UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01864
`Patent 6,470,399
`_______________
`___________________________________
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`_______________
`
`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
`_______________
`___________________________________
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE .................................. 1
`
`II.
`
`INTRODUCTION ............................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`STATEMENT OF RELIEF REQUESTED ......................................... 1
`
`OVERVIEW OF THE ‘399 PATENT ................................................. 2
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 5
`
`CLAIM CONSTRUCTION .................................................................. 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS ..................... 9
`
`A.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS OF
`REJECTION ........................................................................................................... 11
`PUCCI, SCHMIDT, KEPLEY, THE “SAMPLING CIRCUIT”
`REFERENCES AND LI DO NOT RENDER CLAIMS 1, 3, 5, 11
`AND 14 OBVIOUS ................................................................................. 11
`1. OVERVIEW OF PUCCI ................................................................ 11
`2. OVERVIEW OF SCHMIDT ......................................................... 12
`3. OVERVIEW OF KEPLEY ............................................................ 13
`
`4. PUCCI, SCHMIDT, KEPLEY, THE “SAMPLING CIRCUIT”
` REFERENCES AND LI DO NOT DISCLOSE THE
` “WHEREIN THE FIRST COMMAND INTERPRETER IS
` CONFIGURED IN SUCH A WAY THAT THE COMMAND
` INTERPRETER, WHEN RECEIVING AN INQUIRY FROM
` THE HOST DEVICE AS TO A TYPE OF A DEVICE
` ATTACHED TO THE MULTI-PURPOSE INTERFACE OF
` THE HOST DEVICE, SENDS A SIGNAL, REGARDLESS
`ii
`
`
`
`
`
` OF THE TYPE OF THE DATA TRANSMIT/RECEIVE
` DEVICE ATTACHED TO THE SECOND CONNECTING
` DEVICE OF THE INTERFACE DEVICE, TO THE HOST
` DEVICE WHICH SIGNALS TO THE HOST DEVICE THAT
` IT IS AN INPUT/OUTPUT DEVICE CUSTOMARY IN A
` HOST DEVICE” LIMITATION OF INDEPENDENT CLAIM 1
` OR THE CORRESPONDING LIMITATIONS OF
` INDEPENDENT CLAIMS 11 AND 14 OF THE ‘399
` PATENT ............................................................................................ 13
`
`5. PUCCI, SCHMIDT, KEPLEY, THE “SAMPLING CIRCUIT”
` REFERENCES AND LI DO NOT DISCLOSE THE
` “WHEREUPON THE HOST DEVICE COMMUNICATES
` WITH THE INTERFACE DEVICE BY MEANS OF THE
` DRIVER FOR THE INPUT/OUTPUT DEVICE CUSTOMARY
` IN A HOST DEVICE” LIMITATION OF INDEPENDENT
` CLAIM 1 OR THE CORRESPONDING LIMITATIONS OF
` INDEPENDENT CLAIMS 11 AND 14 OF THE ‘399
` PATENT ........................................................................................... 18
`6. PUCCI, SCHMIDT, KEPLEY, THE “SAMPLING CIRCUIT”
` REFERENCES AND LI DO NOT RENDER
` OBVIOUS DEPENDENT CLAIMS 3 AND 5 OF THE ‘399
` PATENT ........................................................................................... 24
`PUCCI AND SCHMIDT WOULD NOT BE COMBINED BY ONE
`SKILLED IN THE ART ......................................................................... 24
`INTER PARTES REVIEW IS UNCONSTITUTIONAL .................... 28
`C.
`IV. CONCLUSION ............................................................................................... 28
`
`B.
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ex. No.
`2001
`
`2002
`
`2003
`
`Ex. No.
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`
`1013
`1014
`
`EXHIBIT LIST
`
`Currently and Previously Filed – Patent Owner
`
`
`Description
`Defendants’ Responsive Claim Construction Brief in Papst Licensing
`GmbH & Co., KG v. Apple, Inc. (6:15-CV-01095-RWS)
`Declaration of Thomas A. Gafford in Support of Patent Owner
`Response (“Gafford Declaration”)
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Claim Construction Memorandum and Order
`issued March 7, 2017
`
`
`
`Previously Filed – Petitioner
`
`
`
`Description
`U.S. Patent 6,470,399 to Tasler
`File History for U.S. Patent 6,470,399
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 6,470,399
`Curriculum Vitae of Dr. Erez Zadok
`Intentionally left blank
`Intentionally left blank
`The SCSI Bus and IDE Interface Protocols, Applications and
`Programming, by Schmidt, First Edition, Addison-Wesley, 1995
`Intentionally left blank
`U.S. Patent No. 4,727,512 to Birkner
`U.S. Patent No. 4,792,896 to Maclean
`International Publication Number WO 92/21224 to Jorgensen
`Small Computer System Interface-2 (SCSI-2), ANSI X3.131-1994,
`American National Standard for Information Systems (ANSI).
`Operating System Concepts, by Silberschatz et al., Fourth Edition.
`Microsoft Computer Dictionary, Third Edition, Microsoft Press, 1997.
`
`iv
`
`
`
`1015
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`1025
`
`Intentionally left blank
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015).
`The Art of Electronics, by Horowitz et al., First Edition, Cambridge
`University Press, 1980.
`The IEEE Standard Dictionary of Electrical and Electronics Terms,
`Sixth Edition, 1996.
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language, Random House, 1996.
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`“Principles of Data Acquisition and Conversion,” Burr-Brown
`Application Bulletin, 1994.
`“Principles of Data Acquisition and Conversion,” Intersil Application
`Note, October 1986.
`“Sample-and-Hold Amplifiers,” Analog Devices MT-090 Tutorial,
`2009.
`Declaration of Scott Bennett
`Discrete-Time Signal Processing, by Oppenheim et al., First Edition,
`Prentice-Hall, 1989.
`1026-1030 Intentionally left blank
`1031
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30, 1994
`(“PNP SCSI”)
`1032-1040 Intentionally left blank
`1041
`Pucci, M., “Configurable Data Manipulation in an Attached
`Multiprocessor,” 1991
`U.S. Patent No. 4,790,003 to Kepley et al., titled “Message Service
`System Network”
`1043-1051 Intentionally left blank
`1052
`Usenix Declaration
`1053
`U.S. Patent No. 5,617,423 to Li et al.
`
`
`1042
`
`
`
`
`
`v
`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner Apple, Inc. (“Petitioner”) did not submit a statement of material
`
`facts in its Petition for inter partes review. Paper 2 (Petition). Accordingly, no
`
`response to a statement of material facts is due pursuant to 37 C.F.R. § 42.23(a),
`
`and no facts are admitted.
`
`II.
`
`INTRODUCTION
`Patent Owner Papst Licensing GMBH & Co., KG (“Patent Owner”)
`
`respectfully submits this Patent Owner Response under 35 U.S.C. §§ 311-319 and
`
`37 C.F.R. § 42.120. It is being timely filed on or before July 21, 2017 pursuant to
`
`the Scheduling Order issued in this proceeding and the Stipulation Regarding Due
`
`Dates 1 and 2. Paper 14 (Scheduling Order) at 7; Paper 16 (Stipulation Regarding
`
`Due Dates 1 and 2) at 1.
`
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e). Petitioner’s propositions of unpatentability fail
`
`to meet that burden with respect to claims 1, 3, 5, 11 and 14 of U.S. Patent No.
`
`6,470,399 (“’399 Patent”).
`
`
`
`
`
`STATEMENT OF RELIEF REQUESTED
`A.
`Pursuant to 35 U.S.C. § 316, Patent Owner respectfully requests that the
`
`1
`
`
`
`Patent Trial And Appeal Board (“Board” or “PTAB”) find that originally issued
`
`claims 1, 3, 5, 11 and 14 of the ‘399 Patent are valid in view of the proposed grounds
`
`of unpatentability under consideration.
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘399 PATENT
`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. Id. at
`
`1:34-52. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:20-32. But at that
`
`time—and today—performing that data transfer operation required either loading
`
`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or specifically
`
`matching interface devices for a data acquisition system to a host system that may
`
`maximize data transfer rates but lacks the flexibility to operate with different
`
`devices. Id. at 1:17-3:21.
`
`The ‘399 Patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`
`
`2
`
`
`
`without specialized software, while being sufficiently flexible
`
`to operate
`
`independent of device or host manufacturers. Id. at 2:17-36 and 3:24-27. The
`
`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,
`
`commercially-available computers. Id. at 5:6-20. Accordingly, users could avoid
`
`loading specific software; improve data transfer efficiency; save time, processing
`
`power, and memory space; and avoid the waste associated with purchasing
`
`specialized computers or loading specific software for each device. Id. at 3:24-27,
`
`8:23-9:58, 9:23-34, 10:6-12 and 12:23-41. The ’399 Patent claims variations of this
`
`concept and provides a crucial, yet seemingly simple, method and apparatus for a
`
`high data rate, device-independent information transfer. Id. at 3:24-27.
`
`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 device
`
`according to the present invention therefore no longer communicates with the host
`
`device or computer by means of a specially designed driver but the means of a
`
`program which is present in the BIOS system . . .”), 6:2-9 (describing the use of
`
`“usual BIOS routines” to issue INQUIRY instructions to the interface), and 8:43-50
`
`(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
`
`
`
`3
`
`
`
`between the host system or host device and the interface device is based on known
`
`standard access commands as supported by all known operating systems (e.g.,
`
`DOS®, Windows®, Unix®).”). Alternatively, if the required specific driver or
`
`drivers for a multi-purpose interface (such as a SCSI interface) is already present in
`
`a host device, such drivers could be used with the ‘399 Patent’s interface device
`
`instead of, or in addition to, customary drivers which reside in the BIOS. Id. at 11:9-
`
`12. Accordingly, the ’399 Patent contemplated a universal interface device that
`
`could operate independent of the manufacturer of the computer. Id. at 12:23-40.
`
`Indeed, the preferred embodiment discloses that the interface device includes three
`
`different connectors, a 50 pin SCSI connector 1240, a 25 pin D-shell connector 1280,
`
`and a 25 pin connector 1282, to allow the ‘399 Patent’s interface device to connect
`
`to a variety of different standard interfaces that could be present in a host computer.
`
`Id. at 9:30-47 and FIG. 2.
`
`As is apparent from the title of the ’399 Patent, the interface device 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 analog input at
`
`connection 16 for receiving analog data from a data transmit/receive device on a
`
`plurality of analog input channels 1505 and simultaneously digitizing the received
`
`analog data using, inter alia, a sample and hold amplifier 1515 and an analog to
`
`digital converter 1530 that converts analog data received from the plurality of
`
`
`
`4
`
`
`
`channels 1505 into digital data that may then be processed by the processor 1300.
`
`Id. at 9:49-64 and 10:27-41. “Each sample/hold circuit is connected to a
`
`corresponding input of an 8-channel multiplexer 1520 which feeds its output signals
`
`via a programmable amplifier 1525 into an analog/digital converter (ADC).” Id. at
`
`9:55-58. This arrangement of sample/hold circuits permits a single ADC to be used
`
`even when multiple analog data channels are being utilized. Id. at 9:49-64.
`
`C.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`“The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to have known the relevant art at the time of the invention.” Manual of
`
`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (1) type of problems
`
`encountered in the art; (2) prior art solutions to those problems; (3) rapidity with
`
`which innovations are made; (4) sophistication of the technology; and (5)
`
`educational level of active workers in the field. In re GPAC, 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995).
`
`Petitioner’s proposed definition of the level of ordinary skill in the art is
`
`partially consistent with Patent Owner’s view. 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 electrical engineering, computer science, computer engineering,
`
`or related field of study, or equivalent experience, and at least two years’ experience
`
`in studying or developing computer interfaces or peripherals and storage related
`
`software.” Paper 2 (Petition) at 8. Petitioner further contends that “[a] POSITA would
`
`also be familiar with operating systems (e.g., MS-DOS, Windows, Unix), their
`
`associated file systems (e.g., FAT, UFS, FFS), device drivers for computer
`
`components and peripherals (e.g., mass storage device drivers), and communication
`
`interfaces (e.g., SCSI, USB, PCMCIA).” Id.
`
`Patent Owner contends that the field of the invention relates to “the transfer of
`
`
`
`6
`
`
`
`data and in particular to interface devices for communication between a computer or
`
`host device and a data transmit/receive device from which data is to be acquired or
`
`with which two-way communication is to take place.” Exhibit 1001 (‘399 Patent) at
`
`1:9-13. A POSITA would have at least a bachelor’s degree in a related field such as
`
`computer engineering or electrical engineering and at least three years of experience
`
`in the design, development, and/or testing of hardware and software components
`
`involved with data transfer or in embedded devices and their interfaces with host
`
`systems. Alternatively, a POSITA may have five or more years of experience in these
`
`technologies, without a bachelor’s degree.
`
`The Board previously determined that there were not meaningful differences
`
`between the parties’ definitions of a POSITA and adopted Petitioner’s assessment
`
`of a POSITA in the Institution Decision. Paper 13 (Institution Decision) at 11.
`
`While Patent Owner believes its proposed definition is more appropriate, it agrees
`
`with the Board that there are not meaningful differences between the parties’
`
`definitions of a POSITA for purposes of this proceeding.
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board ordinarily construes claim terms
`
`in an unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`
`
`7
`
`
`
`one of ordinary skill in the art. Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 136
`
`S. Ct. 2131, 2146 (June 20, 2016). The broadest reasonable meaning given to claim
`
`language must take into account any definitions presented in the specification. In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass,
`
`314 F.3d 575, 577 (Fed. Cir. 2002)). Under this standard, claim terms are given their
`
`ordinary and customary meaning as would be understood by one of ordinary skill in
`
`the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005) (en banc)).
`
`However, because the ‘399 Patent will probably expire prior to the Final
`
`Written Decision in the present proceeding, the Board will likely construe the ‘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 13
`
`(Institution Decision) at 8.
`
`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. It was further determined that
`
`a “second connecting device” does not require “a physical plug, socket, or other
`
`
`
`8
`
`
`
`structure that permits a user to readily attach and detach something else.” Id. at 9.
`
`A “data transmit/receive device” was determined “need not be capable of
`
`communicating ‘when connected to the host device by the interface device.’” Id.
`
`“Virtual files” were determined to be “not limited to a file ‘whose content is stored
`
`off the interface device, though it includes such files.’” Id. Finally, an “input/output
`
`device customary in a host device” was construed not to be limited to a device
`
`“normally present within the chassis of a computer.” Id. at 10.
`
`In the underlying district court litigation related to this IPR, a claim
`
`construction order issued on March 7, 2017 that further construed certain terms of
`
`the ‘399 Patent. A copy of this claim construction order is being included as Exhibit
`
`2003 for the Board’s consideration.
`
`
`
`E. SUMMARY OF PATENT OWNER’S ARGUMENTS
`The Board instituted inter partes review on claims 1, 3, 11 and 14 of the ‘399
`
`Patent based on Pucci, Kepley, Schmidt and the “sampling circuit” references. Paper
`
`13 (Institution Decision) at 21. The Board further instituted inter partes review on
`
`claim 5 of the ‘399 Patent based on Pucci, Kepley, Schmidt, Li and the “sampling
`
`circuit” references. Id. However, these proposed grounds of unpatentability fail
`
`with respect to all of these claims because the proposed references and combination
`
`of references fail to disclose or suggest each and every limitation as recited by the
`
`‘399 Patent, and Pucci and Schmidt would not be combined in the manner Petitioner
`
`
`
`9
`
`
`
`suggests.
`
`Pucci, M., “Configurable Data Manipulation in an Attached Multiprocessor,”
`
`1991 (“Pucci”), alone or in combination with the other applied prior art, does not
`
`disclose the “wherein the first command interpreter is configured in such a way that
`
`the command interpreter, when receiving an inquiry from the host device as to a
`
`type of a device attached to the multi-purpose interface of the host device, sends a
`
`signal, regardless of the type of the data transmit/receive device attached to the
`
`second connecting device of the interface device, to the host device which signals
`
`to the host device that it is an input/output device customary in a host device,
`
`whereupon the host device communicates with the interface device by means of the
`
`driver for the input/output device customary in a host device” limitation of
`
`challenged independent claim 1 of the ‘399 Patent or the corresponding limitations
`
`of independent claims 11 and 14 of the ‘399 Patent.
`
`Further, Petitioner’s assertions of obviousness based on combining the
`
`primary reference, Pucci, with teachings of the secondary reference, The SCSI Bus
`
`and IDE Interface Protocols, Applications and Programming, by Schmidt, First
`
`Edition, Addison-Wesley, 1995 (“Schmidt”), are mere conclusory statements that
`
`do not account for the manner in which the references teach away from the proposed
`
`combination. The proposed combination of Pucci’s specialized device with
`
`signaling for a standard hard disk drive as discussed in Schmidt would change the
`
`
`
`10
`
`
`
`principle of operation of Pucci, produce a seemingly inoperative device, and/or
`
`create a device that no longer achieved the intended purpose of Pucci. Because
`
`Petitioner fails to provide a persuasive fact-based analysis with some rational
`
`underpinning to support its combination theories of obviousness, Petitioner cannot
`
`fulfill its burden of showing by a preponderance of the evidence that claims 1, 3, 5,
`
`11 and 14 of the ‘399 Patent are obvious.
`
`Finally, the IPR process violates the Constitution by extinguishing private
`
`property rights through a non-Article III forum without a jury. To the extent any
`
`claims of the ‘399 Patent are found invalid in this IPR, Patent Owner hereby
`
`challenges the constitutionality of the process of invalidation and reserves all rights
`
`related thereto.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS
`OF REJECTION
`
`
`A.
`
`PUCCI, SCHMIDT, KEPLEY, THE “SAMPLING CIRCUIT
`REFERENCES” AND LI DO NOT RENDER CLAIMS 1, 3, 5, 11
`AND 14 OBVIOUS
`
`1.
`
`OVERVIEW OF PUCCI
`
`
`
`
`The ION Data Engine is described in the Pucci reference. The ION Data
`
`Engine is a multiprocessor tasking system for providing data manipulation services
`
`for collections of workstations. Exhibit 1041 (Pucci) at 217. The ION Data Engine
`
`allows applications residing in the workstation to implement specific functions by
`
`enabling the reading or writing of specific block addresses within the ION drive. Id.
`
`
`
`11
`
`
`
`at 221.
`
`The ION system couples an analog to digital converter (ADC) to a SCSI target
`
`interface through a memory buffer. The SCSI target responds to disk drive
`
`commands for reading. However, access by the host to ADC data is done by means
`
`of the host reading a single block address in the simulated disk drive. Thus, the ADC
`
`data is not provided by files in a file system. The ION reference also has the ability
`
`to emulate a file system, but it teaches that this is only used for disk drive
`
`performance analysis, not for ADC access. Id. at 236. As such, the reference teaches
`
`away from accessing ADC data in the form of files because files exist but are not
`
`used for ADC data. ADC data is accessed by an application that does not use the
`
`host computer’s file system, and instead reads a certain disk block to obtain ADC
`
`data. Id. at 221.
`
`2.
`
`OVERVIEW OF SCHMIDT
`
`
`
`As the Board stated, “Schmidt describes the SCSI bus and IDE (Integrated
`
`Drive Electronics) interface, which both are ANSI (American Nation Standards
`
`Institute) standards.” Paper 13 (Institution Decision) at 14; Exhibit 1007 (Schmidt)
`
`at Preface. “According to Schmidt, these interfaces are two of the most important
`
`interfaces for computer peripherals in use at that time, and almost all computers at
`
`that time, from PCs to workstations to mainframes, were equipped with a SCSI
`
`
`
`12
`
`
`
`interface.” Id. “The SCSI bus is designed for hard drives, as well as tape drives,
`
`CD-ROM, scanners, and printers.” Id.
`
`3.
`
`OVERVIEW OF KEPLEY
`
`
`The Kepley invention “relates to business communication systems and, in
`
`particular, to a message service system network that interconnects a plurality of
`
`message service systems and provides a voice mail message transfer capability
`
`between voice mail message service systems.” Exhibit 1042 (Kepley) at Abstract.
`
`“The voice mail message transfer is performed as a computer-to-computer data file
`
`transfer operation over high speed data lines.” Id. The data file consists of the
`
`digitally encoded and compressed voice mail message to which is appended the
`
`message sender’s name and telephone number as well as the message recipient’s
`
`telephone number.” Id.
`
`4.
`
`PUCCI, SCHMIDT, KEPLEY, THE “SAMPLING
`CIRCUIT” REFERENCES AND LI DO NOT DISCLOSE
`THE
`“WHEREIN
`THE
`FIRST
`COMMAND
`INTERPRETER IS CONFIGURED IN SUCH A WAY
`THAT THE COMMAND
`INTERPRETER, WHEN
`RECEIVING AN INQUIRY FROM THE HOST DEVICE
`AS TO A TYPE OF A DEVICE ATTACHED TO THE
`MULTI-PURPOSE
`INTERFACE OF THE HOST
`DEVICE, SENDS A SIGNAL, REGARDLESS OF THE
`TYPE OF THE DATA TRANSMIT/RECEIVE DEVICE
`ATTACHED TO THE SECOND CONNECTING DEVICE
`OF THE INTERFACE DEVICE, TO THE HOST DEVICE
`WHICH SIGNALS TO THE HOST DEVICE THAT IT IS
`AN INPUT/OUTPUT DEVICE CUSTOMARY IN A HOST
`DEVICE” LIMITATION OF INDEPENDENT CLAIM 1
`OR THE CORRESPONDING LIMITATIONS OF
`
`
`
`13
`
`
`
`INDEPENDENT CLAIMS 11 AND 14 OF THE ‘399
`PATENT
`
`
`Pucci and Schmidt do not disclose the “wherein the first command interpreter
`
`is configured in such a way that the command interpreter, when receiving an inquiry
`
`from the host device as to a type of a device attached to the multi-purpose interface
`
`of the host device, sends a signal, regardless of the type of the data transmit/receive
`
`device attached to the second connecting device of the interface device, to the host
`
`device which signals to the host device that it is an input/output device customary
`
`in a host device” limitation of independent claim 1 of the ‘399 Patent. Exhibit 2002
`
`(Gafford Declaration) at ¶¶ 45-46. In addition, Pucci and Schmidt do not disclose
`
`the corresponding limitations of independent claims 11 and 14 of the ‘399 Patent
`
`that require “wherein the first command interpreter is configured in such a way that
`
`the interface device, when receiving an inquiry from the host device as to the type
`
`of a device attached at the multi-purpose interface of the host device, sends a signal,
`
`regardless of the type of the data transmit/receive device attached to the second
`
`connecting device of the interface device, to the host device which signals to the
`
`host device that it is an input/output device customary in a host device” and
`
`“regardless of the type of the data transmit/receive device attached to the second
`
`connecting device of the interface device, responding to the inquiry from the host
`
`device by the interface device in such a way that it is an input/output device
`
`
`
`14
`
`
`
`customary in a host device,” respectively.1 Exhibit 2002 (Gafford Declaration) at
`
`¶¶ 45-46, 63-64, 65-66.
`
`Pucci and/or the combination of Pucci and Schmidt fail to disclose these
`
`limitations because Pucci does not disclose that the ION Data Engine/Node
`
`responds to an inquiry from the ION Workstation by sending a signal that it is an
`
`input/output device customary in a host device and any such automatic response
`
`would cause the ION Workstation, as described in Pucci, to attempt to access and/or
`
`reconfigure the ION Node in an unpredictable and potentially destructive manner.
`
`Exhibit 2002 (Gafford Declaration) at ¶ 46.
`
`The ION Data Engine/Node is a multiprocessor tasking system for providing
`
`data manipulation services for collections of workstations. Exhibit 1041 (Pucci) at
`
`217. The ION Data Engine/Node allows applications residing in the workstation to
`
`implement specific functions by enabling the reading or writing of specific block
`
`addresses within the ION drive. Id. at 221. For example,
`
`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 an action defined on a set of 5 disk block
`addresses, each corresponding to 1 of the 5 analog channels. The
`
`1 Neither the Petitioner in the Petition nor the Board in the Institution Decision
`applied Kepley, Li or the “sampling circuit” references to these claim limitations
`(other than implying that Kepley discloses the data transmit/receive device
`mentioned in these claim limitations). Consequently, no analysis of these
`“sampling circuit” references, Kepley or Li is necessary herein.
`
`
`
`15
`
`
`
`controlling program within the workstation merely reads from one of these
`designated disk block addresses to obtain the converted data (lseek()
`followed by read() in the Unix domain). By defining such interactions in
`terms of standard disk read and write accesses, the application remains
`portable across workstation changes operating system releases, and to a large
`degree, complete operating system changes (e.g., Unix to VMS), while
`preserving any existing special purpose hardware investments.
`
`Id.; see also id. at 232 (“This task defines a SCSI action function which contains 4
`
`block addresses for each of 5 A-to-D channels. . . .The part of the application that
`
`runs on the workstation requests converted data in response to a start/stop signal
`
`from other system hardware . . . .”).
`
`Pucci does not disclose the ION Node responding to an inquiry from the ION
`
`Workstation or sending a signal that it is an input/output device customary in a host
`
`device. Exhibit 2002 (Gafford Declaration) at ¶¶ 47-48. Indeed, Petitioner does
`
`not argue that Pucci discloses that the ION Node responds to an inquiry command
`
`from the ION Workstation or sends a signal that the ION Node is an input/output
`
`device customary in a host device (e.g., disk drive). Petitioner relies only on what
`
`a POSITA might ascertain from the disclosure in Pucci that the ION Node can
`
`connect to the ION Workstation with a SCSI connection and the disclosure related
`
`to the SCSI standard discussed in Schmidt. Paper 2 (Petition) at 33-37. Nothing in
`
`Pucci discusses a response of the ION Node to an inquiry from the ION Workstation
`
`that identifies the ION Node as an input/output device customary in a host device.
`
`Exhibit 2002 (Gafford Declaration) at ¶ 48.
`
`
`
`16
`
`
`
`Although it is mandatory that a SCSI device be capable of responding to an
`
`INQUIRY command according to Schmidt, it is not mandatory for a SCSI target
`
`such as the ION Node to respond with inquiry data or with particular inquiry data.
`
`For example, according to Schmidt, instead of providing the inquiry data requested,
`
`a target device may be configured to respond with a simple CHECK CONDITION
`
`message. Exhibit 1007 (Schmidt) at 138. Exhibit 2002 (Gafford Declaration) at ¶
`
`49.
`
`Even the combination of Pucci with Schmidt does not render obvious the
`
`claimed identification as a disk drive, because there is no teaching in Schmidt of a
`
`device identifying itself as something other than what it actually is. In other words,
`
`Schmidt does not disclose sending a signal, regardless of the type of the data
`
`transmit/receive device attached to the second connecting device of the interface
`
`device, to the host device which signals to the host device that it is an input/output
`
`device customary in a host device. Exhibit 2002 (Gafford Declaration) at ¶ 50.
`
`Schmidt only discloses sending a signal that properly identifies the attached device
`
`and that does not involve sending a signal to the host device which signals that the
`
`attached device is customary regardless of the type of the device attached. Exhibit
`
`2002 (Gafford Declaration) at ¶ 50.
`
`Furthermore, it would have been illogical for a POSITA to configure an ION
`
`Node to respond with data indicating an input/output device customary in a host
`
`
`
`17
`
`
`
`device, such as an 00h (disk drive) class, without first having user intervention to
`
`ensure the workstation had the proper software installed to work with the ION
`
`Nod
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