filed
`
`German Application
`
`“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
`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. 235, ¶32.)
`
`“However, it is obvious for experts that
`the interface device 10 is not
`necessarily registered when switching
`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.)
`
`
`
`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
`
`which the manufacturer of the host unit
`or BIOS system has optimized for each
`host unit,
`
`
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`German Application
`for exchanging data.”
`
`(Ex. 1050, p. 5.)
`
`
`
`’746 Application As Filed
`or BIOS system manufacturer, or by
`using driver programs which are
`normally optimized and included by
`the manufacturers of multi-purpose
`interfaces.
`
`(Ex. 1002, p. 236, ¶34.)
`
`
`
`The inventor also did not recognize BIOS routines implementing SCSI
`
`commands as a multi-purpose interface. (Zadok Decl., ¶171.) Rather, the inventor
`
`understood such BIOS routines as providing a “classical input/output interface.” For
`
`example, the ’746 patent includes the following disclosure not found in the 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
`
`
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`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.
`
`(’746 patent, 3:53–65 (emphasis added).)
`
`Thus, the inventor understood multi-purpose interfaces as a replacement for
`
`BIOS routines integrating classical input/output interfaces. As such, the German
`
`application does not explicitly or inherently disclose a multi-purpose interface.
`
`Further, the ’German application fails to provide written description support
`
`for storing the processed and digitized analog data in a file system of the data
`
`storage memory. The German application (and the ’746 patent itself) includes no
`
`mention whatsoever of any file system on the interface device. Instead, “the
`
`interface device according to the present invention simulates a hard disk with a root
`
`directory whose entries are ‘virtual’ files,” not actual files stored in an actual file
`
`system. (’746 patent, 5:11–14; Ex. 1050, p. 3.) The German application also
`
`mentions a file allocation table (FAT) but distinguishes an “actual drive” which
`
`could include a FAT, from the interface device which merely simulates one. (See
`
`’746 patent, 5:34–58; Ex. 1050, p. 3.) For example, for “communication between a
`
`processor and a hard disk…, the processor transfer[s] to the hard disk the numbers
`
`of the blocks or clusters or sectors whose contents it wishes to read.” (’746 patent,
`
`
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`6:17–21; Ex. 1050, p. 4.) Conversely, in the ’746 system, “communication between
`
`the host device and the interface device…consists of the very fast transfer of block
`
`numbers and preferably block number ranges because a virtual ‘real-time input’ file
`
`will not be fragmented.” (’746 patent, 6:22–27; Ex. 1050, p. 4.) Thereafter, “[i]f the
`
`host device now wants to read the ‘real-time input’ file, it transfers a range of block
`
`numbers to the interface device, whereupon data commences to be received via the
`
`second connecting device and data commences to be sent to the host device via the
`
`first connecting device.” (’746 patent, 6:27–32; Ex. 1050, p. 4.) Thus, the data is
`
`never stored as a file in a file system on the interface device.
`
`Because the German application does not actually or inherently disclose the
`
`“multipurpose interface” or “file system” limitations such that one skilled in the art
`
`would recognize such a disclosure, the challenged claims are not entitled to priority
`
`benefit of the ’746 German application. Accordingly, the earliest possible priority
`
`date for purposes of this inter partes review proceeding is the March 3, 1998 PCT
`
`application date.
`
`C. Level of ordinary skill in the art.
`Based on the disclosure of the ’746 patent, a person having ordinary skill in
`
`the art at the relevant time, would have had at least a four-year degree in electrical
`
`engineering, computer science, computer engineering, or related field of study, or
`
`equivalent experience, and at least two years of experience in studying or
`
`
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,504,746
`
`
`developing computer interfaces or peripherals and storage related software. (Zadok
`
`Decl., ¶28.) A POSITA would also be familiar with operating systems (e.g., MS-
`
`DOS, Windows, Unix), their associated file systems (e.g., FAT, UFS, FFS), device
`
`drivers for computer components and peripherals (e.g., mass storage device drivers),
`
`and communication interfaces (e.g., SCSI, USB, PCMCIA). (Id.)
`
`D. Cl