`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner
`
`___________________
`
`Case IPR2016-01863
`Patent 8,504,746
`___________________
`
`
`DECLARATION OF EREZ ZADOK, PH.D.
`IN SUPPORT OF THE REPLY TO THE PATENT OWNER RESPONSE
`
`
`Apple 1054
`IPR2016-01863
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`Background..................................................................................................... 1
`The disputed features of independent claims 1 and 34. ................................. 2
`A. Ground 1: “the processed and digitized analog data is stored in
`a file system of the data storage memory as at least one file of
`digitized analog data.” ........................................................................... 3
`B. Ground 1: “automatically causes at least one parameter
`indicative of the class of devices to be sent to the computer” and
`“automatically sending . . . at least one parameter to the multi-
`purpose interface of the host device, the at least one parameter
`identifying the analog data acquisition device.” ................................... 7
`C. Ground 1: “no requirement for any user-loaded file transfer
`enabling software” and “without requiring any user-loaded file
`transfer enabling software.” ................................................................ 16
`Conclusion .................................................................................................... 20
`
`
`- i -
`
`
`I.
`II.
`
`III.
`
`
`
`
`
`
`
`
`I.
`
`Background
`
`I, Dr. Erez Zadok, declare as follows:
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`1.
`
`I submit this declaration in support of Apple Inc.’s Reply to the Patent
`
`Owner Response in the Inter Partes Review of U.S. Patent No. 8,504,746 (“the
`
`’746 patent”). I understand that the ’746 patent is currently assigned to Papst
`
`Licensing GmbH & Co. KG.
`
`2.
`
`This declaration supplements my October 11, 2016 declaration
`
`submitted as Exhibit 1003 in the above-referenced proceeding.
`
`3.
`
`I understand that my curriculum vitae has been submitted into the
`
`record of this proceeding as Exhibit 1004.
`
`4.
`
`In preparing this declaration, in addition to my knowledge and
`
`experience, I have reviewed and am familiar with the following references:
`
`Configurable Data Manipulation in an Attached
`Multiprocessor by Marc F. Pucci (“Pucci”) (Ex. 1041);
`
`The SCSI Bus and IDE Interface—Protocols,
`Applications and Programming by Friedhelm Schmidt
`(“Schmidt”) (Ex. 1007);
`
`U.S. Pat. No. 4,790,003 to Kepley et al., titled “Message
`Service System Network” (“Kepley”) (Ex. 1042);
`
`Declaration of Thomas A. Gafford (“Gafford Decl.”)
`(Exhibit 2006);
`
`
`
`
`- 1 -
`
`
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`Transcripts of the 1st and 2nd depositions of Mr.
`Gafford (“Gafford Depn. I” and “Gafford Depn. II”)
`(Exhibits 1055 and 1056);
`
`The Institution Decision (“Inst. Dec.”); and
`
`Patent Owner’s Response to the Petition for Inter
`Partes Review (“POR”).
`
`5.
`
`I have also considered all other materials cited herein and cited in my
`
`declaration in support of the Petition.
`
`II. The disputed features of independent claims 1 and 34.
`I understand the Board instituted the following grounds.
`6.
`
`Ground Claims
`
`Basis References
`
`1
`
`2
`
`3
`
`
`
`7.
`
`1, 4, 6-8, 10, 11, 20, 21,
`30, 34, 35
`
`§ 103 Pucci, Kepley, Schmidt
`
`14
`
`23
`
`§ 103 Pucci, Shinosky, Kepley, Schmidt
`
`§ 103 Pucci, Kepley, Schmidt, Wilson
`
`I understand that the Patent Owner (“Papst”), in its Patent Owner
`
`Response, provided arguments specific to only the independent claims. In this
`
`declaration, I reiterate why a person having ordinary skill in the art (“POSITA”)
`
`would have combined the references in a manner that teaches the disputed features.
`
`
`
`
`- 2 -
`
`
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`A. Ground 1: “the processed and digitized analog data is stored in a
`file system of the data storage memory as at least one file of digitized
`analog data.”
`I understand that Papst argues that a POSITA would not have
`
`8.
`
`combined Pucci, Kepley, and Schmidt such that “the processed and digitized
`
`analog data is stored in a file system of the data storage memory as at least one
`
`file of digitized analog data,” as recited in independent claim 1. Specifically, I
`
`understand that Papst argues that incorporating Kepley’s “file storage system” into
`
`Pucci would “significantly impact Pucci’s principle of operation and prevent Pucci
`
`from achieving its purpose of permitting data flow into the host as it is acquired.”
`
`(POR, pp. 16-17.) In support of this position, Mr. Gafford testified that using files
`
`in Pucci’s ION system would run counter to Pucci’s “requirement for moving
`
`analog data” based on “memory buffered data transfer.” (Ex. 2006, Gafford Decl.,
`
`¶ 52.) I disagree.
`
`9.
`
`Pucci does not criticize, discredit, or otherwise discourage the use of a
`
`file-storage system. Pucci instead encourages the use of a traditional file-storage
`
`system. As Mr. Gafford acknowledged during his deposition, data in the buffer can
`
`be stored as part of the ION’s local storage. (Ex. 1056, Gafford Depn. II, 62:23-
`
`63:9 (“A. Well, files are for storing data. There’s nothing special about the data in
`
`the large buffer memory. Data can be stored in a file . . . . Q. Okay. So the data
`
`from the large buffer memory could be stored in a file on ION’s local storage,
`
`
`
`
`- 3 -
`
`
`
`correct? . . . A. I don’t see anything in the disclosure of ION that would prevent a
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`user from writing software which did that.”) (emphasis added).) Below is Figure 1
`
`of Pucci, which is annotated to illustrate Mr. Gafford’s acknowledgement.
`
`Data
`
`
`
`
`
`
`
`
`Voice mail
`file
`
`10. Mr. Gafford’s acknowledgement is consistent with Pucci’s explicit
`
`disclosure. In Pucci, the ION Node uses a file-storage system to store data as a file.
`
`As Pucci states, the data can be stored within an ION system as “traditional file
`
`system data” (Ex. 1041, Pucci, p. 221), and the local ION storage “may consist of
`
`file system data.” (Pucci, p. 222.) As shown above in Figure 1, the local ION
`
`storage is connected to the ION Node through a disk interface. (Pucci, p. 222
`
`(“Additional disk interfaces are used to control local node storage”).) Accordingly,
`
`Pucci is already designed to accommodate a file-storage system. Mr. Gafford’s
`
`
`
`
`- 4 -
`
`
`
`acknowledgement is also consistent with a POSITA’s understanding that buffering
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`(and/or caching) were well known to temporarily store data for applications and
`
`I/O devices. (Zadok Decl., ¶ 165.)
`
`11. Pucci discloses a “platform for analog to digital (A-to-D) services for
`
`a voice messaging application.” (Pucci, p. 231.) These services involve “A-to-D
`
`data” (Pucci, p. 232), but Pucci does not completely explain how the data is stored
`
`for this application. As I explained in my previous declaration, a POSITA would
`
`have been motivated to use a file-storage system in Pucci’s A-to-D application.
`
`(Zadok Decl., ¶¶ 66–69, 111–13.) And based on Pucci’s explicit disclosure and a
`
`POSITA’s understanding of data storage in general, a POSITA would have
`
`understood that the ION Node could use a file-storage system for the A-to-D
`
`application without a major redesign.
`
`12. What Kepley provides in the proposed combination is an explicit
`
`disclosure of storing digitized A-to-D converted data (such as converted audio
`
`data) as a file. (Ex. 1042, Kepley, Abstract (“digitally encoded and compressed
`
`voice mail message”), 15:59-16:4 (“voice mail message is a data file”).) Based on
`
`this teaching in Kepley and the known advantages of using a file-storage system to
`
`store data as a file (e.g., to enable computer-to-computer data file transfer, ensure
`
`data integrity, and send the message sender’s name), a POSITA would have found
`
`
`
`
`- 5 -
`
`
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`it obvious to store digitized data as a file within Pucci’s ION system. (Zadok Decl.,
`
`¶¶ 98–99; Kepley, Abstract, 15:59-16:4; Ex. 1013, Silberschatz, pp. 349–50).)
`
`13. Storing digitized analog data as at least one file within the local ION
`
`storage would not have impacted Pucci’s use of the ION Node because Pucci
`
`explicitly describes storing data as files, and such an understanding is consistent
`
`with a POSITA’s understanding of file systems in general. (Pucci, p. 221
`
`(“traditional file system data”); Silberschatz, p. 350 (“a file is the smallest
`
`allotment of logical secondary storage; that is, data cannot be written to secondary
`
`storage unless they are within a file”).) Storing digitized analog data as at least one
`
`file is also consistent with Pucci’s intended purpose of achieving a high degree of
`
`application portability because “[t]o provide an efficient and convenient access to
`
`the disk [or the emulated disk], the operating system imposes a file system to allow
`
`the data to be stored, located and retrieved easily.” (Silberschatz, p. 384.)
`
`14.
`
`Incorporating Kepley’s file-storage system into Pucci would not have
`
`impacted the ION’s ability to operate as an emulation device. Pucci provides
`
`explicit motivation to use a file-storage system for emulation purposes. (Pucci, pp.
`
`220–21; Zadok Decl., ¶ 95.) For example, Pucci states that “[a] workstation sees
`
`ION as though it were physically a local disk drive . . . the ION system mimics the
`
`behavior of a conventional device.” (Pucci, p. 220.) Pucci also states that “[t]he
`
`‘data’ contained in this pseudo-disk device can be . . . traditional file system data.”
`
`
`
`
`- 6 -
`
`
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`(Pucci, p. 221.) Given these disclosures, incorporating Kepley’s “digitally encoded
`
`and compressed voice mail message” into Pucci’s ION system is nothing more
`
`than including the voice mail message in Pucci’s local ION storage. Using Pucci’s
`
`local ION storage to store digitized data as a file would not have changed Pucci’s
`
`principle of operation or rendered Pucci unsatisfactory for its intended purpose.
`
`Pucci also does not teach away from using a file-storage system to store digitized
`
`data as a file because Pucci itself states that the ION Node can store traditional file
`
`system data. For these reasons and the reasons in my previous declaration, a
`
`POSITA would have found it obvious to use a file-storage system to store digitized
`
`data as a file in Pucci’s A-to-D application.
`
`B. Ground 1: “automatically causes at least one parameter indicative
`of the class of devices to be sent to the computer” and
`“automatically sending . . . at least one parameter to the multi-
`purpose interface of the host device, the at least one parameter
`identifying the analog data acquisition device.”
`I understand that Papst argues that a POSITA would not have
`
`15.
`
`combined Pucci, Kepley, Schmidt to “automatically cause[] at least one
`
`parameter indicative of the class of devices to be sent to the computer,” as recited
`
`in independent claim 1. I also understand that Papst argues that a POSITA would
`
`not have combined Pucci, Kepley, Schmidt to “automatically send[] . . . at least
`
`one parameter to the multi-purpose interface of the host device, the at least one
`
`parameter identifying the analog data acquisition device,” as recited in
`
`
`
`
`- 7 -
`
`
`
`independent claim 34. Specifically, I understand that Papst argues that Pucci and
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`Schmidt cannot be combined because “any such automatic identification process
`
`(as discussed in Schmidt) would cause the ION Workstation [in Pucci] to attempt
`
`to access and/or reconfigure the ION Node in an unpredictable and potentially
`
`destructive manner.” (POR, pp. 18–19.) I disagree.
`
`16. The ION Node in Pucci uses the Small Computer Systems Interface
`
`(SCSI) to connect to the ION Workstation. (Pucci, p. 217 (“The ION Data Engine .
`
`. . is a back-end system, connecting to a workstation via the Small Computer
`
`Systems Interface (SCSI) disk interface”).) As Pucci explains and as a POSITA
`
`would have understood, “SCSI . . . is a protocol definition for connecting
`
`processors, disk drives, printers and other devices.” (Pucci, p. 238.) A person
`
`looking to implement Pucci’s system based on the SCSI protocol would have
`
`looked to the prior art and/or well-known knowledge for possible techniques for
`
`how to implement Pucci’s ION. That person would have arrived at Schmidt—a
`
`textbook on SCSI, which supplements Pucci with explicit disclosures of the SCSI
`
`protocol.
`
`17. As I explained in my previous declaration, SCSI is a standardized
`
`interface that uses standardized commands. (Zadok Decl., ¶¶ 40, 50–54, 72, 133.)
`
`One of the standardized commands is the INQUIRY command. The INQUIRY
`
`command is a command used to identify useful information. (Schmidt, p. 138.) A
`
`
`
`
`- 8 -
`
`
`
`host does not simply start reading, writing, and configuring a peripheral device
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`without first identifying the device. In SCSI, a host sends an INQUIRY command
`
`to a peripheral, and the peripheral will respond to the INQUIRY command by
`
`returning a device-class identifier within an INQUIRY response (e.g., the code
`
`“00h” to signify the disk drive class). (Schmidt, pp. 132, 138–39 (displaying
`
`INQUIRY data format and identifying it as a [M]mandatory command).) Mr.
`
`Gafford’s confirmed that a POSITA would have understood that the INQUIRY
`
`command is part of the SCSI standard. (Ex. 1055, Gafford Depn. I, 19:21-20:9
`
`(“Q. So this portion of the ’399 sentence – patent says it issues, ‘an instruction
`
`known by those skilled in the art as the inquiry instruction.’ So I’m trying to
`
`understand why that was a type of instruction that would’ve been known by those
`
`skilled in the art at the time of the ’399 patent? A. It’s part of the SCSI spec, and
`
`it’s described in the SCSI spec as the way in which a host can determine what type
`
`of device it’s talking to over the multipurpose SCSI interface.”).)1
`
`18. Mr. Gafford testified that “Pucci does not disclose responding to an
`
`inquiry from the ION Workstation or sending a signal or a parameter identifying
`
`the analog data generating and processing device.” (Gafford Decl., ¶ 56.) To
`
`1 Mr. Gafford’s testimony about the specification of the ’399 patent also
`
`applies to the ’746 patent.
`
`
`
`
`- 9 -
`
`
`
`support this position, Mr. Gafford testified that Pucci only implements certain
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`aspects of the SCSI protocol but not all of it. (Gafford Depn. II, 66:10-16 (“But
`
`what’s – what aspects are you saying that Pucci would be limited to in the SCSI
`
`protocol? A. I didn’t say it was limited to anything. I said it uses some aspects of it.
`
`We don’t know which aspects because they haven’t told us yet”).) In my opinion,
`
`this position is without merit because the position ignores: (1) the disclosures in
`
`Pucci that would have informed a POSITA exactly how Pucci utilizes the SCSI
`
`standard protocol; (2) Pucci’s citation to the ANSI 3.131 SCSI standard; and (3) a
`
`POSITA’s understanding of the standard SCSI protocol, including the mandatory
`
`commands such as INQUIRY.
`
`19. Responding to the INQUIRY command by emulating a hard disk
`
`would not reconfigure the ION Node in an unpredictable and destructive manner.
`
`Indeed, the ION Node in Pucci is intended to do just that—emulate a conventional
`
`device. Pucci explains that “[s]oftware running within the ION system mimics the
`
`behavior of a conventional device.” (Pucci, p. 220, (emphasis added).) This
`
`concept of mimicry, or emulation, was well known to a POSITA at the time of the
`
`’746 patent. As I explained in my previous declaration, emulation allowed a host
`
`computer to interact with a peripheral device using existing drivers (Zadok Decl., ¶
`
`36), which is consistent with Pucci’s goal of “providing the workstation with a
`
`peripheral that it knows how to deal with.” (Pucci, p. 220.) A POSITA would have
`
`
`
`
`- 10 -
`
`
`
`understood that this mimicry of a “conventional device” could be accomplished by
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`“exactly simulat[ing] the characteristics and responses of the normal computer
`
`hardware which it replaces.” (Zadok Decl., ¶ 36 (citing Maclean (Ex. 1010), 4:49-
`
`53), (emphasis added).)
`
`20. Pucci also discloses that the ION system mimics a conventional SCSI
`
`disk drive. (Pucci, p. 220 (“Each workstation views its ION connection as though it
`
`were a large conventional disk drive”), p. 220 (“A workstation sees ION as though
`
`it were physically a local disk drive (an ION drive) with a data capacity of 2
`
`terabytes (the SCSI limit).”) Because the workstation views the ION system as a
`
`SCSI disk drive (i.e., mimics a SCSI device), a POSITA would have reasonably
`
`understood that the ION system provides the appropriate SCSI signaling to the
`
`workstation to accomplish this subterfuge. Accordingly, a POSITA would have
`
`understood that the ION system “mimics the behavior of a conventional device” by
`
`simulating the characteristics and responses of the normal computer hardware and
`
`using the full capabilities of the SCSI standard, including the SCSI automatic
`
`recognition process taught in Schmidt.
`
`21. Further, Pucci provides no indication that the ION Node would be
`
`unable to return the requested inquiry data per the conventional procedures of the
`
`INQUIRY command. (Schmidt, p. 138.) Indeed, while Pucci does not specifically
`
`disclose the use of an INQUIRY command, Pucci’s description of the SCSI
`
`
`
`
`- 11 -
`
`
`
`implementation is consistent with Schmidt and the SCSI standard. Pucci explains
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`that “an initiator (usually the host processor) starts an operation by arbitrating for
`
`the SCSI bus and selecting a target device (such as a disk drive) to respond to its
`
`request.” (Pucci, p. 239, (emphasis added).)
`
`22. Mr. Gafford testified that “it is not mandatory for a SCSI target such
`
`as the ION to respond with inquiry data or with particular inquiry data” but can
`
`instead return a “CHECK CONDITION message.”2 (Gafford Decl., ¶ 57.) Mr.
`
`Gafford’s explanation of the CHECK CONDITION status is incomplete and
`
`misleading because it leaves out important details and makes assumptions counter
`
`to Pucci’s disclosures.
`
`23. Schmidt states that “INQUIRY will only return CHECK
`
`CONDITION if the target is unable to return the requested inquiry data.”
`
`(Schmidt, p. 138, (emphasis added).) In other words, a response to an INQUIRY
`
`command is required—either INQUIRY data or a CHECK CONDITION status.
`
`(Schmidt, p. 88 (describing that, in response to setting to zero the EVPD bit in the
`
`INQUIRY command, “the target shall return the standard INQUIRY data” and
`
`2
`CHECK CONDITION is a status, not a message. (Compare Schmidt,
`
`p. 137 (listing status bytes), with Schmidt, p. 119 (listing SCSI message codes).)
`
`
`
`
`
`
`- 12 -
`
`
`
`when the bit is set to 1, then a CHECK CONDITION status is returned) (emphasis
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`added).) In normal operating conditions, the target peripheral device will return the
`
`requested INQUIRY data.
`
`24. A CHECK CONDITION status is a type of error condition and is only
`
`returned in response to an INQUIRY “if the target is unable to return the requested
`
`inquiry data.” (Schmidt, pp. 88, 138.) In the limited circumstances when a CHECK
`
`CONDITION status is returned, the host will follow up with a REQUEST SENSE
`
`command. (Schmidt, pp. 137, 142-43.) The REQUEST SENSE command is used
`
`by the initiator “to determine just exactly what has occurred.” (Schmidt, p. 133.) In
`
`response to the REQUEST SENSE command, the target would provide “in more
`
`detail the nature of the problem.” (Schmidt, p. 138.)
`
`25. Mr. Gafford’s comment that “a target device may be configured to
`
`response with a simple CHECK CONDITION message” (Gafford Decl., ¶ 57,
`
`(emphasis added)) is therefore misleading because devices that implement the
`
`SCSI standard are configured to provide a CHECK CONDITION status. Devices
`
`that implement the SCSI standard are configured to provide the CHECK
`
`CONDITION status when appropriate (i.e., when an error happens). (Schmidt, p.
`
`137 (“All Commands end with a status phase” and Table 12.9 provides one
`
`example of a status is CHECK CONDITION).) And devices that implement the
`
`
`
`
`- 13 -
`
`
`
`SCSI standard are configured to follow up the receipt of a CHECK CONDITION
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`status with a REQUEST SENSE command to identify the nature of the problem.
`
`26. Nothing in Pucci suggests that the system deviated from the standard
`
`SCSI protocol. Rather, a POSITA would have understood that the system would
`
`have closely followed the SCSI standard to benefit from that protocol’s
`
`standardization and existing software drivers. (Pucci, pp. 219–20 (“The low level
`
`connection between these components is the . . . (SCSI) disk interface, ANSI
`
`X3.131 . . . . ION using its local disk system, which is a stable, well-defined
`
`interface, there is no need to change vendor supplied host system software.”), pp.
`
`238–40 (an appendix providing SCSI details).)
`
`27. Moreover, a POSITA would have understood that the ION Node
`
`would not simply return a CHECK CONDITION status to the host workstation.
`
`“The command REQUEST SENSE is always used in response to a CHECK
`
`CONDITION in order to read the sense data.” (Schmidt, p. 142.) Sense data is an
`
`important part of this process because it “gives information concerning the reason
`
`why the preceding command ended abnormally.” (Schmidt, p. 142.) Sense data
`
`includes a sense key. (Schmidt, p. 143.) Examples of sense keys include error
`
`messages such as NOT READY (the addressed LUN is not ready to be accessed),
`
`MEDIUM ERROR (the target detected a data error on the medium), and DATA
`
`PROTECT (access to the data is blocked). (Schmidt, p. 144 (Table 12.18).)
`
`
`
`
`- 14 -
`
`
`
`Because sense data is returned in response to a CHECK CONDITION status,
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`CHECK CONDITION provides diagnostic information when something has gone
`
`wrong. In the context of an INQUIRY command and contrary to Mr. Gafford’s
`
`allegation, CHECK CONDITION is not a message but an indication to the target
`
`device that the INQUIRY command was not properly executed. When executed
`
`properly by the ION system, an INQUIRY command from the host computer
`
`would result in the ION Node returning an indication that it is a conventional SCSI
`
`disk drive using the appropriate SCSI signaling.
`
`28. Papst argues that the INQUIRY command would somehow
`
`reconfigure the ION Node in an unpredictable and destructive manner. (POR, p.
`
`22.) I disagree for reasons I have discussed above with respect to how to achieve
`
`Pucci’s goal of having the ION Node mimicking a conventional disk drive. This
`
`position is also directly contradicted by Pucci’s statement that “[s]oftware running
`
`within the ION system mimics the behavior of a conventional device.” (Pucci, p.
`
`220 (emphasis added).) A POSITA would understand that this software would
`
`respond to the workstation SCSI INQUIRY command in a manner that would
`
`“provid[e] the workstation with a peripheral that it knows how to deal with.”
`
`(Pucci, p. 220.)
`
`
`
`
`- 15 -
`
`
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`C. Ground 1: “no requirement for any user-loaded file transfer
`enabling software” and “without requiring any user-loaded file
`transfer enabling software.”
`I understand that Papst argues that the combination of Pucci, Kepley,
`
`29.
`
`Schmidt does not teach the limitation of “no requirement for any user-loaded file
`
`transfer enabling software to be loaded on or installed in the computer,” as recited
`
`in independent claim 1. I also understand that Papst argues that the combination of
`
`Pucci, Kepley, Schmidt does not teach the limitation of “no requirement for any
`
`user-loaded file transfer enabling software to be loaded on or installed in the
`
`computer,” as recited in independent claim 34. Specifically, Papst contends that
`
`“installation of the controlling program/application on the ION Workstation is
`
`required for the ION Workstation to communicate with the ION Data Engine so it
`
`knows which block addresses to access, i.e., ‘where’ to read from the ION Node
`
`for the actions to access the information from peripheral devices attached to the
`
`ION Node.” (POR, p. 27.) Mr. Gafford also testifies that “the ION Workstation
`
`still requires installed software for the transfer of data to occur.” (Gafford Decl., ¶
`
`62.) I disagree with Papst and Mr. Gafford on these points.
`
`30.
`
`I refer back to Pucci’s statement that “[s]oftware running within the
`
`ION system mimics the behavior of a conventional device.” (Pucci, p. 220.) A
`
`POSITA would have understood that the workstation would communicate with the
`
`ION Node as if it were a conventional device, such as a conventional disk drive.
`
`
`
`
`- 16 -
`
`
`
`This understanding is consistent with Pucci’s stated goal of “providing the
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`workstation with a peripheral that it knows how to deal with.” (Pucci, p. 220.) This
`
`understanding is also consistent with Pucci’s stated goal of having a system where
`
`“there is no need to change vendor supplied host system software.” (Pucci, pp.
`
`219–20.)
`
`31.
`
`In the context of an analog-to-digital conversion system, Pucci
`
`acknowledges the benefits of using a customary device driver. “Additionally, since
`
`the hardware dependent A-to-D code remains within ION, no driver changes to
`
`the host’s operating system are necessary upon workstation upgrade.” (Pucci, p.
`
`231 (emphasis added).) Although not directly related to its SCSI implementation,
`
`this statement demonstrates Pucci’s understanding of the benefits of including the
`
`software within the peripheral device itself. With respect to Pucci’s ION Node
`
`including software for mimicking the behavior of a conventional device, a
`
`POSITA would have understood that driver changes to the host computer would be
`
`unnecessary for the SCSI implementation to know where to read and write data.
`
`(Pucci, pp. 219–20.)
`
`32.
`
`I also understand that Papst argues that Pucci necessarily has loaded
`
`software on the workstation because the ION Workstation needs to know “where”
`
`(e.g., which data blocks) to read from the ION Node. (POR, p. 27.) This argument
`
`ignores Pucci’s implementation of the standard SCSI protocol, Pucci’s stated goal
`
`
`
`
`- 17 -
`
`
`
`of having the ION Node mimic a conventional disk drive, and Schmidt’s
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`disclosures of the conventional SCSI signals that allow for a host to communicate
`
`with a peripheral device.
`
`33. This understanding of Pucci’s “software” within the ION system is
`
`consistent with Mr. Gafford’s explanation that user-loaded software was
`
`unnecessary for the SCSI embodiment disclosed in the ’746 patent. Mr. Gafford
`
`explains that the booting routine was performed through existing SCSI drivers in
`
`the operating system. (Gafford Depn. II, 29:24-30:5 (“Q. And then for Windows
`
`and UNIX, the operating system, it would rely on BIOS routines for the SCSI
`
`driver? A. Yeah. No need for the user to do anything. They would just notice that
`
`the device was there and reconfigure it to make it usable”).) And in the context of
`
`DOS, this routine also did not need user-loaded software because the routine ran
`
`on the existing BIOS. (Gafford Depn. II, 29:5-29:18 (“So for the DOS operating
`
`system, it would rely on BIOS routines for the SCSI driver? A. Sure.”), 21:15-
`
`22:10 (“A. Well, a SCSI type of interface embodies what’s described here as a
`
`multipurpose interface, and the software that runs the SCSI interface would either
`
`be a BIOS resident or OS resident driver for – made for use with that interface. Q.
`
`And so it would be SCSI driver either resident in the BIOS or the operating
`
`system? A. Yes”).) This software would treat the peripheral device as a hard disk,
`
`and once the software identified the peripheral device as a hard disk, the software
`
`
`
`
`- 18 -
`
`
`
`would gather the hard disk parameters, such as size and maximum block size.
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`(Gafford Depn. I, 18:4-15 (“A. Typically, in the world of SCSI software, it would
`
`inquire as to specific parameters of the device to try to understand what capabilities
`
`– let’s see. Actually, given that these were general purpose SCSI hard disk
`
`drivers…the software would treat the attached device in Figure 1 [of the ’746
`
`Patent] as a hard disk, and once it knows it’s hard disk, it would gather the hard
`
`disk parameters, such as size, maximum block size”).) This implementation is
`
`similar to what is described in Pucci and is consistent with a POSITA’s
`
`understanding of the SCSI protocol.
`
`
`
`
`
`
`
`
`- 19 -
`
`
`
`III. Conclusion
`In signing this declaration, I recognize that the declaration will be
`34.
`
`Case IPR2016-01863
`Patent No. 8,504,746
`
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office. I recognize that I may be subject to
`
`cross-examination in the case and that cross-examination will take place within the
`
`United States. If cross-examination is required, I will appear for cross-examination
`
`within the United States during the allotted time.
`
`35.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Executed on the 23rd day of October, 2017.
`
`Respectfully submitted,
`
`
`______________________________
`Erez Zadok
`
`- 20 -
`
`
`
`
`
`
`
`