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
`_______________
`___________________________________
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`_______________
`
`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
`_______________
`___________________________________
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`___________________________________
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE .................................. 1
`
`II.
`
`INTRODUCTION ............................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`STATEMENT OF RELIEF REQUESTED ......................................... 1
`
`OVERVIEW OF THE ‘449 PATENT ................................................. 2
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 5
`
`CLAIM CONSTRUCTION .................................................................. 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS ..................... 8
`
`III. PATENT OWNER’S RESPONSE TO PETITIONERS’ GROUNDS OF
`REJECTION ........................................................................................................... 10
`A. MURATA, SCHMIDT, MS-DOS ENCYCLOPEDIA AND
`BERETTA DO NOT RENDER CLAIMS 1-10, 12-13 AND 15-18
`OBVIOUS ................................................................................................. 10
`1. OVERVIEW OF MURATA .......................................................... 10
`2. OVERVIEW OF SCHMIDT ......................................................... 12
`3. OVERVIEW OF MS-DOS ENCYCLOPEDIA .......................... 12
`
`4. MURATA, SCHMIDT, MS-DOS ENCYCLOPEDIA AND
` 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,
`ii
`
`
`
`
`
` 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” LIMITATION OF
` INDEPENDENT CLAIM 1 OR THE CORRESPONDING
` LIMITATIONS OF INDEPENDENT CLAIMS 17 AND 18 OF
` THE ‘449 PATENT......................................................................... 13
`
`5. MURATA, SCHMIDT, MS-DOS ENCYCLOPEDIA AND
` BERETTA DO NOT RENDER OBVIOUS DEPENDENT
` CLAIMS 2-10, 12-13 AND 15-16 OF THE ‘449 PATENT ...... 21
`B. MURATA AND SCHMIDT WOULD NOT BE COMBINED BY
`ONE SKILLED IN THE ART ............................................................... 21
`INTER PARTES REVIEW IS UNCONSTITUTIONAL .................... 25
`C.
`IV. CONCLUSION ............................................................................................... 25
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Currently and Previously Filed – Patent Owner
`
`
`
`Description
`
`Ex.
`No.
`2001 Defendants’ Responsive Claim Construction Brief in Papst Licensing
`GmbH & Co., KG v. Apple, Inc. (6:15-CV-01095-RWS)
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d 1255
`(Fed. Cir. 2015)
`2003 Definition of charge-coupled device, Dictionary of Engineering (2015)
`2004 Confidential Settlement Agreement Between Huawei Device Co., Ltd.
`and Papst Licensing GmbH & Co., KG
`2005 Declaration of Thomas A. Gafford in Support of Patent Owner Response
`(“Gafford Declaration”)
`2006 mkdev Command Definition from IBM Knowledge Center
`(https://www.ibm.com/support/knowledgecenter/en/ssw_aix_61/com.ibm.
`aix.cmds3/mkdev.htm)
`2007 August 24, 2006 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`July 17, 2007 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`January 2, 2008 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`
`
`2002
`
`2008
`
`2009
`
`Previously Filed – Petitioners
`
`Ex. No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`Description
`U.S. Patent No. 6,895,449 to Tasler
`File History for U.S. Patent No. 6,895,449
`Declaration of Kevin C. Almeroth
`Curriculum Vitae of Kevin C. Almeroth
`U.S. Patent No. 5,508,821 to Murata
`Friedhelm Schmidt, The SCSI Bus and IDE Interface (1995)
`U.S. Patent No. 5,850,484 to Berretta et al.
`iv
`
`
`
`1008
`1009
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`
`1018
`1019
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`
`
`
`
`European Patent Office Publication Number 0 685 799 A1
`IBM Corp., Communication Method Between Devices Through FDD
`Interface 38 IBM Technical Disclosure Bulletin 245
`Ray Duncan, The MS-DOS Encyclopedia (1988)
`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255, 1265
`(Fed. Cir. 2015)
`Papst’s Opening Claim Constr. Brief and Appendix 8 of Papst’s
`Opening Claim Constr. Brief, Papst Licensing GmbH & Co., KG v.
`Apple, Inc., et al., No. 6:15-cv-01095-RWS (E.D. Tex. Nov. 22,
`2016)
`Papst’s Opening Claim Constr. Brief and Decl. of Robert Zeidman, In
`Re Papst Licensing Dig. Camera Pat. Litig., MDL No. 1880, 1:07-
`mc-00493, (D.D.C. June 3, 2016)
`Am. Nat’l Standards Inst., Inc., Am. Nat’l Standard for Info. Sys’s
`Small Computer System Interface-2, ANSI X3.131-1994 (1994)
`(“SCSI Standard”)
`Dave Williams, The Programmer’s Technical Reference: MS-DOS,
`IBM PC & Compatibles (1990)
`File History for U.S. Patent Application No. 08/411,369
`Comparison of excerpts of File History for U.S. Patent Application
`No. 08/411,369 and U.S. Patent No. 5,850,484 to Beretta et al. (Ex.
`1007)
`U.S. Patent No. 4,589,063 to Shah et al.
`U.S. Patent No. 5,038,320 to Heath et al.
`U.S. Patent No. 5,787,246 to Lichtman et al.
`Vetterli & Nussbaumer, Simple FFT and DCT Algortihms, 6 Signal
`Processing 267-78 (1984)
`Papst’s Brief, In re Papst Licensing Dig. Camera Pat. Litig., No
`2014-1110 (Fed. Cir. February 20, 2014)
`Rufus P. Turner et al., The Illustrated Dictionary of Electronics
`(1991)
`Markman order interpreting various terms in U.S. Patent No.
`6,895,449, Papst Licensing GmbH & Co., KG v. Apple Inc., Case No.
`6:15-01096-RWS, Dkt. 275 (E.D. Texas March 7, 2017)
`
`
`v
`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioners Huawei Device Co., Ltd., LG Electronics, Inc., and ZTE (USA)
`
`Inc. (“Petitioners”) did not submit a statement of material facts in their Petition for
`
`inter partes review. Paper 1 (Petition). Accordingly, no response to a statement
`
`of material facts is due pursuant to 37 C.F.R. § 42.23(a), and no facts are admitted.
`
`II.
`
`INTRODUCTION
`Patent Owner Papst Licensing GMBH & Co., KG (“Patent Owner”)
`
`respectfully submits this Patent Owner Response under 35 U.S.C. §§ 311-319 and
`
`37 C.F.R. § 42.120. It is being timely filed on or before August 28, 2017 pursuant
`
`to the Scheduling Order issued in this proceeding and the Stipulation Regarding
`
`Due Dates 1 and 2. Paper 9 (Scheduling Order) at 6; Paper 10 (Stipulation
`
`Regarding Due Dates 1 and 2) at 1.
`
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e). Petitioners’ propositions of unpatentability fail
`
`to meet that burden with respect to claims 1-10, 12-13 and 15-18 of U.S. Patent No.
`
`6,895,449 (“’449 Patent”).
`
`
`
`
`
`STATEMENT OF RELIEF REQUESTED
`A.
`Pursuant to 35 U.S.C. § 316, Patent Owner respectfully requests that the
`
`1
`
`
`
`Patent Trial And Appeal Board (“Board” or “PTAB”) find that originally issued
`
`claims 1-10, 12-13 and 15-18 of the ‘449 Patent are valid in view of the proposed
`
`grounds of unpatentability under consideration.
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘449 PATENT
`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.
`
`The ‘449 Patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`
`
`2
`
`
`
`without specialized software, while being sufficiently flexible
`
`to operate
`
`independent of device or host manufacturers. Id. at 3:26-31. The resulting invention
`
`would allow a data acquisition system to identify itself as a type of common device
`
`so as to leverage the inherent capabilities of general-purpose, commercially-
`
`available computers. Id. at 5:2-22. 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.
`
`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
`
`
`
`3
`
`
`
`between the host system or host device and the interface device is based on known
`
`standard access commands as supported by all known operating systems (e.g.,
`
`DOS®, Windows®, Unix®).”). Alternatively, if the required specific driver or
`
`drivers for a multi-purpose interface (such as a SCSI interface) is already present in
`
`a host device, such drivers could be used with the ‘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.
`
`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
`
`
`
`4
`
`
`
`channels 1505 into digital data that may then be processed by the processor 1300.
`
`Id. at 8:49-64.
`
`
`
`
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`C.
`“The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to have known the relevant art at the time of the invention.” Manual of
`
`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (1) type of problems
`
`
`
`5
`
`
`
`encountered in the art; (2) prior art solutions to those problems; (3) rapidity with
`
`which innovations are made; (4) sophistication of the technology; and (5)
`
`educational level of active workers in the field. In re GPAC, 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995).
`
`Petitioners’ proposed definition of the level of ordinary skill in the art is
`
`partially consistent with Patent Owner’s view. 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 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. 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
`
`
`
`6
`
`
`
`systems. Alternatively, a POSITA may have five or more years of experience in these
`
`technologies, without a bachelor’s degree.
`
`The Board previously determined that there were not meaningful differences
`
`between the parties’ definitions of a POSITA and adopted Petitioners’ assessment
`
`of a POSITA in the Institution Decision. Paper 8 (Institution Decision) at 10. While
`
`Patent Owner believes its proposed definition is more appropriate, it agrees with the
`
`Board that there are not meaningful differences between the parties’ definitions of a
`
`POSITA for purposes of this proceeding.
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board ordinarily construes claim terms
`
`in an unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`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
`
`
`
`7
`
`
`
`1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005) (en banc)).
`
`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.
`
`In the underlying district court litigation related to this IPR, a claim
`
`construction order issued on March 7, 2017 that further construed certain terms of
`
`the ‘449 Patent. A copy of this claim construction order is already in the record as
`
`Exhibit 1024 for the Board’s consideration.
`
`
`
`E. SUMMARY OF PATENT OWNER’S ARGUMENTS
`The Board instituted inter partes review on claims 1-3, 6-10, 12-13 and 15-
`
`18 of the ‘449 Patent based on Murata, Schmidt and MS-DOS Encyclopedia. Paper
`
`8 (Institution Decision) at 18. The Board further instituted inter partes review on
`
`claims 4-5 of the ‘449 Patent based on Murata, Schmidt, MS-DOS Encyclopedia and
`
`Beretta. Id. at 19. However, these proposed grounds of unpatentability fail with
`
`respect to all of these claims because the proposed references and combination of
`
`references fail to disclose or suggest each and every limitation as recited by the ‘449
`
`Patent, and Murata and Schmidt would not be combined in the manner Petitioners
`
`
`
`8
`
`
`
`suggest.
`
`United States Patent No. 5,508,821 (“Murata”), alone or in combination with
`
`the other applied prior art, does 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 challenged independent claim 1 of
`
`the ‘449 Patent or the corresponding limitations of independent claims 17 and 18
`
`of the ‘449 Patent.
`
`Further, Petitioners’ assertions of obviousness based on combining the
`
`primary reference, Murata, with teachings of the secondary reference, The SCSI Bus
`
`and IDE Interface Protocols, Applications and Programming, by Schmidt, First
`
`Edition, Addison-Wesley, 1995 (“Schmidt”), are mere conclusory statements that
`
`do not account for the manner in which the references teach away from the proposed
`
`combination. The proposed combination of Murata’s scanner with signaling for a
`
`standard hard disc drive as discussed in Schmidt would change the principle of
`
`
`
`9
`
`
`
`operation of Murata, produce a seemingly inoperative device, and/or create a device
`
`that no longer achieved the intended purpose of Murata. Moreover, there would be
`
`no reason or motivation for one skilled in the art to combine Schmidt with Murata
`
`to provide the signaling related to identification and recognition of Murata’s
`
`scanner as a hard disk. Because Petitioners fail to provide a persuasive fact-based
`
`analysis with some rational underpinning to support their combination theories of
`
`obviousness, Petitioners cannot fulfill their burden of showing by a preponderance
`
`of the evidence that claims 1-10, 12-13 and 15-18 of the ‘449 Patent are obvious.
`
`Finally, the IPR process violates the Constitution by extinguishing private
`
`property rights through a non-Article III forum without a jury. To the extent any
`
`claims of the ‘449 Patent are found invalid in this IPR, Patent Owner hereby
`
`challenges the constitutionality of the process of invalidation and reserves all rights
`
`related thereto.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONERS’ GROUNDS
`OF REJECTION
`
`
`A. MURATA, SCHMIDT, MS-DOS ENCYCLOPEDIA AND
`BERETTA DO NOT RENDER CLAIMS 1-10, 12-13 AND 15-18
`OBVIOUS
`
`1.
`
`OVERVIEW OF MURATA
`
`
`
`
`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
`
`
`
`10
`
`
`
`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.
`
`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 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,
`
`
`
`11
`
`
`
`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).
`
`2.
`
`OVERVIEW OF SCHMIDT
`
`
`
`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.
`
`3.
`
`OVERVIEW OF MS-DOS ENCYCLOPEDIA
`
`
`As delineated in the Institution Decision, “[t]he MS-DOS Encyclopedia is a
`
`book describing both the development and programming of MS-DOS.” Paper 8
`
`(Institution Decision) at 12; Exhibit 1010 (MS-DOS Encyclopedia) at Preface. “It
`
`describes MS-DOS and Microsoft Windows 95 as ‘the most widely used computer
`
`operating system in the world.’” Paper 8 (Institution Decision) at 12-13; Exhibit
`
`1010 (MS-DOS Encyclopedia) at Preface. “According to MS-DOS Encyclopedia,
`
`
`
`12
`
`
`
`MS-DOS supported a large number of different peripherals.” Paper 8 (Institution
`
`Decision) at 13; Exhibit 1010 (MS-DOS Encyclopedia) at 59.
`
`4. MURATA, SCHMIDT, MS-DOS ENCYCLOPEDIA AND
`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” LIMITATION OF INDEPENDENT CLAIM 1
`OR THE CORRESPONDING LIMITATIONS OF
`INDEPENDENT CLAIMS 17 AND 18 OF THE ‘449
`PATENT
`
`
`Murata and Schmidt 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 independent claim 1 of the ‘449
`
`
`
`13
`
`
`
`Patent. Exhibit 2005 (Gafford Declaration) at ¶ 44. In addition, Murata and
`
`Schmidt do not disclose the corresponding limitations of independent claims 17 and
`
`18 of the ‘449 Patent that require “where the interface device is configured using
`
`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 at the
`
`multi-purpose interface of the host device, sends a signal, regardless of the type of
`
`the data transmit/receive device attached to the second connecting device of the
`
`interface device, to the host device which signals to the host device that it is a
`
`storage device customary in a host device, whereupon the host device
`
`communicates with the interface device by means of the specific driver for the
`
`multi-purpose interface” and “regardless of the type of the data transmit/receive
`
`device attached to the second connecting device of the interface device, responding
`
`to the inquiry from the host device by the interface device in such a way that it is a
`
`storage device customary in a host device, whereupon the host device
`
`communicates with the interface device by means of the specific driver for the
`
`multi-purpose interface” respectively.1 Exhibit 2005 (Gafford Declaration) at ¶¶
`
`54-57.
`
`
`1 Neither the Petitioners in the Petition nor the Board in the Institution Decision
`applied MS-DOS Encyclopedia or Beretta to these claim limitations. Consequently,
`no analysis of these references is necessary herein.
`
`
`
`14
`
`
`
`Murata 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 at the
`
`multi-purpose interface of the host device, sends a signal, regardless of the type of
`
`the data transmit/receive device attached to the second connecting device of the
`
`interface device, to the host device which signals to the host device that it is a storage
`
`device customary in a host device” portion of claim 1 and the corresponding portions
`
`of claims 17 and 18 because Murata does not disclose responding to an inquiry from
`
`the workstation by sending a signal that the scanner is a storage device customary in
`
`a host device, and there is no teaching in Schmidt of a device sending a signal
`
`identifying itself as something other than what it actually is. Exhibit 2005 (Gafford
`
`Declaration) at ¶ 45.
`
`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
`
`
`
`15
`
`
`
`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). Exhibit 2005 (Gafford Declaration) at ¶ 46.
`
`As described above, Murata requires a user to first set up a file system,
`
`including a device file and device driver, using UNIX commands “mkfs” or “newfs”
`
`in the workstation before the workstation can mount the scanner and access files.
`
`These commands are operating system commands, and have to be entered by the
`
`user or be embedded in an application program running on a workstation to which
`
`the Murata scanner is connected. The commands require parameters to be given,
`
`including at least mkfs i-node device_name. This means that, for example, the user
`
`has to enter the node at which the file system is to be made and the device name
`
`(associated with the device file and driver in the system). Exhibit 2005 (Gafford
`
`Declaration) at ¶ 47.
`
`Before the “mkfs” and “newfs” commands can be issued, however, a POSITA
`
`would have known that a user would be required to issue the “mkdev” command in
`
`the workstation. The “mkdev” command identifies a device to the workstation and
`
`tells the workstation what the device is and what driver to use. Exhibit 2006 (mkdev
`
`Command Definition). As a result, nothing in the process disclosed by Murata
`
`
`
`16
`
`
`
`suggests that the Murata device sends a signal that it is a storage device customary
`
`in a host device when receiving an inquiry from a host device. Instead, this
`
`identification of a device and driver is typically done manually at the workstation.
`
`Exhibit 2005 (Gafford Declaration) at ¶ 48.
`
`This same argument related to the Murata reference not disclosing automatic
`
`signaling identifying the scanner as an input/output device or storage device
`
`customary in a host computer was previously made by the Applicant during
`
`prosecution of United States Patent No. 9,189,437 (“’437 Patent”), a patent sharing
`
`a specification with the ‘449 Patent, during original prosecution of the ‘437 Patent.
`
`Applicant explicitly brought Murata to the Examiner’s attention via a preliminary
`
`amendment. Exhibit 2007 (August 24, 2006 Preliminary Amendment) at 8. The
`
`Applicant described Murata as disclosing an image scanner that emulates the file
`
`system of UNIX as if it were a hard disc. Id. The Applicant distinguished Murata,
`
`explaining that such UNIX systems affirmatively require user intervention, in
`
`contrast to the claimed inventions, which:
`
`generally require that the ADGPD send a response signal
`that allows a PC to automatically and without user
`intervention recognize that it can communicate with the
`ADGPD as if it were a commercially available mass
`storage device even though it is not a commercially
`available mass storage device.
`Id. at 11 (emphasis in original). The Applicant added:
`
`As one example [Murata] does not teach or suggest, for
`
`
`
`17
`
`
`
`example, the above-noted “automatic recognition” feature
`because, for example, the system disclosed therein is
`UNIX based. As readily apparent to one of ordinary skill
`in the relevant art, such UNIX based systems affirmatively
`require user intervention in order to operate and use the
`scanner disclosed in [Murata].
`
`Id. at 12. The Applicant also discussed Murata during the prosecution of the
`
`‘437 Patent two subsequent times in supplemental preliminary amendments on July
`
`17, 2007 and January 2, 2008, again pointing out the differences between Murata
`
`and the claims at issue. Exhibit 2008 (July 17, 2007 Preliminary Amendment) at
`
`10 (“The scanner related references (e.g., [Murata]) also require user intervention
`
`of some sort to allow scanned images to be transferred over to a personal
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