`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01864
`Patent 6,470,399
`_______________
`___________________________________
`DECLARATION OF THOMAS A. GAFFORD UNDER 37 C.F.R. §
`42.53 IN SUPPORT OF PATENT OWNER RESPONSE UNDER 37
`C.F.R. § 42.120
`___________________________________
`
`Papst Licensing GmbH & Co., KG.
`Petitioner – Apple, Inc.
`Patent Owner - Papst Licensing GmbH &
`Co., KG.
`IPR2016-01864
`EXH. 2002
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ...............................................................................1
`I.
`BACKGROUND AND QUALIFICATIONS....................................2
`II.
`III. MATERIALS CONSIDERED ...........................................................6
`IV. PERSON OF ORDINARY SKILL IN THE ART ...........................6
`V. APPLICABLE LEGAL STANDARDS .............................................8
`VI. OVERVIEW OF THE ‘399 PATENT ............................................ 13
`VII. CLAIM CONSTRUCTION ............................................................. 16
`VIII. OVERVIEW OF PUCCI ................................................................. 18
`IX. OVERVIEW OF SCHMIDT ........................................................... 19
`X. VALIDITY OF THE ‘399 PATENT OVER PUCCI, SCHMIDT,
`KEPLEY AND THE “SAMPLING CIRCUIT REFERENCES” .......... 19
`
`
`
`
`
`
`i
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`
`
`I.
`
`Introduction
`I have been retained on behalf of Papst Licensing GmbH & Co. KG
`1.
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`(“Patent Owner” or “Papst”), and its counsel, DiNovo Price Ellwanger LLP, as an
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`expert in this proceeding. I am personally knowledgeable about the matters stated
`
`herein.
`
`2.
`
`I understand that Dr. Erez Zadok has provided a declaration (“Zadok
`
`Declaration”) on behalf of Apple Inc. (“Petitioner” or “Apple”), indicating that
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`claims 1, 3, 5, 11 and 14 of United States Patent No. 6,470,399 (“‘399 patent”) are
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`invalid.
`
`3.
`
`I have been asked to provide my conclusions and bases thereof
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`regarding several aspects of the issues in dispute. Based on my investigation in this
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`matter, I conclude that Petitioner and Dr. Zadok have failed to show that any of the
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`claims discussed in the Petition or Zadok Declaration are invalid for anticipation or
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`obviousness.
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`4.
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`I receive compensation at my standard hourly rate of $550 per hour for
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`my time working on this matter, plus expenses. I have no financial interest in Papst
`
`or the ‘399 patent, and my compensation is not dependent on the outcome of this
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`inter partes review (“IPR”) or the underlying litigation. The conclusions I present
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`are due to my own judgment.
`
`5.
`
`I reserve the right to modify and supplement the analysis and
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`
`
`
`1
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`
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`conclusions proposed herein based upon additional information including any
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`additional fact discovery or expert discovery by the parties.
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`II. Background and Qualifications
`6. My qualifications as an expert in the field of computer peripherals and
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`data transfer between a computer and peripheral devices, relevant to the subject
`
`matter claimed in the ‘399 patent, are provided in the paragraphs below. A copy of
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`my latest curriculum vitae (CV) is attached as Exhibit A, which provides further
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`details regarding my background and qualifications. This CV identifies a list of all
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`cases in which I have testified at trial or at deposition.
`
`7.
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`I have over forty years of experience with electronics and electrical
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`engineering, including extensive knowledge and experience with analog and digital
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`electronic circuitry, digital computer technology, computer peripherals, control
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`systems, digital communications, operating systems, and related software and
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`hardware components. My technical expertise relevant to the subject matter claimed
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`in the ‘399 patent includes my understanding of computer peripherals, analog and
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`digital circuitry, interface devices, device drivers, file systems, SCSI standards, data
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`buses, and operating systems.
`
`8.
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`As a summary of my employment and education history, I worked as a
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`Sergeant and Instructor for the United States Air Force as a maintenance technician
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`for air defense computer systems from 1967–1970. After leaving the Air Force, I
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`
`
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`2
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`
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`earned my Bachelor of Science in Electrical Engineering in 1972 from the University
`
`of Washington. After graduating, I was a candidate for a Master of Science degree
`
`in Electrical Engineering at Stanford University from 1972–1973, and I worked from
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`1973–1976 as an Engineer at Stanford University’s Artificial Intelligence
`
`Laboratory. My duties included the design, construction, and debugging of motor
`
`controls and sensor electronics for robotics and computer interfaces.
`
`9.
`
`After leaving Stanford, I founded G Systems in 1976, which managed
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`the hardware and software design and development of computer transaction
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`processing systems for a variety of applications and customers. Projects included
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`writing communications software and device drivers, design of hardware and
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`software interfaces for disk controllers, designing peripheral switches incorporated
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`into system products, communications controllers, co-design of mainframe
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`computers, and other projects.
`
`10.
`
`In 1983, I co-founded and served as head of engineering of Softix
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`Incorporated. Softix designed and produced systems to control and sell
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`entertainment tickets by ticket agencies and large arenas in the United States,
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`Canada, Australia, and Hong Kong. My duties at Softix included managing software
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`development efforts; developing architecture, design, sales, contracting, production,
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`and field support of large-scale software and hardware systems; and analyzing,
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`debugging, and writing software application and driver programs for feature
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`
`
`
`3
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`
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`enhancements and system integration. I was also responsible for selecting,
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`evaluating, integrating, and training customer staff and providing repair support for
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`all hardware components of minicomputer systems; developing peripheral switch
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`equipment for evolving system requirements; and manufacturing and selling
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`peripheral switching equipment. In 1988-89, a colleague at my company and I
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`designed a switch and repeater for the SCSI bus which required intimate knowledge
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`of the bus protocol and general familiarity with the bus commands and device
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`interface design. I applied for and received and successfully licensed four patents
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`covering this work.
`
`11.
`
`I currently own and operate the consulting firm of Gafford Technology.
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`The firm provides computer system-related services and offers analysis and
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`presentation services to assist clients in litigation efforts. Specific services include
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`consulting
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`in computer system design, software selection, and network
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`configuration, and providing expert factual analysis, claim interpretation assistance,
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`prior art investigation, and testimony in patent and hardware/software systems
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`litigation.
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`12.
`
`I am generally familiar with the analysis of patents. I am the inventor
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`of the following U.S. patents:
`
`• Switch for Distributed Arbitration Digital Data Buses, United States
`Patent No. 5,621,899, issued April 15, 1997;
`
`
`
`
`4
`
`
`
`• Method for Operating a Repeater for Distributed Arbitration Digital
`Data Buses, United States Patent No. 5,684,966, issued November 4,
`1997;
`• Repeater/Switch for Distributed Arbitration Digital Data Buses,
`United States Patent No. 5,758,109, issued May 26, 1998; and
`• Repeater/Switch for Distributed Arbitration Digital Data Buses,
`United States Patent No. 6,154,799, issued November 28, 2000.
`
`13. These patents relate to digital data buses used for communicating
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`signals between different functional components of digital computers.
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`14. Each of the patents listed above is directed to a repeater switch and
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`related systems and methods for distributed arbitration digital data buses, and
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`particularly applicable to a SCSI bus that I developed in the late 1980s. The repeater
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`permits many devices to be placed near each other at the end of a SCSI cable without
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`signal quality problems, and the switch permits sharing a device among several
`
`computers. Relevant to the patents as issue, both provide their features in a way that
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`is transparent to the standard SCSI communications protocol and commands passed
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`between initiator computers and target peripherals connected to the SCSI bus. All
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`commands, including the common READ, WRITE, TEST UNIT READY, MODE
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`SENSE, FORMAT DEVICE, and target behavior including disconnect/reconnect,
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`pass through my switch and repeater as though the switch or repeater was not
`
`present. Through this work and my work in connection with other projects, I am
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`very familiar with SCSI.
`
`15. The ‘399 patent concerns data acquisition systems for generating
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`
`
`
`5
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`
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`analog data, and processing, storing, and transferring the acquired data to a host
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`computer without requiring a user to install any drivers or specialized software on
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`the host computer. I recognize this technology as being well within the sphere of
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`my experience and expertise, and I understand the technology described in the
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`patents fully. I believe my experience and education in this industry qualifies me to
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`explain this technology and to address the issues of patent validity from the
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`perspective of a person of ordinary skill in the art. I am qualified to submit expert
`
`analyses in this proceeding.
`
`III. Materials Considered
`I have reviewed and considered all documents discussed throughout
`16.
`
`this declaration, including the Petition related to IPR2016-01864 (including relevant
`
`exhibits), the Patent Owner Preliminary Response, the Decision of Institution related
`
`to IPR2016-01864, the ‘399 patent, the ‘399 patent prosecution history (or at least
`
`relevant parts thereof), the Zadok Declaration, Pucci, M., “Configurable Data
`
`Manipulation in an Attached Multiprocessor,” 1991 (“Pucci”), The SCSI Bus and
`
`IDE Interface Protocols, Applications and Programming, by Schmidt, First Edition,
`
`Addison-Wesley, 1995 (“Schmidt”) and the Patent Owner Response. Naturally, my
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`review of these materials was informed by my education, my experience in and
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`knowledge of the industry, and my work both as an engineer and a consultant.
`
`IV. Person of Ordinary Skill in the Art
`I have been asked to address the issues from the perspective of a person
`17.
`6
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`
`
`
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`of ordinary skill in the art (“POSITA”) of the invention of the ‘399 patent. As stated
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`in the ‘399 patent, the field of the invention relates to “the transfer of data and in
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`particular to interface devices for communication between a computer or host device
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`and a data transmit/receive device from which data is to be acquired or with which
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`two-way communication is to take place.” Exhibit 1001 (“’399 Patent”) at 1:9-13.
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`18. Petitioner asserts that “a person having ordinary skill in the art
`
`(‘POSITA’) at the relevant time, would have had at least a four-year degree in
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`electrical engineering, computer science, computer engineering, or related field of
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`study, or equivalent experience, and at least two years’ experience in studying or
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`developing computer interfaces or peripherals and storage related software.” Paper 2
`
`(Petition) at 8. Petitioner further contends that “[a] POSITA would also be familiar
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`with operating systems (e.g., MS-DOS, Windows, Unix), their associated file systems
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`(e.g., FAT, UFS, FFS), device drivers for computer components and peripherals (e.g.,
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`mass storage device drivers), and communication interfaces (e.g., SCSI, USB,
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`PCMCIA).” Id.
`
`19. Patent Owner contends that a POSITA would have at least a bachelor’s
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`degree in a related field such as computer engineering or electrical engineering and at
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`least three years of experience in the design, development, and/or testing of hardware
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`and software components involved with data transfer or in embedded devices and their
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`interfaces with host systems. Paper 12 (Patent Owner Preliminary Response) at 7.
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`
`
`
`7
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`
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`Alternatively, a POSITA may have five or more years of experience in these
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`technologies, without a bachelor’s degree. Id.
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`20. The Board determined that there were not meaningful differences
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`between the parties’ definitions of a POSITA and adopted Petitioner’s assessment
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`of a POSITA in the Institution Decision. Paper 13 (Institution Decision) at 11.
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`Because I agree with the Board that there are not meaningful differences between
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`the parties’ definitions of a POSITA and because I qualify as a POSITA under either
`
`assessment, I will proceed with this declaration using the Board’s adopted definition
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`of a POSITA.
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`21.
`
`I consider myself to have at least the credentials of a person of ordinary
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`skill in the art, and I am capable of addressing the issues from the perspective of
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`such a person. As a result of my education, academic experience, and industrial
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`experience, I am familiar with interface devices and peripheral technology and also
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`with the state of that technology in March of 1997, when the first application to
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`which the ‘399 patent claims priority was filed.
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`V. Applicable Legal Standards
`22. As a technical expert, I am not offering any legal opinions. Rather I am
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`offering technical assessments and opinions. In rendering my analysis, I have been
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`informed by counsel regarding various legal standards for determining patentability.
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`I have applied those standards informing my technical opinions expressed in this
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`
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`8
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`
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`declaration.
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`23. The patent claims describe the invention made by the inventor and
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`describe what the patent owner may prevent others from doing. I understand that an
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`independent claim sets forth all the requirements that must be met in order to be
`
`covered by that claim. I further understand that a dependent claim does not itself
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`recite all of the requirements of the claim but refers to another claim and incorporates
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`all of the requirements of the claim to which it refers.
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`24.
`
`It is my understanding that for a patent claim to be anticipated, all
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`limitations of the claim must be disclosed or inherent in a single prior art reference.
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`25.
`
`It is my understanding that a claimed invention is unpatentable if the
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`differences between the invention and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which the subject matter pertains. Obviousness,
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`as I understand it, is based on the scope and content of the prior art, the differences
`
`between the prior art and the claim, and the level of ordinary skill in the art.
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`26.
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`I understand that when evaluating obviousness, one must not consider
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`whether the claimed invention would have been obvious to a layman or to an expert;
`
`not use hindsight when comparing the prior art to the claimed invention; not consider
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`what was learned from the teachings of the patent; or use the patent as a road map
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`for selecting and combining items of prior art. In other words, one should avoid
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`
`
`
`9
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`
`
`using the challenged patent as a guide through the maze of prior art references,
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`combining the right references in the right way so as to achieve the result of the
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`claims at issue. Instead, one must put oneself in the place of a person of ordinary
`
`skill at the time the invention was made and consider only what was known before
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`the invention was made and not consider what is known today.
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`27.
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`I understand that obviousness should be considered in light of the
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`problem facing the inventor and the complexity of the alternatives for solving the
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`problem. That individual elements of the claimed invention are disclosed in the prior
`
`art is not alone sufficient to reach a conclusion of obviousness.
`
`28.
`
`I also understand that when considering the obviousness of a patent
`
`claim, one should consider whether a teaching, suggestion, or motivation to combine
`
`the references exists so as to avoid impermissibly applying hindsight when
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`considering the prior art. I understand that a previous approach to the motivation to
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`combine required a teaching, suggestion, or motivation to be found explicitly or
`
`implicitly: (1) in the prior art; (2) in the knowledge of those of ordinary skill in the
`
`art; or (3) from the nature of the problem to be solved. However, I understand that
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`a more expansive and flexible approach is now used when determining obviousness
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`and the motivation to combine references. I understand that the legal determination
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`of the motivation to combine references allows recourse to logic, judgment, and
`
`common sense, but that any such motivation to combine references must still avoid
`
`
`
`
`10
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`
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`the improper application of hindsight or reliance on the patentee’s disclosure of his
`
`invention as found in the patent specification, drawings and claims.
`
`29.
`
`I understand that if the teachings of a prior art reference would lead one
`
`skilled in the art to make a modification that would render that prior art device,
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`system, or method inoperable, then such a modification would generally not be
`
`obvious. I also understand that if a proposed modification would render the prior art
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`device, system, or method unsatisfactory for its intended purpose, then there is
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`strong evidence that no suggestion or motivation existed at the time of the subject
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`invention to make the proposed modification.
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`30.
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`I understand that it is improper to combine references where the
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`references teach away from their combination. I understand that a reference may be
`
`said to teach away when a person of ordinary skill, upon reading the reference, would
`
`be discouraged from following the path set out in the reference, or would be led in a
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`direction divergent from the path that was taken by the applicant. It is also my
`
`understanding that the degree of teaching away will depend on the particular facts;
`
`in general, a reference will teach away if it suggests that the line of development
`
`flowing from the reference’s disclosure is unlikely to be productive of the result
`
`sought by the applicant. I understand that a reference teaches away, for example, if
`
`(1) the combination would change the principle of operation of the base reference,
`
`(2) the combination would produce a seemingly inoperative device, or (3) the
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`
`
`
`11
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`
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`references leave the impression that the product would not have the property sought
`
`by the applicant or would no longer achieve the intended purpose(s) of the references
`
`being modified or combined.
`
`31. Secondary considerations of obviousness are also considered in
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`determining whether a claimed invention is obvious. For example, commercial
`
`success of the invention, copying by others, long-standing need in the art resolved
`
`by the patented invention, prior failure of others to solve the problem, licenses
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`of the invention by others, unexpected results of the invention and skepticism of
`
`the invention or teaching away from the invention by others all tend to establish that
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`an invention was non-obvious.
`
`32.
`
`I understand that the first step in determining either validity or
`
`infringement is to properly construe the claims. While it is my understanding that
`
`the Board is not bound by any previous claim constructions in the Institution
`
`Decision or in other judicial proceedings, at least two district court claim
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`constructions and one Federal Circuit opinion have construed some of the terms of
`
`the ‘399 patent. I will discuss the claim constructions I have considered for certain
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`limitations in more detail below.
`
`33.
`
`It is my understanding that an issued United States patent is presumed
`
`to be valid. It is my further understanding that it is the Petitioner’s burden to
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`establish invalidity, including invalidity based on either anticipation or obviousness,
`
`
`
`
`12
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`
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`by a preponderance of the evidence in this proceeding. Invalidity issues are
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`determined on a claim-by-claim basis by comparing the claim to the prior art.
`
`VI. Overview of the ‘399 Patent
`34. The ’399 patent involves a unique method for achieving high data
`
`transfer rates for data acquisition systems (e.g., still pictures, videos, voice
`
`recordings) to a general-purpose computer, without requiring a user to purchase,
`
`install, and/or run specialized software for each system. Exhibit 1001 (’399 patent)
`
`at 4:23-27. At the time of the invention, there were an increasing number and variety
`
`of data acquisition systems with the ability to capture high volumes of information.
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`Id. at 1:34-52. As such, there was an increasing demand to transfer that information
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`to commercially-available, general purpose computers. Id. at 1:20-32. But at that
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`time—and today—performing that data transfer operation required either loading
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`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or specifically
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`matching interface devices for a data acquisition system to a host system that may
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`maximize data transfer rates but lacks the flexibility to operate with different
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`devices. Id. at 1:17-3:21.
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`35. The ‘399 patent recognizes that the existing options were wasteful and
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`inefficient and presents a solution that would achieve high data transfer rates,
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`without specialized software, while being sufficiently flexible to operate
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`
`
`
`13
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`
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`independent of device or host manufacturers. Id. at 2:17-36 and 3:24-27. The
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`resulting invention would allow a data acquisition system to identify itself as a type
`
`of common device so as to leverage the inherent capabilities of general-purpose,
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`commercially-available computers. Id. at 5:6-20. Accordingly, users could avoid
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`loading specific software; improve data transfer efficiency; save time, processing
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`power, and memory space; and avoid the waste associated with purchasing
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`specialized computers or loading specific software for each device. Id. at 3:24-27,
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`8:23-9:58, 9:23-34, 10:6-12 and 12:23-41. The ’399 patent claims variations of this
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`concept and provides a crucial, yet seemingly simple, method and apparatus for a
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`high data rate, device-independent information transfer. Id. at 3:24-27.
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`36. The interface device disclosed in the ‘399 patent can leverage “drivers
`
`for input/output device[s] customary in a host device which reside in the BIOS
`
`system of the host device . . . .” Id. at 11:9-15; see also id. at 5:13-17 (“The interface
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`device according to the present invention therefore no longer communicates with the
`
`host device or computer by means of a specially designed driver but by means of a
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`program which is present in the BIOS system . . .”), 6:2-9 (describing the use of
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`“usual BIOS routines” to issue INQUIRY instructions to the interface), and 8:43-50
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`(describing use of BIOS routines). Similarly, the written description describes also
`
`using drivers included in the operating system. Id. at 5:64-6:3 (“Communication
`
`between the host system or host device and the interface device is based on known
`
`
`
`
`14
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`
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`standard access commands as supported by all known operating systems (e.g.,
`
`DOS®, Windows®, Unix®).”). Alternatively, if the required specific driver or
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`drivers for a multi-purpose interface (such as a SCSI interface) is already present in
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`a host device, such drivers could be used with the ‘399 patent’s interface device
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`instead of, or in addition to, customary drivers which reside in the BIOS. Id. at 11:9-
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`12. Accordingly, the ’399 patent contemplated a universal interface device that
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`could operate independent of the manufacturer of the computer. Id. at 12:23-40.
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`Indeed, the preferred embodiment discloses that the interface device includes three
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`different connectors, a 50 pin SCSI connector 1240, a 25 pin D-shell connector 1280,
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`and a 25 pin connector 1282, to allow the ‘399 Patent’s interface device to connect
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`to a variety of different standard interfaces that could be present in a host computer.
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`Id. at 9:30-47 and FIG. 2.
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`37. As is apparent from the title of the ’399 patent, the interface device
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`disclosed is capable of acquiring and processing analog data. As shown in FIG. 2
`
`reproduced below, the ’399 patent discloses that the interface device 10 has an
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`analog input at connection 16 for receiving analog data from a data transmit/receive
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`device on a plurality of analog input channels 1505 and simultaneously digitizing
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`the received analog data using, inter alia, a sample and hold amplifier 1515 and an
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`analog to digital converter 1530 that converts analog data received from the plurality
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`of channels 1505 into digital data that may then be processed by the processor 1300.
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`
`
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`15
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`
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`Id. at 9:49-64 and 10:27-41. “Each sample/hold circuit is connected to a
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`corresponding input of an 8-channel multiplexer 1520 which feeds its output signals
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`via a programmable amplifier 1525 into an analog/digital converter (ADC).” Id. at
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`9:55-58. This arrangement of sample/hold circuits permits a single ADC to be used
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`even when multiple analog data channels are being utilized. Id. at 9:49-64.
`
`VII. Claim Construction
`I have experience applying claim constructions that are provided to me
`38.
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`16
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`
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`in connection with my prior art work as an expert in district court proceedings and
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`IPR proceedings.
`
`39.
`
`It is my understanding that the Board ordinarily construes terms based
`
`on their broadest reasonable construction in view of the specification. However,
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`because the ‘399 patent will likely expire prior to the Final Written Decision in the
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`present proceeding, it is my further understanding that the Board will construe the
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`‘399 patent claims based on their ordinary and customary meaning in accordance
`
`with Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Paper
`
`15 (Institution Decision) at 7.
`
`40.
`
`In the Institution Decision, the Board adopted several claim limitation
`
`constructions from a previous litigation involving the ‘399 patent that was also
`
`appealed to the Federal Circuit. “Interface Device” was construed such that it is not
`
`limited to “a device that is physically separate and apart from, and not permanently
`
`attached to, a data device (or a host computer).” Id. at 8. It was further determined
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`that a “second connecting device” does not require “a physical plug, socket, or other
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`structure that permits a user to readily attach and detach something else.” Id. at 9.
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`A “data transmit/receive device” was determined “need not be capable of
`
`communicating ‘when connected to the host device by the interface device.’” Id.
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`“Virtual files” were determined to be “not limited to a file ‘whose content is stored
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`off the interface device, though it includes such files.’” Id. Finally, an “input/output
`
`
`
`
`17
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`
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`device customary in a host device” was construed not to be limited to a device
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`“normally present within the chassis of a computer.” Id. at 10.
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`41.
`
`In the underlying District Court litigation related to this IPR, a claim
`
`construction issued on March 7, 2017 that further construed certain terms of the ‘399
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`patent. A copy of this claim construction order is being included as Exhibit 2003.
`
`VIII. Overview of Pucci
`42. The ION Data Engine is described in the reference, Pucci, M.,
`
`“Configurable Data Manipulation in an Attached Multiprocessor (1991). The ION
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`Data Engine is a multiprocessor tasking system for providing data manipulation
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`services for collections of workstations. Exhibit 104 (Pucci) at 217. The ION Data
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`Engine allows applications residing in the workstation to implement specific
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`functions by enabling the reading or writing of specific block addresses within the
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`ION drive. Id. at 221.
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`43. The ION system couples an analog to digital converter (ADC) to a SCSI
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`target interface through a memory buffer. The SCSI target responds to disk drive
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`commands for reading. However, access by the host to ADC data is done by means
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`of the host reading a single block address in the simulated disk drive. Thus the ADC
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`data is not provided by files in a file system. The ION reference also has the ability
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`to emulate a file system, but it teaches that this is only used for disk drive
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`performance analysis, not for ADC access. Id. at 236. As such, the reference teaches
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`18
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`away from accessing ADC data in the form of files because files exists but are not
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`used for ADC data. As described in Pucci, ADC data is accessed by an application
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`that does not use the host computer’s file system, and instead reads a certain disk
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`block to obtain ADC data. Id. at 221.
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`IX. Overview of Schmidt
`44. As the Board stated, “Schmidt describes the SCSI bus and IDE
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`(Integrated Drive Electronics) interface, which both are ANSI (American Nation
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`Standards Institute) standards.” Paper 13 (Institution Decision) at 14; Exhibit 1007
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`(Schmidt) at Preface. “According to Schmidt, these interfaces are two of the most
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`important interfaces for computer peripherals in use at that time, and almost all
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`computers at that time, from PCs to workstations to mainframes, were equipped with
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`a SCSI interface.” Id. “The SCSI bus is designed for hard drives, as well as tape
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`drives, CD-ROM, scanners, and printers.” Id.
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`X. Validity of the ‘399 Patent Over Pucci, Schmidt, Kepley and the
`“Sampling Circuit References”
`In my opinion, Pucci alone, or in combination with Schmidt, Kepley
`45.
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`and/or the “sampling circuit” references, fail(s) to disclose claim 1 of the ‘399 patent.
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`Pucci and/or Schmidt and/or Kepley and/or the “sampling circuit” references do not
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`disclose the “wherein the first command interpreter is configured in such a way that
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`the command interpreter, when receiving an inquiry from the host device as to a type
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`of a device attached to the multi-purpose interface of the host device, sends a signal,
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`19
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`regardless of the type of the data transmit/receive device attached to the second
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`connecting device of the interface device, to the host device which signals to the host
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`device that it is an input/output device customary in a host device, whereupon the
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`host device communicates with the interface device by means of the driver for the
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`input/output device customary in a host device” limitation of claim 1 of the ‘399
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`patent. In fact, Petitioner and Dr. Zadok only rely on Pucci and Schmidt for
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`disclosing this limitation and do not apply Kepley or the “sampling circuit”
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`references to this limitation (other than implying Kepley discloses the data
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`transmit/receive device). Paper 2 (Petition) at 31-39; Exhibit 1003 (Zadok
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`Declaration) at ¶¶ 103-114.
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`46.
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`In my opinion, Pucci or the combination of Pucci and Schmidt fails to
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`disclose the “when receiving an inquiry from the host device as to a type of a device
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`attached to the multi-purpose interface of the host device, sends a signal, regardless
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`of the type of the data transmit/receive device attached to the second connecting
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`device of the interface device, to the host device which signals to the host device
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`that it is an input/output device customary in a host device” portion of this limitation
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`because Pucci does not disclose that the ION Data Engine responds to an inquiry
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`from the ION Workstation by sending a signal that it is an input/output device
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`customary in a host device and any such automatic response would cause the ION
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`Workstation, as described in Pucci, to attempt to access and/or reconfigure the ION
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`System in an unpredictable and potentially destructive manner.
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`47. The ION Data Engine is a multiprocessor tasking system for providing
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`data manipulation services for collections of workstations. Exhibit 1041 (Pucci) at
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`217. The ION Data Engine allows applications residing in the workstation to
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`implement specific functions by enabling the reading or writing of specific block
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`addresses within the ION drive. Id. at 221. For example,
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`ION supports an analog to digital (A-to-D) conversion application that
`provides voice messaging service for a prototype telephone switch. The bulk
`of the application resides in a conventional workstation, while the peripheral
`devices are located within ION. The application's interface to the A-to-D
`converters is implemented as a