`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`APPLE INC.
`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO. KG
`Patent Owner
`
`___________________
`
`Case IPR2016-01864
`Patent 6,470,399
`___________________
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`
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`PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER’S RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2016-01864
`Patent No. 6,470,399
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`TABLE OF CONTENTS
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`I.
`II.
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`Claim Construction. ........................................................................................... 2
`Patent Owner’s arguments have no merit. ......................................................... 2
`A.
`Patent Owner’s arguments regarding an allegedly missing
`limitation are based on technical inaccuracies having no support
`in the record. ............................................................................................ 3
`1. The combination discloses the inquiry response recited in claims
`1, 11, and 14. ................................................................................. 3
`2. The combination discloses the driver limitation. .......................... 8
`A POSITA would have combined Pucci and Schmidt. ........................14
`Patent Owner does not separately argue patentability of claims 3
`and 5. .....................................................................................................18
`Patent Owner’s belief of unconstitutionality is not a request for relief. ......... 18
`III.
`IV. Conclusion. ...................................................................................................... 19
`
`
`B.
`C.
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`Patent No. 6,470,399
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`TABLE OF AUTHORITIES
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`Cases:
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`Vivid Techs. v. Amer. Science,
`200 F.3d 795 (Fed. Cir. 2000) .................................................................................... 2
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`Ex. No.
`1001
`1002
`1003
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`1004
`1005
`1006
`1007
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`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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`Case IPR2016-01864
`Patent No. 6,470,399
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`EXHIBIT LIST
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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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`Ex. No.
`1025
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`1026-1030
`1031
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`1032-1040
`1041
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`1042
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`1043-1051
`1052
`1053
`1054
`1055
`1056
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`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.
`Declaration of Dr. Erez Zadok in Support of Reply (Zadok II)
`Transcript of Deposition of Mr. Gafford for IPR2016-01839
`Transcript of Deposition of Mr. Gafford for IPR2016-01842, -01860,
`-01863, and -01864
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`Choosing not to cross-examine Petitioner’s expert, Patent Owner filed a
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`Response that attempts to distinguish the prior art based on limitations that do not
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`appear in the claims. Patent Owner’s arguments repeatedly rely on a nonexistent
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`prohibition on the use of application software or user intervention in the ’399
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`claims. Patent Owner does not even attempt to justify the existence of such a
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`prohibition, and indeed no such prohibition exists.
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`Patent Owner’s arguments that address actual claim language fail because
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`they mischaracterize the prior art and Petitioner’s arguments. Throughout its
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`Response, Patent Owner ignores portions of the prior art cited in the Petition that
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`directly contradict its positions. For example, Patent Owner argues that Pucci’s ION
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`Node is incapable of operating as a hard drive. But Patent Owner never addresses
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`Pucci’s crucial disclosure that the “ION mimics a local hard disk.” The Petition
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`quoted this and numerous other portions of Pucci showing how the ION Node
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`system acts as a hard disk. Patent Owner attempts to distract from the impact of
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`these disclosures by mischaracterizing the Petition as simply relying on Pucci’s
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`disclosure of SCSI. The Board should reject Patent Owner’s sleight of hand.
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`The Petition presented a thorough, evidence-based argument showing that
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`claims 1, 3, 5, 11, and 14 of the ’399 patent are obvious. Patent Owner’s muddled
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`response, cobbled together from theories presented in its responses in other co-
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`pending proceedings, lacks evidentiary support and is contradicted by its own
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`patent and the prior art. The Board should therefore find that Petitioner has
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`established by a preponderance of the evidence that all of the challenged claims are
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`unpatentable.
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`I.
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`Claim Construction.
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`Claim construction is not a dispositive issue in this proceeding. Patent Owner
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`did not propose any explicit constructions, but merely noted the Board’s
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`constructions from the Institution Decision and the existence of a claim construction
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`order in a co-pending District Court litigation. (POR, pp. 8–9.) Patent Owner did
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`not affirmatively adopt any of these constructions, nor assert that the constructions
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`had any impact on the outcome of this proceeding. As none of the District Court’s
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`constructions are “necessary to resolve the controversy” in this proceeding, the
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`terms construed by the District Court need no explicit construction by the Board.
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`Vivid Techs. v. Amer. Science, 200 F.3d 795, 803 (Fed. Cir. 2000).
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`II.
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`Patent Owner’s arguments have no merit.
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`Patent Owner’s missing element and motivation to combine arguments stem
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`from the same technical misrepresentations, which are founded on no more than the
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`unsupported, conclusory statements of its expert Mr. Gafford. Patent Owner
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`misinterprets the claims and ignores the detailed teachings of Pucci, Kepley, and
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`Schmidt that disprove its arguments.
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`A.
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`Patent Owner’s arguments regarding an allegedly missing
`limitation are based on technical inaccuracies having no support in
`the record.
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`Patent Owner argues that the prior art combination fails to disclose two claim
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`limitations relating to the interface device’s response to an inquiry and the
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`subsequent communication mechanism between the host device and the interface
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`device. Patent Owner’s arguments have no merit because they attack the references
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`in isolation and are contrary to the language of the ’399 claims, the ’399
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`specification, and the record evidence.
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`1.
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`The combination discloses the inquiry response recited in
`claims 1, 11, and 14.
`Claim 1 recites “the command interpreter, when receiving an inquiry from the
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`host device as to a type of a device attached to the multi-purpose interface of the
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`host device, sends a signal, regardless of the type of the data transmit/receive device
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`attached to the second connecting device of the interface device, to the host device
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`which signals to the host device that it is an input/output device customary in a host
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`device.” (Ex. 1001, ’399 patent, 12:64–13:5.) Claims 11 and 14 recite similar
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`limitations. (See ’399 patent, 14:4–12 and 14:47–54.)
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`The Petition showed that Pucci’s ION Node appears to the workstation as a
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`SCSI disk drive. (See Petition, pp. 33–39.) And the ION Node appears as a hard
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`drive regardless of the type of sensor is attached to its A/D converters. (See Petition,
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`pp. 35–36.) The Petition also showed that Schmidt teaches that an obvious way for a
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`device to appear as a disk drive is by responding to a SCSI INQUIRY command
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`identifying itself as one. (See Petition, pp. 34–35.)
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`In its response, Patent Owner does not argue that such a response to an
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`INQUIRY command fails to satisfy the inquiry response limitation of the ’399
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`patent. Instead, Patent Owner argues that: (1) Pucci alone does not explicitly
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`disclose how it responds to a SCSI INQUIRY (POR, p. 16); (2) Schmidt does not
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`disclose identifying a device “as something other than what is actually is” (POR,
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`p. 17); and (3) it would have been “illogical” for Pucci’s ION Node to identify itself
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`as a disk drive (POR, pp. 17–18). None of these arguments have any legal merit, as
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`the first two arguments merely attack the references in isolation, and the latter
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`argument is not a missing element argument, but rather an argument against
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`combination. And, as shown below, the arguments have no substantive merit even if
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`they were legally proper.
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`First, Patent Owner attacks Pucci in isolation, arguing that “Pucci does not
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`disclose the ION Node responding to an inquiry from the ION Workstation or
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`sending a signal that it is an input/output device customary in a host device.” (POR,
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`p. 16.) Patent Owner acknowledges that the Petition never made such an argument,
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`but states that “Petitioner relies only on what a POSITA might ascertain from the
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`disclosure in Pucci that the ION Node can connect to the ION Workstation with a
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`SCSI connection and the disclosure related to the SCSI standard discussed in
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`Schmidt.” (POR, p. 16.) Yet, Patent Owner makes no argument that such reliance is
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`improper or incorrect in any fashion. (See POR, p. 16.)
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`Nevertheless, Patent Owner completely ignores Pucci’s disclosure that the
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`ION Node “appears to the workstation as a large, high speed disk device.” (Ex.
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`1041, Pucci, Abstract; see Petition, p. 33.) The Petition also pointed out that each of
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`Pucci’s workstations “views its ION connection as though it were a large
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`conventional disk drive.” (Pucci, p. 220; Petition, p. 33.) Thus, the Petition did not
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`merely rely on Pucci’s disclosure of SCSI, but relied on Pucci’s explicit disclosure
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`that its system appears as a conventional disk drive. Patent Owner never addresses
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`this aspect of Pucci.
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`Patent Owner offers no explanation as to how Pucci’s workstations would
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`recognize the ION Node as a disk drive without it identifying itself as such in
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`response to the mandatory SCSI INQUIRY command. Instead, Patent Owner raises
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`the irrelevant possibility that a device could “be configured to respond [to an
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`INQUIRY] with a simple CHECK CONDITION message.” (POR, p. 17.) This
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`argument is premised on a complete misunderstanding of SCSI. (Ex. 1054, Zadok II,
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`¶¶12–18.) A CHECK CONDITION status is a type of error and is only returned in
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`response to an INQUIRY “if the target is unable to return the requested inquiry
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`data.” (Zadok II, ¶14, citing Ex. 1007, Schmidt, pp. 88, 138.) In the limited
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`circumstances when a CHECK CONDITION status is returned, the host will follow
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`up with a REQUEST SENSE command. (Zadok II, ¶14, citing Schmidt, pp. 137,
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`142–43.) Even in the CHECK CONDITION scenario posited by the Patent Owner,
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`the ION Node would, in response to the REQUEST SENSE command, send detailed
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`error information to help remedy any issue. (Schmidt, pp. 138, 143–46.) A person of
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`ordinary skill in the art (POSITA), knowing the SCSI standard, would have
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`understood that the ION Node would not always (or even often) return a CHECK
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`CONDITION status during its normal operation. (Zadok II, ¶16.) Rather, because
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`Pucci uses its ION Node to mimic a disk drive, the ION Node would normally
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`return the 00h code that corresponds with the disk drive class. (Ex. 1003, Zadok
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`Decl., ¶¶105; Zadok II, ¶34.)
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`Second, Patent Owner turns to an isolated attack on Schmidt, arguing that
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`“there is no teaching in Schmidt of a device identifying itself as something other
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`than what it actually is.” (POR, p. 17.) Patent Owner’s argument misses the point.
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`Pucci’s workstations interface with the ION Node via SCSI and recognize it as a
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`disk drive. (Zadok II, ¶9.) The ION Node “mimics the behavior of a conventional
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`device, providing the workstation with a peripheral that it knows how to deal with.”
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`(Pucci, p. 22.) Schmidt teaches how the SCSI protocol enables a host to recognize a
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`peripheral as a disk drive. (Zadok II, ¶9.) In combination, the ION Node responds to
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`a SCSI INQUIRY command by identifying itself as a disk drive. (Zadok II, ¶10.)
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`Patent Owner does not dispute that such a response by ION, which is not actually a
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`hard drive, would constitute the claimed response.
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`Third, Patent Owner argues against the combination, stating that “it would
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`have been illogical for a POSITA to configure an ION Node to respond with data
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`indicating an input/output device customary in a host device… without first having
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`user intervention to ensure the workstation had the proper software installed to work
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`with the ION node.” (POR, pp. 17–18.) Patent Owner further states that “[i]f the
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`ION Node were to respond to an inquiry from a workstation that it was a disk drive
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`without proper ION software installed and operating on the workstation, the
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`workstation would most reasonably attempt to access the ION Node and/or
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`reconfigure the ION Node in an unpredictable and potentially destructive manner.”
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`(POR, p. 18.)
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` Patent Owner’s argument to this effect is not a missing element argument,
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`but rather an argument against the combination of Pucci and Schmidt.1 Patent
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`Owner does not argue that such a response would not constitute disclosure of the
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`inquiry response recited in claim 1. And, unlike some of Patent Owner’s other
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`patents in related IPRs, the ’399 patent places no restrictions on the use of user-
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`1 Petitioner addresses Patent Owner’s arguments against combination in
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`Section II.B.
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`loaded software. Thus, even if a user did have to intervene (which it does not), the
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`combination still discloses each of the claim limitations. Patent Owner’s arguments
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`about the allegedly unpredictable consequences of such an inquiry response are
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`irrelevant to the question of whether Pucci and Schmidt, when combined in the
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`manner proposed in the Petition, disclose the claimed inquiry response.
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`The combination discloses the driver limitation.
`2.
`Claim 1 further recites “whereupon the host device communicates with the
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`interface device by means of the driver for the input/output device customary in a
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`host device.” (’399 patent, 13:5–8.) Claims 11 and 14 contain similar limitations.
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`(See ’399 patent, 14:12–15; 14:55–57.) Patent Owner argues that the prior art does
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`not disclose this limitation “because the ION Node communicates with the host
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`device by means of specialized software that is not a ‘driver for an input/output
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`device customary in a host device.’” (POR, p. 19.)
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`Pucci’s use of the described application software is in no way contrary to the
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`’399 claims. First, this application software is distinct from driver software in that
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`the application software uses the driver software to communicate with a host device.
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`(Zadok II, ¶22.) This is a well-known consequence design of operating systems.
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`(Zadok II, ¶¶22–23.) For example, as shown in the figures below, the MS-DOS and
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`UNIX operating systems separate applications/user software from driver software.
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`(Ex. 1013, Silberschatz, pp. 77–78.) Silberschatz also discusses other designs, such
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`as the Venus layer structure, where user programs sit at layer 6, and device drivers
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`sit at layer 5, as illustrated below. In such a system, the user programs must use the
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`device drivers to communicate with the devices. (See Silberschatz, p. 80 (“a layer
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`can use only those layers that are at a lower level”); Zadok II, ¶22.)
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`(Silberschatz, p. 81, Figure 3.10.)
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`Pucci’s use of an application therefore does not mitigate its use of a driver to
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`communicate with the ION Node. (Zadok II, ¶23.) This is further supported by
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`Pucci itself. For example, Pucci discloses that its workstation communicates with
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`the ION drive “in terms of standard disk read and write accesses.” (Pucci, p. 221;
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`see Petition, p. 38.) The application therefore uses the standard driver, enabling “the
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`application [to] remain[] portable across workstation changes, operating system
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`releases, and to a large degree, complete operating system changes.” (Pucci, p. 221;
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`see Petition, p. 38.) If Pucci used a custom driver, the application would not be
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`portable because the system would need to update the custom driver for every new
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`operating system release and every change in operating system, directly
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`contradicting Pucci. (Zadok II, ¶23.)
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`Patent Owner attempts to read a requirement into the ’399 claims that would
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`prohibit any user-loaded software on the workstation. (See POR, pp. 20–21
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`(“Pucci’s disclosure of a controlling program/application that must be loaded… is
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`contrary to the ’399 Patent’s explicit teachings of an interface device that requires
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`no specialized software to be loaded on the host computer by a user.”).) The ’399
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`claims place no such restriction on the system. To the contrary, the ’399 claims
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`merely require that the host device communicate with the interface device using the
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`driver for the customary device. (Zadok II, ¶24.) Because the ION Node identifies
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`itself as a disk drive, the host device would use the SCSI disk drive device driver to
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`communicate with it. (See Petition, p. 38 (citing Zadok Decl., ¶¶ 112–113).)
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`Patent Owner further argues that “installation of the controlling
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`program/application on the ION Workstation is required for the ION Workstation to
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`communicate with the ION Data Engine/Node so that it knows which block
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`addresses to access.” (POR, pp. 21–22.) Again, Patent Owner ignores the widely
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`known fact that application software communicates with peripherals via device
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`drivers. (Zadok II, ¶25.)
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`In fact, the combined system operates in the same way as the preferred
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`embodiment of the ’399 patent, by utilizing a SCSI device driver to transfer data
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`from a device that appears as a hard disk. That the user interacts with an application
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`on the workstation to read from the hard disk is of no consequence, as the system of
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`the ’399 patent involves the same interaction. (See, e.g., ’399 patent, 6:55– 58;
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`Gafford Depn. II, 45:2–46:3 (answering “Yes” to the question of whether the ’399
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`patent’s preferred embodiment could “encompass an application that the user’s
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`running that causes a file to be read”).) Patent Owner’s expert, Mr. Gafford,
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`confirmed during deposition that user-loaded software was unnecessary for data
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`transfer in systems using SCSI such as the system described in the ’399 patent
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`because of the use of SCSI drivers for file transfer. According to Mr. Gafford, the
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`system of the ’399 patent performs the booting routine through existing SCSI
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`drivers in the operating system. In the context of DOS, this routine also did not need
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`user-loaded software because the routine ran on the existing BIOS. (See Gafford
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`Depn. II, 29:5–30:5; see also 21:15–22:10 (“Q. And so it would be a SCSI driver
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`either resident in the BIOS or the operating system? A. Yes.”); 24:3–22 (explaining
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`that, at the point of sale, computers were equipped with a SCSI adapter and that it
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`had become common to have motherboards that had built-in SCSI interfaces).) In
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`SCSI, the software would treat the peripheral device as a hard disk, and once the
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`software identified the peripheral device as a hard disk, the software would gather
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`the hard disk parameters, such as size and maximum block size. (See Gafford Depn.
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`I, 18:4–15.) Using the received parameters, the host could read data blocks of the
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`simulated hard disk. (See Gafford Depn. I, 23:1–24:17; 28:25–31:10.) And the host
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`would know the parameters of the hard disk not by using specialized user-loaded
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`software but instead through the BIOS, existing device drivers, and commands from
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`the SCSI standard.
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`Pucci uses SCSI to avoid user-loaded software or a user-loaded device driver
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`in the same manner as the ’399 patent. (Zadok II, ¶29.) As acknowledged by the
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`’399 patent, a SCSI driver “is normally included by the manufacturer” and therefore
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`not a specialized driver loaded by a user. (See ’399 patent, 11:15–19.) Pucci also
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`recognized that computer systems needed to constantly upgrade device drivers to
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`coexist with operating system releases. (See Pucci, p. 218.) To overcome this issue,
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`Pucci’s system, like the system described in the ’399 patent, did not require user-
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`loaded software or specialized user-loaded device drivers. (Zadok II, ¶29.) Pucci,
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`when implementing Schmidt’s SCSI recognition process, uses built-in SCSI devices
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`running existing SCSI drivers (e.g., the SCSI interface chip in the ION and a SCSI
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`adapter in the workstation). (See Zadok Decl., ¶¶82, 93, 113; Gafford Depn. II,
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`61:6–18 (explaining that Pucci uses a vendor-independent SCSI interface).) Indeed,
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`Pucci stresses that “[s]oftware running within the ION system mimics the behavior
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`of a conventional device, providing the workstation with a peripheral that it knows
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`how to deal with.” (Pucci, p. 220.) And “since the hardware dependent A-to-D code
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`remains within ION, no driver changes to the host’s operating system are
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`necessary upon workstation upgrade.” (Pucci, p. 231.)
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`As shown above, the existence of an application on Pucci’s workstation does
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`not mitigate the use of a device driver to communicate with the ION Node. (Zadok
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`II, ¶¶22, 23, 25.) Moreover, regardless of whether the ION Workstation “knows
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`which block addresses to access” (POR, p. 22), it communicates with the ION Node
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`via a SCSI hard disk device driver, thus satisfying the ’399 claims. Thus, although
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`Petitioner disagrees with Patent Owner’s characterization of Pucci, installation of
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`Pucci’s application software is irrelevant to the question of whether Pucci’s
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`workstation communicates with the ION Node via the driver for the customary I/O
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`device.
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`B. A POSITA would have combined Pucci and Schmidt.
`Patent Owner makes two related statements arguing against combining Pucci
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`and Schmidt, and neither have any merit. Patent Owner first argues that “it would
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`have been illogical for a POSITA to configure an ION Node to respond” to an
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`inquiry as a disk drive “without first having user intervention to ensure the
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`workstation had the proper software installed to work with the ION Node.” (POR,
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`pp. 17–18.) Patent Owner next argues that “it would have been illogical for a
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`POSITA to configure an ION device to transfer data to and from an ION
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`Workstation without the proper communication software installed to work with the
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`ION Node.” (POR, p. 27.) These two arguments, proffered in two sections of the
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`POR using slightly different terminology, are in fact the same argument. Indeed,
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`when arguing against the combination, Patent Owner prefaces its argument by
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`stating it was “previously discussed.” (POR, p. 27.)
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`As an initial matter, Patent Owner’s argument is moot because the
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`combination in this case does not require modifying Pucci such that its application
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`software is not installed on the workstation. That is, the claims are obvious whether
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`or not such an action would have been logical for a POSITA. As shown above, the
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`’399 claims do not restrict the loading of application software on the host. And the
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`’399 claims do not forbid user intervention. Contrary to the Patent Owner’s
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`argument, Petitioner never argued that a POSITA would configure an ION Node
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`without application software to render the ’399 claims obvious. Such a modification
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`is unnecessary, furthermore, because Petitioner showed in the previous section that
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`even with application software, the workstation would still communicate with the
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`ION Node using the SCSI disk drive device driver in the same manner as the ’399
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`preferred embodiment.
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`Patent Owner further argues that “it would render the Pucci invention
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`inoperable if the interface device of Pucci responded to any Inquiry in the context of
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`the SCSI standard by saying the device at that ID is a hard drive because the device
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`at that ID would be incapable of performing the functions of a hard drive.” (POR,
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`p. 28.) This unsupported, conclusory statement stands in direct contradiction to
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`Pucci itself, which plainly states:
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`“ION mimics a local disk drive.”
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`(Pucci, p. 221 (emphasis added).) Patent Owner never addresses this disclosure or
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`similar disclosures from Pucci. Patent Owner and its expert have no explanation
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`whatsoever as to how its theory of inoperability comports with the fact that Pucci
`
`itself discloses that the ION device can and does actually mimic a disk drive.
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`Nevertheless, Patent Owner’s speculation that somehow an INQUIRY
`
`response would cause the workstation to begin accessing and reconfiguring the ION
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`in an unpredictable manner has no technical foundation. (Zadok II, ¶32.) Patent
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`Owner again provides no explanation or evidence to support its conjecture. And
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`even a cursory review of Schmidt demonstrates the obvious defects in Patent
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`Owner’s argument. A host uses the INQUIRY command to identify useful
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`information about a target, such as a peripheral’s device class. (Zadok II, ¶32.) The
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`workstation does not simply start reading, writing, and configuring the peripheral
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`device immediately identifying the device class. (Zadok II, ¶32.) Thus, with SCSI,
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`the initiator (e.g., the workstation) knows how to “deal with” the target.
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`But even assuming arguendo that the workstation would start reading or
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`writing the ION Node, Pucci’s ION system would still operate properly. The SCSI
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`protocol provides functionality for an initiator and target to handle unexpected
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`and/or error conditions. (Zadok II, ¶33.) For example, SCSI provides a mechanism
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`using the CHECK CONDITION status and a subsequent message including the
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`DATA PROTECT sense key to inform the workstation that it cannot read or write to
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`a portion of the disk because that portion of the disk is currently protected. (See
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`Schmidt, pp. 142-44; see also Pucci, p. 221 (explaining that an advantage of Pucci is
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`“its robustness in the face of application failure” and that the “worst case scenario”
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`merely places the ION into an off-line condition).)
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`As shown above, the ION can respond to the INQUIRY command by
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`identifying the device class as a disk drive (i.e., with code 00h), a fact further
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`supported by the opinions of both experts. (Zadok II, ¶¶10, 34; see also Ex. 1056,
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`Gafford Depn. II, 83:5–11 (“But you would agree that the ION node could be
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`implemented to identify itself as a disk drive in response to an inquiry command? ...
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`A. Nothing in the ION spec suggests or prevents doing so.”).) Because Pucci is used
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`to mimic a local disk drive, responding to an INQUIRY command by identifying the
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`ION as a disk drive (despite the ION not being a disk drive) is exactly what Pucci is
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`designed to do. (Zadok II, ¶34.) And a person of ordinary skill in the art would not
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`have encountered unpredictable results because, as explained in the ’399 patent,
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`emulation within the context of SCSI was possible. (See Ex. 1055, Gafford Depn. I,
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`21:6–22:25, 72:7–22, 73:9–19 (explaining that the preferred embodiment responds
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`to the INQUIRY command by identifying a peripheral as a hard drive, albeit the
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`peripheral not being an actual hard drive).) Responding to the INQUIRY command
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`by emulating a disk drive would not reconfigure the ION in a destructive manner but
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`instead achieve Pucci’s goal of having “[s]oftware running within the ION system
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`[that] mimics the behavior of a conventional device, providing the workstation with
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`a peripheral that it knows how to deal with.” (Zadok II, ¶34; see Pucci, p. 220.)
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`Patent Owner’s argument that the INQUIRY command would somehow
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`reconfigure the ION in an unpredictable and destructive manner is especially
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`problematic because the ’399 patent itself uses SCSI and the INQUIRY command
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`during emulation. (See ’399 patent, Abstract, 4:65–5:9, 6:2–15, claim 4; Gafford
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`Depn. I, 15:1–22:7 (describing the use of SCSI and the INQUIRY command in the
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`’399 patent).) The ’399 patent does not describe any challenge that would need to be
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`overcome to emulate a hard disk in response to the INQUIRY command, and
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`nothing in the ’399 patent suggests that responding to the INQUIRY command
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`would itself reconfigure the interface device in an unpredictable and potentially
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`destructive manner.
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`In addition to being technically incorrect, the Board should disregard Patent
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`Owner’s arguments for another reason—Patent Owner provides no explanation or
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`supporting evidence. The only support for Patent Owner’s threadbare positions is
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`citations to statements in its expert’s declaration. But these statements merely parrot,
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`nearly verbatim, the speculations in the Patent Owner response providing no further
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`analysis or insight. (See POR, p. 27; Gafford Decl., ¶58.)
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`C.
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`Patent Owner does not separately argue patentability of claims 3
`and 5.
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`Papst does not separately argue the validity of challenged dependent claims 3
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`and 5, and instead simply relies on dependence of those claims on claim 1. Thus, if
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`the Board finds claim 1 obvious, Patent Owner has no rebuttal to Petitioner’s
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`showing that claims 3 and 5 are obvious.
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`III. Patent Owner’s belief of unconstitutionality is not a request for relief.
`Patent Owner “believes” that IPRs are unconstitutional, but does not ask the
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`Board to make any such finding based on this belief. (POR, p. 30.) Accordingly, the
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`Board should ignore this plea.
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`Patent No. 6,470,399
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`IV. Conclusion.
`For the above reasons, the Board should find claims 1, 3, 5, 11, and 14
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`obvious.
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`
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`Date: October 23, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Respectfully
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