Filed on behalf of Apple Inc.
`By:
`Lori A. Gordon
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`Sterne, Kessler, Goldstein & Fox PLLC
`
`1100 New York Avenue, NW
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`Washington, D.C.
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`Tel: (202) 371-2600
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`Fax: (202) 371-2540
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,470,399
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`TABLE OF CONTENTS
`
`A.
`B.
`
`
`Mandatory notices (37 C.F.R. § 42.8(a)(1)). ..................................................... 2
`I.
`Grounds for standing (37 C.F.R. § 42.104(a)). ................................................. 3
`II.
`Identification of challenge (37 C.F.R. § 42.104(b)). ......................................... 3
`III.
`Citation of prior art. ....................................................................................... 3
`A.
`Statutory grounds for the challenge. .............................................................. 4
`B.
`IV. The ’399 patent. ................................................................................................. 5
`A.
`Overview of the ’399 patent. ......................................................................... 5
`B.
`Level of ordinary skill in the art. ................................................................... 8
`C.
`Claim construction. ........................................................................................ 8
`V. Ground 1: The combination of Pucci, Kepley, and Schmidt renders claims 1,
`3, 5, 11, and 14 obvious. .................................................................................. 12
`Overview of Pucci, Kepley, and Schmidt. ................................................... 12
`The combination of Pucci, Kepley, and Schmidt renders claims 1, 11, and
`14 obvious. ................................................................................................... 15
`1. The combination of Pucci, Kepley, and Schmidt discloses the preamble
`of independent claims 1, 11, and 14. ...................................................15
`a) The combination of Pucci, Kepley, and Schmidt discloses an
`interface device and a method “for communication between a host
`device… and a data transmit/receive device.” ............................16
`b) The combination of Pucci, Kepley, and Schmidt discloses the host
`device limitations of the preamble. .............................................19
`c) The combination of Pucci, Kepley, and Schmidt discloses the data
`transmit/receive device limitations of the preamble. ..................22
`2. The combination of Pucci, Kepley, and Schmidt discloses the
`architectural elements of the interface device. ....................................24
`a) The combination of Pucci, Kepley, and Schmidt discloses that the
`interface device comprises “a processor” and “a memory.” .......25
`b) The combination of Pucci, Kepley, and Schmidt discloses the
`“first connecting device” limitations. ..........................................26
`c) The combination of Pucci, Kepley, and Schmidt suggests the
`“second connecting device” limitations. .....................................28
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
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`3. The combination of Pucci, Kepley, and Schmidt discloses the
`recognition limitations of the independent claims. .............................31
`a) The combination of Pucci, Kepley, and Schmidt discloses the
`inquiry and response elements of the recognition limitations. ....33
`b) The combination of Pucci, Kepley, and Schmidt teaches
`“whereupon the host device communicates with the interface
`device by means of the [driver].” ................................................37
`4. The combination of Pucci, Kepley, and Schmidt discloses the transfer
`limitations of the independent claims. ................................................39
`a) Data request command limitation. ...............................................40
`b) Second command interpreter limitation. .....................................43
`The combination of Pucci, Kepley, and Schmidt renders claim 3 obvious. 44
`C.
`VI. The combination of Pucci, Kepley, Schmidt, and Li renders claim 5 obvious.
` ......................................................................................................................... 46
`VII. The proposed grounds are not redundant. ....................................................... 47
`VIII. Conclusion. ...................................................................................................... 48
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`
`TABLE OF AUTHORITIES
`
`
`Cases:
`
`In re Cuozzo Speed Techs., LLC,
`778 F.3d 1271 (Fed. Cir. 2015).................................................................................. 8
`
`In re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015).................................................................................. 9
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007).................................................................................. 8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)............................................................................ 9, 11
`
`York Prod. Inc. v. Central Tractor Farm & Family Center,
`99 F.3d 1568 (Fed. Cir. 1996) .................................................................................. 44
`
`Statutes:
`
`35 U.S.C. § 102(a) ..................................................................................................... 4
`35 U.S.C. § 102(b) ..................................................................................................... 4
`35 U.S.C. § 102(e) ..................................................................................................... 4
`35 U.S.C. § 112 .................................................................................................... 9, 44
`
`Regulations:
`
`37 C.F.R. § 42.8 ..................................................................................................... 2, 3
`37 C.F.R. § 42.100 ..................................................................................................... 8
`37 C.F.R. § 42.104 ................................................................................................. 3, 4
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`EXHIBIT LIST
`
`Ex. No.
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
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`1013
`1014
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`1015
`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`
`
`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.
`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
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Description
`Discrete-Time Signal Processing, by Oppenheim et al., First Edition,
`Prentice-Hall, 1989.
`Intentionally left blank
`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
`U.S. Patent No. 4,790,003 to Kepley et al., titled “Message Service
`System Network”
`Intentionally left blank
`Usenix Declaration
`U.S. Patent No. 5,617,423 to Li et al.
`
`
`
`Ex. No.
`1025
`
`1026-1030
`1031
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`1032-1040
`1041
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`1042
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`1043-1051
`1052
`1053
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`

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`Apple Inc. petitions for inter partes review of claims 1, 3, 5, 11, and 14 of
`
`Petition for Inter Partes Review of
`U.S. Pat. No. 6,470,399
`
`
`United States Patent No. 6,470,399 to Tasler. The purported novelty of the ’399
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`patent is that, when attached to a host computer, the interface identifies itself as “an
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`input/output device customary in a host device,” such as a hard disk drive, thereby
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`allowing the host device to “communicate with the interface device by means of the
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`driver for the input/output device customary in a host device.” (Ex. 1001, ’399
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`patent, 13:4–8.) This technique is commonly referred to as emulation.
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`Devices that emulated a digital storage device (e.g., hard disk drives) and
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`used the existing storage device’s driver for communication with a host computer
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`were well known years before the earliest possible priority date of the ’399 patent.
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`For example, more than five years before the earliest possible priority date of the
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`’399 patent, Pucci (Ex. 1041) described a multiprocessor tasking system, named
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`ION, that connected to workstation using a SCSI disk interface and that “appear[ed]
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`to the workstation as a large, high speed disk device.” (Pucci, p. 217.) As such, the
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`workstation was provided “with a peripheral that it knows how to deal with.”
`
`(Pucci, p. 220.)
`
`Apple demonstrates below that a reasonable likelihood exists that all
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`challenged claims of the ’399 patent are unpatentable.
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`I. Mandatory notices (37 C.F.R. § 42.8(a)(1)).
`REAL PARTY IN INTEREST: The real party-in-interest of Petitioner is Apple
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Inc. (“Apple”).
`
`RELATED MATTERS: The ’399 patent is the subject of the following civil
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`actions.
`
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-01095
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`(E.D. Tex.); Papst Licensing GmbH & Co., KG v. LG Electronics, Inc. et al., Case
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`No. 6-15-cv-01099 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. ZTE
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`Corporation et al., Case No. 6-15-cv-01100 (E.D. Tex.); Papst Licensing GmbH &
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`Co., KG v. Samsung Electronics Co Ltd. et al., Case No. 6:15-cv-01102 (E.D. Tex.);
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`Papst Licensing GmbH & Co., KG v. Lenovo (United States) Inc. et al., Case No. 6-
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`15-cv-01111 (E.D. Tex.); Papst Licensing GmbH & Co., KG v. Huawei
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`Technologies Co., Ltd. et al., Case No. 6-15-cv-01115 (E.D. Tex.) and In Re Papst
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`Licensing GmbH & Co., KG Patent Litigation, MDL No. 1880 (Misc. Action No.
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`07-493) relating to Nos. 07-cv-1118, 07-cv-1222, 07-cv-2086, 07-cv-2088, 08-cv-
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`865, 08-cv-985, 08-cv-1406, and 09-cv-530.
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`U.S. Application No. 14/859,266, filed on September 19, 2015, claims the
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`benefit of the ’399 patent.
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`Petitioner is concurrently filing additional petitions against the ’399 patent.
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`No other matters related to the ’399 patent are known to the Petitioner.
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`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. § 42.8(b)(3) and
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`42.10(a), Petitioner appoints Lori A. Gordon (Reg. No. 50,633) as its lead counsel
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`and Steven W. Peters (Reg. No. 73,193) and Yasser Mourtada (Reg. No. 61,056)
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`as its back-up counsel, all at the address: STERNE, KESSLER, GOLDSTEIN & FOX, 1100
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`New York Avenue, N.W., Washington, D.C., 20005, phone number (202)371-2600
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`and facsimile (202)371-2540.
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`SERVICE INFORMATION: Petitioner consents to electronic service by email at
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`the email addresses: lgordon-PTAB@skgf.com, speters-PTAB@skgf.com, and
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`ymourtada-PTAB@skgf.com.
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`II. Grounds for standing (37 C.F.R. § 42.104(a)).
`The undersigned and Apple certify that the ʼ399 patent is available for inter
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`partes review. Apple certifies that it is not barred or estopped from requesting this
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`inter partes review on the grounds identified herein. The assignee of the ’399 patent,
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`Papst, filed a complaint against Apple alleging infringement of the ’399 patent on
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`November 30, 2015. (Ex. 1020.) The present petition is being filed within one year
`
`of service of Petitioner.
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`III. Identification of challenge (37 C.F.R. § 42.104(b)).
`A. Citation of prior art.
`In support of the grounds of unpatentability cited above, Apple cites the
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`following prior art references:
`
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`Configurable Data Manipulation in an Attached Multiprocessor, by Marc
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`F. Pucci (Ex. 1041) is prior art under at least 35 U.S.C. §§102(a) and 102(b) because
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`it published in 1991. (See Ex. 1052.)
`
`U.S. Patent No. 4,790,003 to Kepley et al., titled “Message Service System
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`Network” (Ex. 1042) is prior art under at least 35 U.S.C. §§ 102(a), 102(b), and
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`102(e) because it issued on December 6, 1988.
`
`The SCSI Bus and IDE Interface—Protocols, Applications and
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`Programming, by Friedhelm Schmidt (Ex. 1007) is prior art under at least 35
`
`U.S.C. §§102(a) and 102(b) because it was published in 1995. (See Ex. 1024.)
`
`U.S. Patent No. 5,617,423 to Li et al., titled “Voice over data modem with
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`selectable voice compression” (Ex. 1053) is prior art under at least 35 U.S.C.
`
`§ 102(e) because it was filed on July 7, 1994.
`
`B. Statutory grounds for the challenge.
`Apple requests review of claims 1, 3, 5, 11, and 14 on the following grounds:
`
`References
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`Basis
`
`Claims Challenged
`
`Pucci, Kepley, and Schmidt
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`§ 103
`
`1, 3, 11, 14
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`Pucci, Kepley, Schmidt, and Li
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`§ 103
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`5
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`IV. The ’399 patent.
`A. Overview of the ’399 patent.
`The ’399 patent describes an interface device that enables communication
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`between a host device and a data transmit/receive device from which data is
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`acquired. (Ex. 1001, ’399 patent, 1:10–14.) The patent acknowledges that such
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`interface devices were known prior to earliest possible priority date of the ’399
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`patent. However, the patent alleges that these existing interfaces traded high data
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`transfer rates for host-device independence. (Id., 3:24–27.) For example, in existing
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`interfaces devices, high data transfer rates could be achieved using host-specific
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`interface devices; but, these interfaces were not suitable for use with other types of
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`host systems. (’399 patent, 1:65 to 2:7.) In other alternative devices, host-device
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`independence was achieved through the use of standard interfaces; but these
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`interfaces required specific driver software that in turn, resulted in reduced data
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`transfer speed. (Id., 1:22–30.)
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`The ’399 patent discloses an interface device that purportedly overcomes
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`these limitations and “provides fast data communication between a host device with
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`input/output interfaces and a data transmit/receive device.” (’399 patent, Abstract.)
`
`As illustrated in Figure 1, reproduced below, the interface device 10 includes “[a]
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`first connecting device 12… attached to a host device (not shown) via a host line
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`11.” (’399 patent, 5:48–50.) The ’399 patent states that “[t]he first connecting device
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`is attached both to a digital signal processor 13 and to a memory means 14,” which
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
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`in turn are “attached to a second connecting device.” (’399 patent, 5:50–56.) In
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`some embodiments, the second connecting device is “attached by means of an
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`output line 16 to a data transmit/receive device… from which data is to be read, i.e.
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`acquired, and transferred to the host device.” (’399 patent, 5:56–60.)
`
`
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`The ’399 patent discloses techniques to make “the interface device appear[] to
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`the host device as a hard disk.” (’399 patent, 6:58–59.) Specifically, the ’399 patent
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`relies on a known host system identification process: when a host device is booted,
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`an inquiry instruction as to devices attached to the host device is issued to the
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`input/output interfaces of the host device. (Id., 5:17–23, 4:11–13.) When the
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
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`interface device receives the inquiry instruction, the interface device identifies itself,
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`regardless of the type of attached data transmit/receive device, as a customary
`
`input/output device to the host device. (See ’399 patent, 4:65 to 5:6.) This response
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`is handled by a “first command interpreter.” (’399 patent, 6:52–53.) The host can, in
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`addition, “can send an instruction, known by those skilled in the art as ‘Test Unit
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`Ready,’ to the interface device to require more precise details.” (’399 patent, 6:16–
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`19.) Both the INQUIRY and Test Unit Ready commands were well known as part of
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`the small computer system interface (SCSI) which was widely popular at the time of
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`invention. (Ex. 1003, Zadok Decl., ¶¶32, 49, 50 (citing Schmidt, p. 165 (describing
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`conventional read and write commands for hard disk drives); see also ’399 patent,
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`4:40–44.)
`
`During operation, the interface device “simulates a hard disk with a root
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`directory whose entries are ‘virtual’ files which can be created for the most varied
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`functions.” (’399 patent, 6:1–3.) When a user “wishes to read data from the data
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`transmit/receive device via the line 16, the host device sends a command, for
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`example ‘read file xy’, to the interface device.” (’399 patent, 6:55–58.) The second
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`command interpreter then “begins to transfer data from the data transmit/receive
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`device via the second connecting device to the first connecting device and via the
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`line 11 to the host device.” (’399 patent, 6:64–67.) This operation emulates a “‘real-
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`time input’ file [that] then appears as a file whose length corresponds to the
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`anticipated volume of data” contained in a configuration file. (’399 patent, 7:5–7;
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
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`see also 7:1–5.)
`
`B. Level of ordinary skill in the art.
`Based on the disclosure of the ’399 patent, 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
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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. (Zadok
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`Decl., ¶29.) A POSITA would also be familiar with operating systems (e.g., MS-
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`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, PCMCIA). (Zadok Decl., ¶29.)
`
`C. Claim construction.
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs.,
`
`LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015). Accordingly, 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). Except for the exemplary terms set forth
`
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`herein, the terms are to be given their plain and ordinary meaning as understood by a
`
`POSITA and consistent with the disclosure. 1
`
`Claim construction of certain terms of the ’399 patent was a subject of Appeal
`
`2014-1110 to the Court of Appeals for the Federal Circuit from the United States
`
`Court for the District of Columbia in No. 1:07-mc-00493-RMC. In re Papst
`
`Licensing Digital Camera Patent Litigation, 778 F.3d 1255 (Fed. Cir. 2015). The
`
`Federal Circuit construed the following terms under the Phillips standard:
`
`Claim term
`
`District Court Construction
`
`CAFC Ruling
`
`“interface device”
`
`may not be “a permanent part of
`either the data transmit/receive
`device or the host
`device/computer.” (Ex. 1016, p.
`8.)
`
`“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).”
`(Ex. 1016, p. 8.)
`
`“second connecting
`
`“a physical plug or socket for
`permitting a user readily to attach
`
`1 Apple reserves the right to present different constructions in another forum
`
`does not require “a
`physical plug, socket, or
`
`where a different claim construction standard applies. Apple’s proposed
`
`constructions do not constitute an admission that the claims are valid under 35
`
`U.S.C. § 112. Therefore, Apple reserves the right to challenge the patentability of
`
`any claim under 35 U.S.C. § 112 in other forums.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Claim term
`
`District Court Construction
`
`CAFC Ruling
`
`device”
`
`“data
`transmit/receive
`device”
`
`“virtual files”
`
`and detach the interface device
`with a plurality of dissimilar data
`transmit/receive devices.” (Ex.
`1016, p. 10.)
`
`other structure that
`permits a user to readily
`attach and detach
`something else.” (Ex.
`1016, p. 11.)
`
`“a device that is capable of either
`(a) transmitting data to or (b)
`transmitting data to and receiving
`data from the host device when
`connected to the host device by
`the interface device.” (Ex. 1016,
`p. 11.)
`
`“need not be capable of
`communicating ‘when
`connected to the host
`device by the interface
`device.’” (Ex. 1016, p.
`12.)
`
`“files that appear to be but are
`not physically stored; rather they
`are constructed or derived from
`existing data when their contents
`are requested by an application
`program so that they appear to
`exist as files from the point of
`view of the host device.” (Ex.
`1016, p. 13.)
`
`not limited to a file
`“whose content is stored
`off the interface device,
`though it includes such
`files.” (Ex. 1016, p. 14.)
`
`“input/output device
`customary in a host
`device”
`
`“data input/output device that
`was normally present within the
`chassis of most commercially
`available computers at the time
`of the invention.” (Ex. 1016, p.
`16.)
`
`not limited to a device
`“‘normally present
`within the chassis’ of a
`computer.” (Ex. 1016,
`p. 16 (emphasis in
`original).)
`
`Of these five terms, Petitioner proposes to construe the term “data
`
`transmit/receive device.” The term “virtual files” does not appear in any of the
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`

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`claims challenged in this Petition. For the purposes of this proceeding, explicit
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`construction of “second connecting device” or other terms in the challenged claims
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`is not necessary at this time.
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`“data transmit/receive device” [claims 1, 3, 11, 14]
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`Apple proposes to construe the term “data transmit/receive device” as “a
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`device capable of transmitting or receiving data.” This construction clarifies that the
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`term is not limited to devices that both transmit and receive data—only one is
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`necessary. This construction is consistent with the plain and ordinary meaning of the
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`term because the use of the “/” indicates alternatives. (See Ex. 1019, Webster’s, p.
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`2125 (defining “virgule” as “a short oblique stroke (/) between two words indicating
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`that whichever is appropriate may be chosen to complete the sense of the text in
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`which they occur”).) The construction is also consistent with the specification,
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`which discloses “a data transmit/receive device which is to receive data from the
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`host device or from which data is to be read, i.e. acquired, and transferred to the host
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`device.” (’399 patent, 5:56–60.) Moreover, the portion of the district court’s
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`interpretation under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) that the
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`device “is capable of either (a) transmitting data to or (b) transmitting data to and
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`receiving data from the host device” still stands after the Federal Circuit’s decision.
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`(Ex. 1016, p. 11 (“the parties’ dispute focuses on the ‘when connected’ portion of
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`the court’s construction”).)
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`V. Ground 1: The combination of Pucci, Kepley, and Schmidt renders claims
`1, 3, 5, 11, and 14 obvious.2
`A. Overview of Pucci, Kepley, and Schmidt.
`Pucci, like the ’399 patent, recognized “workstations that exploit the rapidly
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`advancing state-of-the-art in processor technology can often be a bane to developers
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`of applications that utilize dedicated special purpose hardware or that impose strict
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`access requirements on conventional hardware.” (Pucci, p. 218.) Pucci addressed the
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`problems of these systems through the ION Data Engine—“a multiprocessor tasking
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`system that provides data manipulation services for collections of workstations or
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`other conventional computers.” (Pucci, p. 217.)
`
`Pucci’s ION Engine “appears to [a] workstation as a large, high speed disk
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`device.” (Pucci, p. 217.) The “[s]oftware running within the ION system mimics the
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`behavior of a conventional device, providing the workstation with a peripheral that
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`it knows how to deal with.” (Pucci, p. 220.) In addition, the ION node includes a
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`plurality of analog-to-digital converters. (See Pucci, Figure 1.) In an exemplary
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`application described in Pucci, each of the analog-to-digital converters provides “an
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`analog to digital (A-to-D) conversion application that provides voice messaging
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`service for” a telephone switch. (Pucci, p. 221.) ION temporarily stores the output
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`
`2 A complete listing of challenged claims is provided as Appendix A. For ease
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`of discussion, labels have been added to individual claim limitations.
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`
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`

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`data from the A-to-D converters in memory before transfer to the workstation upon
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`request. (Pucci, pp. 231–232.) However, Pucci does not explicitly disclose that the
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`converted data is stored as a file on the ION node.
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`Kepley discloses a voice mail system that stores a “digitally encoded and
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`compressed voice mail message” as a file. (Kepley, Abstract, claim 1.) A POSITA
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`would have found it obvious to combine Pucci’s ION system with Kepley’s
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`voicemail system. (Zadok Decl., ¶66.) First, Pucci provides an explicit motivation
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`explaining that an application of the ION node is a “platform for analog to digital
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`(A-to-D) services for a voice messaging application of a prototype programmable
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`telephone switch system called GARDEN.” (Pucci, p. 231.) But, Pucci does not
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`provide details of the voice messaging application. A POSITA would have looked to
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`Kepley for those details because Kepley describes a voice mail messaging system
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`and application. (Zadok Decl., ¶66; Kepley, Abstract.)
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`The file storage of Kepley allows the voice mail message service system to
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`perform “voice mail message transfer... as a computer-to-computer data file transfer
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`operation over high speed data lines” to other message service systems. (Kepley,
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`Abstract.) Therefore, a POSITA would have found it obvious to store the digitized
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`A-to-D converted data as a file in Pucci’s voice messaging service application to
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`enable “computer-to-computer data file transfer” between the ION-enabled voice
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`messaging service system and other messaging service systems as taught by Kepley.
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`
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`

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`(Zadok Decl., ¶67.) Further, the modification would have involved a simple
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`substitution of one known element (Kepley’s analog voice message processing) for
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`another (Pucci’s analog voice message processing) to obtain predictable results.
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`KSR, 550 U.S. at 415–416. Digital storage of voice message data, in the form of a
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`file or otherwise, was well known in the art as taught by Pucci and Kepley. Pucci
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`also discloses that data can be shared within an ION node as “traditional file system
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`data.” (Pucci, p. 221.) For example, Pucci discloses that the local ION storage “may
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`consist of a file system data.” (Pucci, p. 222.) Thus, substitution of Kepley’s analog
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`voice message processing (which includes storage of the digitized voice message as
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`a file) for Pucci’s analog voice message processing (which includes digital
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`conversion but lacks file storage) could have been readily implemented by a
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`POSITA using Pucci’s file system. (Zadok Decl., ¶¶68–69.) The results of such
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`substitution would have been predictable because the digitized voice message data
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`would have been stored like any other file in Pucci’s file system. (Zadok Decl.,
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`¶69.)
`
`Pucci stresses throughout that the ION node identifies itself as a hard disk
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`device to attached workstations. (Pucci, pp. 217, 220, Figure 1; Zadok Decl., ¶70.)
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`However, Pucci does not explicitly disclose the details of the recognition process.
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`Schmidt, titled “The SCSI Bus and IDE Interface Protocols, Applications and
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`Programming,” provides a detailed discussion of the device recognition process. A
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`

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`POSITA would have combined Pucci and Kepley with Schmidt for a number of
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`reasons. First, Pucci discloses that the ION node connects to the workstation via a
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`SCSI bus. (Pucci, p. 217.) A POSITA would have looked to a reference, like
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`Schmidt, to provide details of the SCSI interface. (Zadok Decl., ¶73.) Additionally,
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`it was well known at the earliest possible priority date of the ’399 patent that SCSI
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`bus initialization between a host computer and a peripheral device involved the
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`peripheral device identifying its device class and type to the host computer. (Zadok
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`Decl., ¶73.) Schmidt provides the details of this well-known process. (Zadok Decl.,
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`¶¶71–73.)
`
`B. The combination of Pucci, Kepley, and Schmidt renders claims 1, 11,
`and 14 obvious.
`1. The combination of Pucci, Kepley, and Schmidt discloses the
`preamble of independent claims 1, 11, and 14.
`
`The preamble of independent claims 1, 11, and 14 sets forth three separate
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`components: (1) an interface device, (2) the architecture of the host device, and (3)
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`the architecture of the data transmit/receive device. The following table highlights
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`the similarity between the preambles of each claim.
`
`Claim 1
`
`Claim 11
`
`Claim 14
`
`[1P.1/11P.1] An interface device for
`communication between a host device… and a
`data transmit/receive device
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`[14P.1] A method for
`communication between a
`host device… and a data
`transmit/receive device… via
`
`
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`

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`Claim 1
`
`Claim 11
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,470,399
`
`
`Claim 14
`an interface device
`
`[1P.2] which comprises
`drivers for input/
`output devices
`customary in a host
`device and a multi-
`purpose interface
`
`[11P.2] which
`comprises a multi-
`purpose interface and
`a specific driver for
`this interface
`
`[14P.2] which comprises
`drivers for input/output
`devices customary in a host
`device and a multi-purpose
`interface
`
`[1P.3/11P.3/14P.3] the data transmit/receive device being arranged for providing
`analog data,
`
`As set forth below, the combination of Pucci, Kepley, and Schmidt teaches or
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`suggests each of the preamble limitations.
`
`a) The combination of Pucci, Kepley, and Schmidt discloses an
`interface device and a method “for communication between a host
`device… and a data transmit/receive device.”
`Pucci discloses an “ION Data Engine” that “connect[s] to a workstation via
`
`t