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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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`APPLE INC.
`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO. KG
`Patent Owner
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`___________________
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`Case IPR2016-01863
`Patent 8,504,746
`___________________
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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 IPR2016-01863
`Patent No. 8,504,746
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`
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`TABLE OF CONTENTS
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`
`I.
`II.
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`B.
`
`C.
`
`Introduction ........................................................................................................ 1
`Claim Construction ............................................................................................ 2
`The Phillips claim construction standard applies. .................................. 2
`A.
`“data transmit/receive device” ................................................................ 2
`B.
`III. Response to Patent Owner’s Arguments ........................................................... 3
`The applied combination teaches or suggests “the processed and
`A.
`digitized analog data is stored in a file system of the data storage
`memory as at least one file of digitized analog data.” ............................ 3
`The applied combination teaches or suggests “automatically
`causes at least one parameter indicative of the class of devices”
`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.” .................10
`The applied combination teaches or suggest that “no requirement
`for any user-loaded file transfer enabling software” and “without
`requiring any user-loaded file transfer enabling software.” ................18
`IV. Patent Owner does not raise arguments specific to the dependent claims. ..... 23
`V.
`Patent Owner’s belief of unconstitutionality is not a request for relief. ......... 23
`VI. Conclusion ....................................................................................................... 23
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`TABLE OF AUTHORITIES
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`Case IPR2016-01863
`Patent No. 8,504,746
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`Cases:
`
`In re CBS-Sys. Int’l,
`832 F.3d 1335 (Fed. Cir. 2016).................................................................................. 2
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004).................................................................................. 8
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012).................................................................................. 5
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005).............................................................................. 2, 3
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ................................................................................ 2-3
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`EXHIBIT LIST
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`Case IPR2016-01863
`Patent No. 8,504,746
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`Exhibit
`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
`1025–1030 Intentionally Left Blank
`1031
`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
`Multiprocessor,” 1991
`
`1015
`1016
`
`1020
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`1032–1040
`1041
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`Case IPR2016-01863
`Patent No. 8,504,746
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`Exhibit
`1042
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`1043
`1044
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`1045
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`Description
`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”
`1046–1051 Intentionally Left Blank
`1052
`Declaration of Michele Nelson, USENIX
`Intentionally left blank
`1053
`1054
`Declaration of Dr. Erez Zadok in Support of Reply (“Zadok II”)
`1055
`October 10, 2017 Deposition Transcript of Thomas Gafford
`(“Gafford I”)
`October 11, 2017 Deposition Transcript of Thomas Gafford
`(“Gafford II”)
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`1056
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`I.
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`Introduction
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`Case IPR2016-01863
`Patent No. 8,504,746
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`Choosing not to cross-examine Petitioner’s expert, Patent Owner 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 Patent Owner goes further by not only mischaracterizing the
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`teachings of Pucci in its rebuttal arguments but also taking positions directly
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`contrary to Pucci’s express disclosures. For example, despite Pucci explicitly
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`teaching the use of the SCSI standard, Patent Owner argues that Pucci could not be
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`combined with teachings of Schmidt which describes the SCSI standard. Patent
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`Owner continues its pattern of obfuscation, arguing that a person having ordinary
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`skill in the art (POSITA) would not have known how to store data as files in Pucci’s
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`system, despite its own expert admitting that use of files to store data was well-
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`known and Pucci explicitly stating that the data stored in its device can be
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`“traditional file system data.”
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`In this Reply, Petitioner exposes the technical flaws in Patent Owner’s
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`analysis and explains why the art supports a finding of obviousness under the
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`correct 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.7.)
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`A. The Phillips claim construction standard applies.
`The parties agree—the ’746 patent expires on March 3, 2018. (See POR, p. 8
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`(“the ‘746 Patent is set to expire on March 3, 2018”).) Because the ’746 patent
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`expires before the statutory deadline to issue a Final Written Decision (i.e., April 17,
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`2018), the Phillips claim construction standard applies in this proceeding. See In re
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`CBS-Sys. Int’l, 832 F.3d 1335, 1342 (Fed. Cir. 2016) (“once a patent expires, the
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`PTO should apply the Phillips standard for claim construction.”). However, because
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`the prosecution history does not contain any disclaimers for the claim terms at issue
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`in this inter partes review, there is no meaningful difference between the claim
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`construction standard in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and
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`the broadest reasonable interpretation standard.
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`“data transmit/receive device”
`B.
`The Board, in its Institution Decision, did not construe “data transmit/receive
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`device.” (Inst. Dec., pp. 6-8.) The Board likewise need not construe “data
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`transmit/receive device” in the Final Written Decision because Patent Owner’s
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`arguments in this case do not necessitate a construction for this term. See Vivid
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only
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`Patent No. 8,504,746
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`those terms need to be construed that are in controversy, and only to the extent
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`necessary to resolve the controversy.”). But if the Board determines that “data
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`transmit/receive device” does need a construction, the Board should construe this
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`term according to the district court’s construction under the Phillips standard: “data
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`transmit and/or receive device.” (See Ex. 2007, p. 37.) Patent Owner did not dispute
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`the district court’s construction, and Patent Owner’s expert applied this construction
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`in preparing his declaration. (See POR, pp. 8-9; Gafford Depn. I, 58:3-20.)
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`III. Response to Patent Owner’s Arguments
`The Patent Owner Response presents three primary arguments. Petitioner
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`replies to each argument in turn and explains why Patent Owner’s arguments rest on
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`fundamental misinterpretations of Pucci’s teachings and the SCSI Standard.
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`A. The applied combination teaches or suggests “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.”
`Patent Owner argues that Pucci fails to disclose that “the processed and
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`digitized analog data is stored in a file system of the data storage memory as at least
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`one file of digitized analog data” as recited in independent claim 1. (POR, p. 15.) In
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`the first instance, this argument is misplaced because the Petition relies on the
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`combination of Pucci and Kepley—not Pucci alone—to disclose this claim
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`limitation. (See Petition, p. 13 (stating that “Pucci does not explicitly disclose that
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`the converted data is stored as a file on the ION node” and relying on Kepley for
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`this claim limitation), p. 28 (“Pucci does not explicitly disclose the storage of its
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`digital voice data.”).)
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`Patent Owner’s arguments against the combination of Pucci and Kepley are
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`equally flawed. Patent Owner does not dispute that Kepley teaches that “the
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`processed and digitized analog data is stored in a file system of the data storage
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`memory as at least one file of digitized analog data.” (See POR, pp. 16-17.) Patent
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`Owner instead alleges that a POSITA would not have combined Pucci and Kepley
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`because: (1) the combination would have changed Pucci’s principle of operation; (2)
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`the combination would have rendered Pucci unsatisfactory for its intended purpose;
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`and (3) Pucci teaches away from storing digitized analog data as a file. (POR,
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`pp. 13, 17, 33-34.) 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 Patent Owner neither addressed nor refuted in its Patent
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`Owner Response. (Compare Petition, pp. 29-30, with POR, p. 17.)
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`First, Patent Owner incorrectly concludes that combining Pucci and Kepley
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`would “significantly impact Pucci’s principle of operation.” (See POR, p. 17.) As an
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`initial matter, the Patent Owner Response does not define Pucci’s principle of
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`operation and therefore lacks the foundation for this conclusion. See In re Mouttet,
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`686 F.3d 1322, 1332 (Fed. Cir. 2012) (broadly defining the principle of operation
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`before determining whether a combination would change the principle of operation).
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`Irrespective of this flaw, the conclusion is technically incorrect. Pucci uses a
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`multiprocessor tasking system (named ION) and a Small Computer Systems
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`Interface (SCSI) to emulate a peripheral device that a computer workstation (i.e., the
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`host) knows how to deal with. (See Petition, pp. 1-2 (citing Ex. 1041, Pucci, pp. 217,
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`220); Ex. 1003, Zadok Decl., ¶¶65, 133; Gafford Depn. II, 60:2-61:11.) Storing
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`digitized analog data as at least one file in a file-storage system would not change
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`Pucci’s use of ION and SCSI to operate as an emulation device. (Zadok Decl. II,
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`¶¶9-14.) To the contrary, Pucci provides explicit motivation to use a file-storage
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`system for emulation purposes. (See Pucci, pp. 220-21; Petition, pp. 13-14; Zadok
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`Decl., ¶¶67, 113; see also Gafford Depn. II, 42:17-8, 57:14-22 (admitting that use of
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`a file system was well known and understood).) Pucci states that its ION Node
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`mimics the behavior of a conventional device, and “[t]he ‘data’ contained in this
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`pseudo-disk device can be random read/write data, traditional file system data, or
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`more complex objects for a variety of applications managed by tasks running within
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`the ION system.” (Pucci, pp. 220-21 (emphasis added).) Using a well-known, well
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`understood and “traditional” file system to store the digitized analog data as a file is
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`not contrary to Pucci’s principle of operation but entirely consistent with the
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`teachings in the reference and the understanding of a POSITA as of the earliest
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`possible priority date of the ’746 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 Patent Owner’s crimped definition.
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`(Contra POR, p. 17.) Patent Owner alleges that Pucci’s intended purpose is
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`“permitting data flow into the host.” (POR, p. 17.) However, notwithstanding this
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`generic stated purpose, Patent Owner applies extremely narrow constraints—namely
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`that the alleged “data flow into the host” is limited to writing into the host using a
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`first in/first out (FIFO) approach. (See POR, p. 15) Pucci’s data transfer is not so
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`limited. (Zadok Decl. II, ¶¶9-10.) Moreover, storing data as a file (e.g., a collection
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`of data blocks) would not be contrary even under Patent Owner’s overly narrow
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`(and incorrect) interpretation. A POSITA would have understood that any system,
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`including Pucci’s ION Node, could store the file as data blocks in its buffer and
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`transfer the data blocks to the host in a manner similar to a FIFO transfer, as
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`confirmed by Patent Owner’s expert. (See Gafford Depn. II, 63:3-9 (“So the data
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`from the large buffer memory could be stored in a file on ION’s local storage,
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`correct? . . . A. I don’t see anything in the disclosure of ION that would prevent a
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`user from writing software which did that.”).) Indeed, this implementation would be
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`similar to the “real-time input files” embodiment described in the ’746 patent and
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`discussed by Patent Owner’s expert, Mr. Gafford, at deposition. (See Ex. 1001, ’746
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`patent, 6:3-32; 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).) The ’746 patent “real-
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`time input files” embodiment buffers data blocks and transfers them in real-time.
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`(’746 patent, 6:3-32.)
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`Moreover, Patent Owner misstates Pucci’s intended purpose. As Pucci sets
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`forth on its first page, the intended purpose of ION is to provide disk read and write
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`accesses, while achieving “a high degree of application portability.” (Pucci, p. 217;
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`Zadok Decl. II, ¶13.) Throughout discussions of its numerous applications, Pucci
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`reiterates that ION remains portable across workstation changes, operating system
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`releases, and complete operating system changes. (Pucci, pp. 219, 221, 223, 230.)
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`Storing data as a file is not contrary to the actual intended purpose of providing disk
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`read and write accesses, while achieving a high degree of application portability.
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`(Zadok Decl., II, ¶¶13-14.) Indeed, storing data as a file provides read and write
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`access while achieving portability by enabling file transfer between the ION-enabled
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`voice messaging service system and other messaging service systems. (See Zadok
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`Decl., ¶¶111-113; Zadok Decl. II, ¶13 .) For at least these reasons, the combination
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`is not contrary to Pucci’s intended purpose.
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`Third, contrary to Patent Owner’s contentions, Pucci does not teach away
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`from accessing digitized analog data in the form of files. (Contra POR, p. 13.)1
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`“[T]he 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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`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. 28; Zadok Decl., ¶108; 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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`1 The Board should disregard Mr. Gafford’s opinion that Pucci teaches away
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`from storage of data as files because Mr. Gafford’s 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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`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 in a file system as a file is not a teaching away but rather
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`indicative of Pucci’s compatibility with alternative storage systems—one that uses a
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`buffer to read five channels of raw converted data and others that use a traditional
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`file-storage system. Moreover, as explained above, the ’746 patent itself discloses an
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`embodiment that uses buffer-like structures, referred to as real-time files, for data
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`transfer. (See ’746 patent, 6:3-32; Gafford Depn. II, 53:22-12 (confirming that an
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`implementation of 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 in a
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`file system as a file without changing Pucci’s principle of operation or making Pucci
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`unsatisfactory for its intended purpose. (Zadok Decl. II, ¶14.) The Petition and
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`supporting declaration provided a rationale for combining Kepley’s voice mail file
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`teachings with the teachings of Pucci. (See Petition, pp. 13-14, 28-30; Zadok Decl.,
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`¶¶ 66–69, 111–13.) Pucci in view of Kepley, further in view of Schmidt teaches this
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`claim limitation. (See also Inst. Dec., pp. 13-14.)
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`Patent Owner further manufactures an argument against a combination of
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`teachings in Kepley and Pucci that Petitioner never presented or even suggested.
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`Patent Owner argues that a POSITA would not have combined Pucci and Kepley
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`because Kepley uses a separate database processor for storing digitized voice files.
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`(POR, pp. 17, 35.) But Petitioner neither relies on Kepley’s separate processor nor
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`does Pucci need a separate processor to store data as a file. Therefore, a major
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`redesign to accommodate a separate processor, as Patent Owner suggests, is
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`unnecessary in Petitioner’s applied combination. (Zadok Decl. II. ¶¶9-11.)
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`Specifically, Patent Owner argues that “[i]mplementing such a processor on the ION
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`Node would require a major redesign of the ION Node embedded software . . . .”
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`(POR, p. 17.)
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`B.
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`The applied combination teaches or suggests “automatically causes
`at least one parameter indicative of the class of devices” 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.”
`Patent Owner argues that Pucci fails to disclose “automatically causes at least
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`one parameter indicative of the class of devices” as recited in independent claim 1
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`and “automatically sending . . . at least one parameter to the multi-purpose interface
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`of the host device, the at least one parameter identifying the analog data acquisition
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`device” as recited in independent claim 34. (POR, pp. 18-20.) 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 disclaim this claim limitation. (See Petition, pp. 32-33.) The
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`Petition acknowledges that “Pucci stresses that the ION . . . uses the SCSI protocol
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`to communicate with the workstations [but] Pucci does not explicitly disclose the
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`details of the recognition process.” (Petition, p. 14.) The Petition then relies on the
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`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, pp. 14-15.)
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`Neither Patent Owner nor Mr. Gafford dispute that Schmidt teaches an
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`automatic recognition process. (See POR, pp. 21-23.) Patent Owner instead alleges
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`that “any such automatic identification process (as discussed in Schmidt) would
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`cause the ION Workstation to attempt to access and/or reconfigure the ION Node in
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`an unpredictable and potentially destructive manner.” (POR, pp. 19-20.) But Patent
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`Owner provides no evidence or further explanation to support this speculation.
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`Patent Owner’s failure is understandable because Pucci’s ION Node is intended to
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`operate using the full capabilities of the SCSI standard, including SCSI’s automatic
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`recognition process. (See Zadok Decl. II, ¶¶16-17.)
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`Ground 1 relies on a Pucci—a system that uses SCSI—and Schmidt—a
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`textbook describing SCSI. (Petition, pp. 14-15.) 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., ¶¶40, 50-54, 72, 133;
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`Zadok Decl. II, ¶¶16-17.) And Patent Owner’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., ¶123.) 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., ¶123; 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.) Patent Owner does not dispute these
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`facts, and Schmidt corroborates Dr. Zadok’s testimony. (See POR, p. 22; Schmidt,
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`pp. 88, 132, 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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`“Patent Owner concedes, as it must, that peripheral devices that use SCSI
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`automatically respond to the INQUIRY command. (See POR, p. 20 (”it is
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`mandatory that a SCSI device be capable of responding to an INQUIRY
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`command”).) Patent Owner’s speculation that somehow this automatic recognition
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`would cause the workstation to begin accessing and reconfiguring the ION Node in
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`an unpredictable manner has no technical foundation. (Zadok Decl. II, ¶¶19-21.)
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`Patent Owner again provides no explanation or evidence to support its conjecture.
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`And even a cursory review of Schmidt demonstrates the obvious defects in Patent
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`Owner’s argument. (See Zadok Decl. II, ¶¶16-18.) A host uses the INQUIRY
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`command to identify useful information about a target, such as a peripheral’s device
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`class. (Zadok Decl. II, ¶17.) The workstation does not simply start reading, writing,
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`and configuring the peripheral device without first identifying the device class.
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`(Zadok Decl. II, ¶17.) Thus, with SCSI, the initiator (e.g., the workstation) knows
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`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 Patent Owner’s expert. (Zadok Decl. II, ¶¶17, 19-21; Gafford Depn. II, 83:5-11
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`(“But you would agree that the ION node could be implemented to identify itself as
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`a disk drive in response to an inquiry command? . . . A. Nothing in the ION spec
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`suggests or prevents doing so.”).) Because Pucci is used to emulate a local disk
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`drive, responding to an INQUIRY command by identifying the ION Node as a disk
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`drive (despite the ION Node not being a disk drive) is exactly what Pucci is
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`designed to do. (Zadok Decl. II, ¶19.) And a POSITA would not have encountered
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`unpredictable results because emulation within the context of SCSI was possible.
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`(See Gafford Depn. I, 21:6-22:25, 72:7-22, 73:9-19 (explaining that the preferred
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`embodiment responds to the INQUIRY command by identifying a peripheral as a
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`hard drive, albeit the peripheral not being an actual hard drive).) Responding to the
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`INQUIRY command by emulating a disk drive would not reconfigure the ION Node
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`in a destructive manner but instead achieve Pucci’s goal of having “[s]oftware
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`running 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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`Patent Owner also presents a tangential argument that the ION Node would
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`always respond with a CHECK CONDITION status. This argument is premised on
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`a 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 its 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 the device class as unknown (by using the 1Fh code). (Zadok Decl., ¶¶52-
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`54.) And in instances where Pucci uses its ION Node to emulate conventional
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`device classes, the ION Node would return the code that corresponds with the
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`device class (e.g., the 00h code that corresponds with the disk drive class in the
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`SCSI standard implemented by ION). (Zadok Decl., ¶121.)
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`Patent Owner’s argument that the INQUIRY command would somehow
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`reconfigure the ION Node in an unpredictable and destructive manner is especially
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`problematic because the ’746 patent itself uses SCSI and the INQUIRY command
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`during emulation. (See ’746 patent, Abstract, 4:5-17, 5:14-27, claim 15; Gafford
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`Depn. I, 15:1-22:7 (describing the use of SCSI and the INQUIRY command in a
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`related patent).) The ’746 patent does not describe any challenge that would need to
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`be overcome to emulate a hard disk in response to the INQUIRY command, and
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`nothing in the ’746 patent suggests that responding to the INQUIRY command
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`would itself reconfigure the analog data generating and processing device (ADGPD)
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`in an unpredictable and potentially destructive manner. Patent Owner tries to explain
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`why its ADGPD can emulate a hard disk but doing the same thing, according to
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`Pucci’s teachings, would destroy the peripheral device: “[T]he interface device of
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`the ‘746 Patent avoids this problem because it simulates, both in terms of hardware
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`and software, the way a hard drive works.” (POR, p. 23.) Not only is this distinction
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`between hardware emulation and software emulation unsupported by expert
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`testimony, the ’746 patent never explains how it simulates hardware and how this
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`hardware simulation is different than simply responding to the INQUIRY command
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`with the code for the disk drive class (i.e., 00h). Patent Owner also fails to reconcile
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`how the hardware in Pucci—a system designed to emulate conventional devices—is
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`not built to do exactly that. (See Zadok Decl. II, ¶19.)
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`In addition to being technically incorrect, the Board should disregard Patent
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`Owner’s arguments for another reason—Patent Owner provides no explanation or
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`supporting evidence. Patent Owner only supports its threadbare positions with
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`citations to statements in its expert’s declaration. But these statements merely parrot,
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`nearly verbatim, the speculations in the Patent Owner Response, providing no
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`further analysis or insight. (Compare POR, pp. 21-23, with Gafford Decl., ¶¶58-60.)
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`C. The applied combination teaches or suggest that “no requirement
`for any user-loaded file transfer enabling software” and “without
`requiring any user-loaded file transfer enabling software.”
`Patent Owner’s final argument that
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