UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC., AND ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00415
`United States Patent No. 6,895,449
`_______________
`___________________________________
`DECLARATION OF THOMAS A. GAFFORD UNDER 37 C.F.R. §
`42.53 IN SUPPORT OF PATENT OWNER RESPONSE UNDER 37
`C.F.R. § 42.120
`___________________________________
`
`Papst Licensing GmbH & Co., KG.
`Petitioner – Huawei, LG and ZTE
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2017-00415
`EXH. 2005
`
`1
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC., AND ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00415
`United States Patent No. 6,895,449
`_______________
`___________________________________
`DECLARATION OF THOMAS A. GAFFORD UNDER 37 C.F.R. §
`42.53 IN SUPPORT OF PATENT OWNER RESPONSE UNDER 37
`C.F.R. § 42.120
`___________________________________
`
`Papst Licensing GmbH & Co., KG.
`Petitioner – Huawei, LG and ZTE
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2017-00415
`EXH. 2005
`
`1
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................. 1
`I.
`BACKGROUND AND QUALIFICATIONS ................................... 2
`II.
`III. MATERIALS CONSIDERED .......................................................... 6
`IV. PERSON OF ORDINARY SKILL IN THE ART .......................... 7
`V. APPLICABLE LEGAL STANDARDS ............................................ 8
`VI. OVERVIEW OF THE ‘449 PATENT ............................................ 13
`VII. CLAIM CONSTRUCTION ............................................................. 16
`VIII. OVERVIEW OF MURATA ............................................................ 18
`IX. OVERVIEW OF SCHMIDT ........................................................... 19
`X. VALIDITY OF THE ‘449 PATENT OVER MURATA,
`SCHMIDT, MS-DOS ENCYCLOPEDIA AND BERETTA .................. 19
`
`2
`
`
`
`I.
`
`Introduction
`I have been retained on behalf of Papst Licensing GmbH & Co. KG
`1.
`
`(“Patent Owner” or “Papst”) and its counsel, DiNovo Price Ellwanger LLP, as an
`
`expert in this proceeding. I am personally knowledgeable about the matters stated
`
`herein.
`
`2.
`
`I understand that Dr. Kevin Almeroth has provided a declaration
`
`(“Almeroth Declaration”) on behalf of Huawei Device Co., Ltd., LG Electronics,
`
`Inc. and ZTE (USA) Inc. (“Petitioners” or “Huawei/LG/ZTE”), indicating that
`
`claims 1-10, 12-13 and 15-18 of United States Patent No. 6,895,449 (“‘449 patent”)
`
`are invalid.
`
`3.
`
`I have been asked to provide my conclusions and bases thereof
`
`regarding several aspects of the issues in dispute. Based on my investigation in this
`
`matter, I conclude that Petitioners and Dr. Almeroth have failed to show that any of
`
`the claims discussed in the Petition or Almeroth Declaration are invalid for
`
`anticipation or obviousness.
`
`4.
`
`I receive compensation at my standard hourly rate of $550 per hour for
`
`my time working on this matter, plus expenses. I have no financial interest in Papst
`
`or the ‘449 patent, and my compensation is not dependent on the outcome of this
`
`inter partes review (“IPR”) or the underlying litigation. The conclusions I present
`
`are due to my own judgment.
`
`
`
`
`1
`
`3
`
`
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`5.
`
`I reserve the right to modify and supplement the analysis and
`
`conclusions proposed herein based upon additional information including any
`
`additional fact discovery or expert discovery by the parties.
`
`II. Background and Qualifications
`6. My qualifications as an expert in the field of computer peripherals and
`
`data transfer between a computer and peripheral devices, relevant to the subject
`
`matter claimed in the ‘449 patent, are provided in the paragraphs below. A copy of
`
`my latest curriculum vitae (CV) is attached as Exhibit A, which provides further
`
`details regarding my background and qualifications. This CV identifies a list of all
`
`cases in which I have testified at trial or at deposition.
`
`7.
`
`I have over forty years of experience with electronics and electrical
`
`engineering, including extensive knowledge and experience with analog and digital
`
`electronic circuitry, digital computer technology, computer peripherals, control
`
`systems, digital communications, operating systems, and related software and
`
`hardware components. My technical expertise relevant to the subject matter claimed
`
`in the ‘449 patent includes my understanding of computer peripherals, analog and
`
`digital circuitry, interface devices, device drivers, file systems, SCSI standards, data
`
`buses, and operating systems.
`
`8.
`
`As a summary of my employment and education history, I worked as a
`
`Sergeant and Instructor for the United States Air Force as a maintenance technician
`
`
`
`
`2
`
`4
`
`
`
`for air defense computer systems from 1967–1970. After leaving the Air Force, I
`
`earned my Bachelor of Science in Electrical Engineering in 1972 from the University
`
`of Washington. After graduating, I was a candidate for a Master of Science degree
`
`in Electrical Engineering at Stanford University from 1972–1973, and I worked from
`
`1973–1976 as an Engineer at Stanford University’s Artificial Intelligence
`
`Laboratory. My duties included the design, construction, and debugging of motor
`
`controls and sensor electronics for robotics and computer interfaces.
`
`9.
`
`After leaving Stanford, I founded G Systems in 1976, which managed
`
`the hardware and software design and development of computer transaction
`
`processing systems for a variety of applications and customers. Projects included
`
`writing communications software and device drivers, design of hardware and
`
`software interfaces for disk controllers, designing peripheral switches incorporated
`
`into system products, communications controllers, co-design of mainframe
`
`computers, and other projects.
`
`10.
`
`In 1983, I co-founded and served as head of engineering of Softix
`
`Incorporated. Softix designed and produced systems
`
`to control and sell
`
`entertainment tickets by ticket agencies and large arenas in the United States,
`
`Canada, Australia, and Hong Kong. My duties at Softix included managing software
`
`development efforts; developing architecture, design, sales, contracting, production,
`
`and field support of large-scale software and hardware systems; and analyzing,
`
`
`
`
`3
`
`5
`
`
`
`debugging, and writing software application and driver programs for feature
`
`enhancements and system integration. I was also responsible for selecting,
`
`evaluating, integrating, and training customer staff and providing repair support for
`
`all hardware components of minicomputer systems; developing peripheral switch
`
`equipment for evolving system requirements; and manufacturing and selling
`
`peripheral switching equipment. In 1988-89, a colleague at my company and I
`
`designed a switch and repeater for the SCSI bus which required intimate knowledge
`
`of the bus protocol and general familiarity with the bus commands and device
`
`interface design. I applied for and received and successfully licensed four patents
`
`covering this work.
`
`11.
`
`I currently own and operate the consulting firm of Gafford Technology.
`
`The firm provides computer system-related services and offers analysis and
`
`presentation services to assist clients in litigation efforts. Specific services include
`
`consulting
`
`in computer system design, software selection, and network
`
`configuration, and providing expert factual analysis, claim interpretation assistance,
`
`prior art investigation, and testimony in patent and hardware/software systems
`
`litigation.
`
`12.
`
`I am generally familiar with the analysis of patents. I am the inventor
`
`of the following U.S. patents:
`
`• Switch for Distributed Arbitration Digital Data Buses, United States
`Patent No. 5,621,899, issued April 15, 1997;
`4
`
`
`
`
`6
`
`
`
`• Method for Operating a Repeater for Distributed Arbitration Digital
`Data Buses, United States Patent No. 5,684,966, issued November 4,
`1997;
`• Repeater/Switch for Distributed Arbitration Digital Data Buses,
`United States Patent No. 5,758,109, issued May 26, 1998; and
`• Repeater/Switch for Distributed Arbitration Digital Data Buses,
`United States Patent No. 6,154,799, issued November 28, 2000.
`
`13. These patents relate to digital data buses used for communicating
`
`signals between different functional components of digital computers.
`
`14. Each of the patents listed above is directed to a repeater switch and
`
`related systems and methods for distributed arbitration digital data buses, and
`
`particularly applicable to a SCSI bus that I developed in the late 1980s. The repeater
`
`permits many devices to be placed near each other at the end of a SCSI cable without
`
`signal quality problems, and the switch permits sharing a device among several
`
`computers. Relevant to the patents as issue, both provide their features in a way that
`
`is transparent to the standard SCSI communications protocol and commands passed
`
`between initiator computers and target peripherals connected to the SCSI bus. All
`
`commands, including the common READ, WRITE, TEST UNIT READY, MODE
`
`SENSE, FORMAT DEVICE, and target behavior including disconnect/reconnect,
`
`pass through my switch and repeater as though the switch or repeater was not
`
`present. Through this work and my work in connection with other projects, I am
`
`very familiar with SCSI.
`
`15. The ‘449 patent concerns data acquisition systems for generating
`
`
`
`
`5
`
`7
`
`
`
`analog data, and processing, storing, and transferring the acquired data to a host
`
`computer without requiring a user to install any drivers or specialized software on
`
`the host computer. I recognize this technology as being well within the sphere of
`
`my experience and expertise, and I understand the technology described in the
`
`patents fully. I believe my experience and education in this industry qualifies me to
`
`explain this technology and to address the issues of patent validity from the
`
`perspective of a person of ordinary skill in the art. I am qualified to submit expert
`
`analyses in this proceeding.
`
`III. Materials Considered
`I have reviewed and considered all documents discussed throughout
`16.
`
`this declaration, including the Petition related to IPR2017-00415 (including relevant
`
`exhibits), the Patent Owner Preliminary Response, the Decision of Institution related
`
`to IPR2017-00415, the ‘449 patent, the ‘449 patent prosecution history (or at least
`
`relevant parts thereof), the Almeroth Declaration, U.S. Patent No. 5,508,821
`
`(“Murata”), The SCSI Bus and IDE Interface Protocols, Applications and
`
`Programming, by Schmidt, First Edition, Addison-Wesley, 1995 (“Schmidt”), Ray
`
`Duncan, The MS-DOS Encyclopedia (1988) (“MS-DOS Encyclopedia”), U.S.
`
`Patent No. 5,850,484 (“Beretta”) and the Patent Owner Response. Naturally, my
`
`review of these materials was informed by my education, my experience in and
`
`knowledge of the industry, and my work both as an engineer and a consultant.
`
`
`
`
`6
`
`8
`
`
`
`IV. Person of Ordinary Skill in the Art
`I have been asked to address the issues from the perspective of a person
`17.
`
`of ordinary skill in the art (“POSITA”) of the invention of the ‘449 patent. As stated
`
`in the ‘449 patent, the field of the invention relates to “the transfer of data and in
`
`particular to interface devices for communication between a computer or host device
`
`and a data transmit/receive device from which data is to be acquired or with which
`
`two-way communication is to take place.” Exhibit 1001 (“’449 Patent”) at 1:13-17.
`
`18. Petitioners assert that “[a] person of ordinary skill in the art of the ‘449
`
`Patent at the time of the alleged invention (‘POSITA’) would have a four-year degree
`
`in electrical engineering, computer science, or related field of study.” Paper 1
`
`(Petition) at 8-9. According to Petitioners, “[a] POSITA would also have either a
`
`Master’s degree, or at least two years of experience in the relevant field, e.g., computer
`
`science, computer systems, or peripheral devices.” Id. at 9. Patent Owner contends
`
`that a POSITA would have at least a bachelor’s degree in a related field such as
`
`computer engineering or electrical engineering and at least three years of experience
`
`in the design, development, and/or testing of hardware and software components
`
`involved with data transfer or in embedded devices and their interfaces with host
`
`systems. Paper 6 (Patent Owner Preliminary Response) at 6. Alternatively, a
`
`POSITA may have five or more years of experience in these technologies, without a
`
`bachelor’s degree. Id. at 6-7
`
`
`
`
`7
`
`9
`
`
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`19. The Board determined that there were not meaningful differences
`
`between the parties’ definitions of a POSITA and adopted Petitioners’ assessment
`
`of a POSITA in the Institution Decision. Paper 8 (Institution Decision) at 10.
`
`Because I agree with the Board that there are not meaningful differences between
`
`the parties’ definitions of a POSITA and because I qualify as a POSITA under either
`
`assessment, I will proceed with this declaration using the Board’s adopted definition
`
`of a POSITA.
`
`20.
`
`I consider myself to have at least the credentials of a person of ordinary
`
`skill in the art, and I am capable of addressing the issues from the perspective of
`
`such a person. As a result of my education, academic experience, and industrial
`
`experience, I am familiar with interface devices and peripheral technology and also
`
`with the state of that technology in March of 1997, when the first application to
`
`which the ‘449 patent claims priority was filed.
`
`V. Applicable Legal Standards
`21. As a technical expert, I am not offering any legal opinions. Rather I am
`
`offering technical assessments and opinions. In rendering my analysis, I have been
`
`informed by counsel regarding various legal standards for determining patentability.
`
`I have applied those standards informing my technical opinions expressed in this
`
`declaration.
`
`22. The patent claims describe the invention made by the inventor and
`
`
`
`
`8
`
`10
`
`
`
`describe what the patent owner may prevent others from doing. I understand that an
`
`independent claim sets forth all the requirements that must be met in order to be
`
`covered by that claim. I further understand that a dependent claim does not itself
`
`recite all of the requirements of the claim but refers to another claim and incorporates
`
`all of the requirements of the claim to which it refers.
`
`23.
`
`It is my understanding that for a patent claim to be anticipated, all
`
`limitations of the claim must be disclosed or inherent in a single prior art reference.
`
`24.
`
`It is my understanding that a claimed invention is unpatentable if the
`
`differences between the invention and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which the subject matter pertains. Obviousness,
`
`as I understand it, is based on the scope and content of the prior art, the differences
`
`between the prior art and the claim, and the level of ordinary skill in the art.
`
`25.
`
`I understand that when evaluating obviousness, one must not consider
`
`whether the claimed invention would have been obvious to a layman or to an expert;
`
`not use hindsight when comparing the prior art to the claimed invention; not consider
`
`what was learned from the teachings of the patent; or use the patent as a road map
`
`for selecting and combining items of prior art. In other words, one should avoid
`
`using the challenged patent as a guide through the maze of prior art references,
`
`combining the right references in the right way so as to achieve the result of the
`
`
`
`
`9
`
`11
`
`
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`claims at issue. Instead, one must put oneself in the place of a person of ordinary
`
`skill at the time the invention was made and consider only what was known before
`
`the invention was made and not consider what is known today.
`
`26.
`
`I understand that obviousness should be considered in light of the
`
`problem facing the inventor and the complexity of the alternatives for solving the
`
`problem. That individual elements of the claimed invention are disclosed in the prior
`
`art is not alone sufficient to reach a conclusion of obviousness.
`
`27.
`
`I also understand that when considering the obviousness of a patent
`
`claim, one should consider whether a teaching, suggestion, or motivation to combine
`
`the references exists so as to avoid impermissibly applying hindsight when
`
`considering the prior art. I understand that a previous approach to the motivation to
`
`combine required a teaching, suggestion, or motivation to be found explicitly or
`
`implicitly: (1) in the prior art; (2) in the knowledge of those of ordinary skill in the
`
`art; or (3) from the nature of the problem to be solved. However, I understand that
`
`a more expansive and flexible approach is now used when determining obviousness
`
`and the motivation to combine references. I understand that the legal determination
`
`of the motivation to combine references allows recourse to logic, judgment, and
`
`common sense, but that any such motivation to combine references must still avoid
`
`the improper application of hindsight or reliance on the patentee’s disclosure of his
`
`invention as found in the patent specification, drawings and claims.
`
`
`
`
`10
`
`12
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`
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`28.
`
`I understand that if the teachings of a prior art reference would lead one
`
`skilled in the art to make a modification that would render that prior art device,
`
`system, or method inoperable, then such a modification would generally not be
`
`obvious. I also understand that if a proposed modification would render the prior art
`
`device, system, or method unsatisfactory for its intended purpose, then there is
`
`strong evidence that no suggestion or motivation existed at the time of the subject
`
`invention to make the proposed modification.
`
`29.
`
`I understand that it is improper to combine references where the
`
`references teach away from their combination. I understand that a reference may be
`
`said to teach away when a person of ordinary skill, upon reading the reference, would
`
`be discouraged from following the path set out in the reference, or would be led in a
`
`direction divergent from the path that was taken by the applicant. It is also my
`
`understanding that the degree of teaching away will depend on the particular facts;
`
`in general, a reference will teach away if it suggests that the line of development
`
`flowing from the reference’s disclosure is unlikely to be productive of the result
`
`sought by the applicant. I understand that a reference teaches away, for example, if
`
`(1) the combination would change the principle of operation of the base reference,
`
`(2) the combination would produce a seemingly inoperative device, or (3) the
`
`references leave the impression that the product would not have the property sought
`
`by the applicant or would no longer achieve the intended purpose(s) of the references
`
`
`
`
`11
`
`13
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`
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`being modified or combined.
`
`30. Secondary considerations of obviousness are also considered in
`
`determining whether a claimed invention is obvious. For example, commercial
`
`success of the invention, copying by others, long-standing need in the art resolved
`
`by the patented invention, prior failure of others to solve the problem, licenses
`
`of the invention by others, unexpected results of the invention and skepticism of
`
`the invention or teaching away from the invention by others all tend to establish that
`
`an invention was non-obvious.
`
`31.
`
`I understand that the first step in determining either validity or
`
`infringement is to properly construe the claims. While it is my understanding that
`
`the Board is not bound by any previous claim constructions in the Institution
`
`Decision or in other judicial proceedings, at least two district court claim
`
`constructions and one Federal Circuit opinion have construed some of the terms of
`
`the ‘449 patent. I will discuss the claim constructions I have considered for certain
`
`limitations in more detail below.
`
`32.
`
`It is my understanding that an issued United States patent is presumed
`
`to be valid. It is my further understanding that it is the Petitioners’ burden to
`
`establish invalidity, including invalidity based on either anticipation or obviousness,
`
`by a preponderance of the evidence in this proceeding. Invalidity issues are
`
`determined on a claim-by-claim basis by comparing the claim to the prior art.
`
`
`
`
`12
`
`14
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`
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`VI. Overview of the ‘449 Patent
`33. The ’449 patent involves a unique method for achieving high data
`
`transfer rates for data acquisition systems (e.g., still pictures, videos, voice
`
`recordings) to a general-purpose computer, without requiring a user to purchase,
`
`install, and/or run specialized software for each system. Exhibit 1001 (‘449 Patent)
`
`at 3:26-30. At the time of the invention, there were an increasing number and variety
`
`of data acquisition systems with the ability to capture high volumes of information.
`
`Id. at 1:35-55. As such, there was an increasing demand to transfer that information
`
`to commercially-available, general purpose computers. Id. at 1:21-34. But at that
`
`time—and today—performing that data transfer operation required either loading
`
`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or specifically
`
`matching interface devices for a data acquisition system to a host system that may
`
`maximize data transfer rates but lacks the flexibility to operate with different
`
`devices. Id. at 1:12-3:19.
`
`34. The ‘449 patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`without specialized software, while being sufficiently flexible
`
`to operate
`
`independent of device or host manufacturers. Id. at 3:26-31. The resulting invention
`
`would allow a data acquisition system to identify itself as a type of common device
`
`
`
`
`13
`
`15
`
`
`
`so as to leverage the inherent capabilities of general-purpose, commercially-
`
`available computers. Id. at 5:2-22. Accordingly, users could avoid loading specific
`
`software; improve data transfer efficiency; save time, processing power, and
`
`memory space; and avoid the waste associated with purchasing specialized
`
`computers or loading specific software for each device. Id. at 3:26-30, 8:18-9:58,
`
`10:9-15. The ‘449 patent claims variations of this concept and provides a crucial,
`
`yet seemingly simple, method and apparatus for a high data rate, device-independent
`
`information transfer. Id. at 3:26-30.
`
`35. The interface device disclosed in the ‘449 Patent can leverage “drivers
`
`for input/output device[s] customary in a host device which reside in the BIOS
`
`system of the host device . . . .” Id. at 10:11-12; see also id. at 4:17-20 (“The
`
`interface device according
`
`to
`
`the present
`
`invention
`
`therefore no
`
`longer
`
`communicates with the host device or computer by means of a specially designed
`
`driver but the means of a program which is present in the BIOS system . . .”), 5:6-8
`
`(describing the use of “usual BIOS routines” to issue INQUIRY instructions to the
`
`interface), and 7:11-21 (describing use of BIOS routines). Similarly, the written
`
`description describes also using drivers included in the operating system. Id. at 4:63-
`
`66 (“Communication between the host system or host device and the interface device
`
`is based on known standard access commands as supported by all known operating
`
`systems (e.g., DOS®, Windows®, Unix®).”). Alternatively, if the required specific
`
`
`
`
`14
`
`16
`
`
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`driver or drivers for a multi-purpose interface (such as a SCSI interface) is already
`
`present in a host device, such drivers could be used with the ‘449 patent’s interface
`
`device instead of, or in addition to, customary drivers which reside in the BIOS. Id.
`
`at 10:9-25. Accordingly, the ‘449 patent contemplated a universal interface device
`
`that could operate independent of the manufacturer of the computer. Id. at 11:7-10.
`
`Indeed, the preferred embodiment discloses that the interface device includes three
`
`different connectors, a 50 pin SCSI connector 1240, a 25 pin D-shell connector 1280,
`
`and a 25 pin connector 1282, to allow the ‘449 patent’s interface device to connect
`
`to a variety of different standard interfaces that could be present in a host computer.
`
`Id. at 8:30-47 and FIG. 2.
`
`36. As is apparent from the title of the ’449 patent, the interface device
`
`disclosed is capable of acquiring and processing analog data. As shown in FIG. 2
`
`reproduced below, the ’449 patent discloses that the interface device 10 has an
`
`analog input at connection 16 for receiving analog data from a data transmit/receive
`
`device on a plurality of analog input channels 1505 and simultaneously digitizing
`
`the received analog data using, inter alia, a sample and hold amplifier 1515 and an
`
`analog to digital converter 1530 that converts analog data received from the plurality
`
`of channels 1505 into digital data that may then be processed by the processor 1300.
`
`Id. at 8:49-64.
`
`
`
`
`15
`
`17
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`
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`VII. Claim Construction
`I have experience applying claim constructions that are provided to me
`37.
`
`in connection with my prior art work as an expert in district court proceedings and
`
`IPR proceedings.
`
`38.
`
`In an inter partes review (“IPR”), the Board construes claim terms in
`
`an unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`
`
`
`16
`
`18
`
`
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art. Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 136
`
`S. Ct. 2131, 2146 (June 20, 2016). The broadest reasonable meaning given to claim
`
`language must take into account any definitions presented in the specification. In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass,
`
`314 F.3d 575, 577 (Fed. Cir. 2002)). Under this standard, claim terms are given their
`
`ordinary and customary meaning as would be understood by one of ordinary skill in
`
`the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005) (en banc)).
`
`39.
`
`In the Institution Decision, the Board construed “multi-purpose
`
`interface” to encompass a “SCSI interface.” Paper 8 (Institution Decision) at 7. The
`
`Board also construed “data transmit/receive device” to mean a device that “is
`
`capable of either (a) transmitting data to or (b) transmitting data to and receiving
`
`data from the host device.” Id. at 8-9.
`
`40.
`
`In the underlying District Court litigation related to this IPR, a claim
`
`construction issued on March 7, 2017 that further construed certain terms of the ‘449
`
`patent. A copy of this claim construction order has already been included in the
`
`record as Exhibit 1024.
`
`
`
`
`17
`
`19
`
`
`
`VIII. Overview of Murata
`41. Murata generally relates to an image scanner or image forming
`apparatus (i.e., a printer) that may be connected via a small computer system
`
`interface (SCSI) to transfer data to and from an external host computer. Exhibit
`
`1005 (Murata) at Abstract, 1:9-12. Murata describes that scanners are not
`
`standardized, and as such, for a host computer to set parameters for the scanner, the
`
`computer must have a software device driver for the scanner, which is not installed
`
`in the operating system. Id. at 1:32-44. To avoid preparing a scanner device driver
`
`for each type of host computer, Murata proposes a scanner that comprises a file
`
`system emulation means for emulating a hard disc such that the existing device
`
`driver for such hard discs may be used to control the scanner. Id. at 1:62-2:12.
`
`Because the host computer’s operating system has commands that are utilized to
`
`access the file system, “development of application software for use in a host
`
`computer operatively connected to the image scanner . . . is facilitated.” Id. at 2:13-
`
`17.
`
`42. The host computer contemplated by Murata is a workstation having a
`
`UNIX operating system. Id. at 2:64-65. Murata discloses that for the scanner to be
`
`operated by the workstation, a file system must be prepared by the workstation. Id.
`
`at 4:26-29. “In practice” this is done by “execut[ing]” an “‘mkfs’ or ‘newfs’
`
`command of the UNIX” operating system. Id. at 4:29-30. This user-command
`
`
`
`
`18
`
`20
`
`
`
`causes the UNIX operating system to provide a device file and device driver required
`
`for operating the hard disc (here, the scanner emulating a hard disc). Id. at 4:31-32.
`
`This file set-up “enables basic information of the file system to be written to . . . the
`
`hard disc (image scanner).” Id. at 4:33-35; see also, e.g., id. at 4:46-55 (“if the
`
`preparation of the file system is carried out,” the workstation can mount the scanner,
`
`access files, etc.) (emphasis added), FIG. 5 (flow chart demonstrating that if the file
`
`system is not prepared, the “mkfs” command must first be executed before other
`
`steps can be taken.)
`
`
`
`IX. Overview of Schmidt
`43. As the Board stated, “Schmidt describes the SCSI bus and IDE
`
`(Integrated Drive Electronics) interface, which both are ANSI (American National
`
`Standards Institute) standards.” Paper 8 (Institution Decision) at 12; Exhibit 1006
`
`(Schmidt) at Preface. “According to Schmidt, these interfaces are two of the most
`
`important interfaces for computer peripherals in use at that time, and almost all
`
`computers at that time, from PCs to workstations to mainframes, were equipped with
`
`a SCSI interface.” Id. “The SCSI bus is designed for hard drives, as well as tape
`
`drives, CD-ROM, scanners, and printers.” Id.
`
`X. Validity of the ‘449 Patent Over Murata, Schmidt, MS-DOS
`Encyclopedia and Beretta
`In my opinion, Murata alone, or in combination with Schmidt, MS-
`44.
`
`DOS Encyclopedia, and/or Beretta fail(s) to disclose claim 1 of the ‘449 patent.
`
`
`
`
`19
`
`21
`
`
`
`Murata and/or Schmidt and/or MS-DOS Encyclopedia and/or Beretta do not disclose
`
`the “wherein the interface device is configured by the processor and the memory in
`
`such a way that the interface device, when receiving an inquiry from the host device
`
`as to the type of a device attached to the multi-purpose interface of the host device,
`
`sends a signal, regardless of the type of the data transmit/receive device attached to
`
`the second connecting device of the interface device, to the host device which signals
`
`to the host device that it is a storage device customary in a host device, whereupon
`
`the host device communicates with the interface device by means of the driver for
`
`the storage device customary in a host device” limitation of claim 1 of the ‘449
`
`patent. In fact, Petitioner and Dr. Almeroth only rely on Murata and Schmidt for
`
`disclosing this limitation and do not apply MS-DOS Encyclopedia or Beretta to this
`
`limitation. Paper 1 (Petition) at 24-32; Exhibit 1003 (Zadok Declaration) at ¶¶ 73-
`
`85.
`
`45.
`
`In my opinion, Murata, and/or the combination of Murata and Schmidt,
`
`fails to disclose the “when receiving an inquiry from the host device as to the type
`
`of a device attached to the multi-purpose interface of the host device, sends a signal,
`
`regardless of the type of the data transmit/receive device attached to the second
`
`connecting device of the interface device, to the host device which signals to the host
`
`device that it is a storage device customary in a host device” portion of this limitation
`
`because Murata does not disclose responding to an inquiry from the workstation by
`
`
`
`
`20
`
`22
`
`
`
`sending a signal that it is a storage device customary in a host device and there is no
`
`teaching in Schmidt of a device identifying itself as something other than what it
`
`actually is.
`
`46. The host computer contemplated by Murata is a workstation having a
`
`UNIX operating system. Exhibit 1005 (Murata) at 2:64-65. Murata discloses that
`
`for the scanner to be operated by the workstation, a file system must be prepared by
`
`the workstation. Id. at 4:26-29. “In practice” this is done by “execut[ing]” an
`
`“‘mkfs’ or ‘newfs’ command of the UNIX” operating system. Id. at 4:29-30. This
`
`user-command causes the UNIX operating system to provide a device file and device
`
`driver required for operating the hard disc (here, the scanner emulating a hard disc).
`
`Id. at 4:31-32. This file set-up “enables basic information of the file system to be
`
`written to a predetermined region, i.e. a super block of the hard disc (image
`
`scanner).” Id. at 4:33-35; see also, e.g., id. at 4:46-55 (“if the preparation of the file
`
`system
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