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 IPR2017-00443
`United States Patent No. 6,470,399
`_______________
`___________________________________
`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.
`IPR2017-00443
`EXH. 2006
`
`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 IPR2017-00443
`United States Patent No. 6,470,399
`_______________
`___________________________________
`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.
`IPR2017-00443
`EXH. 2006
`
`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 ‘399 PATENT ............................................ 13
`VII. CLAIM CONSTRUCTION ............................................................. 16
`VIII. OVERVIEW OF MURATA ............................................................ 18
`IX. OVERVIEW OF SCHMIDT ........................................................... 19
`X. VALIDITY OF THE ‘399 PATENT OVER MURATA,
`SCHMIDT, LIN, BERETTA AND THE MICROSOFT PRESS
`COMPUTER DICTIONARY .................................................................... 20
`
`
`
`
`
`
`
`
`
`
`
`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 1-8, 10-11 and 13-15 of United States Patent No. 6,470,399 (“‘399 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 ‘399 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
`
`
`
`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 ‘399 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 ‘399 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 ‘399 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 IPR2017-00443 (including relevant
`
`exhibits), the Patent Owner Preliminary Response, the Decision of Institution related
`
`to IPR2017-00443, the ‘399 patent, the ‘399 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”), U.S.
`
`Patent No. 6,522,432 (“Lin”), U.S. Patent No. 5,850,484 (“Beretta”), The Microsoft
`
`Press Computer Dictionary (2nd ed. 1994) (“Microsoft Press Computer Dictionary”)
`
`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
`
`
`
`
`6
`
`8
`
`
`
`work both as an engineer and a consultant.
`
`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 ‘399 patent. As stated
`
`in the ‘399 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 (“’399 Patent”) at 1:9-13.
`
`18. Petitioners assert that “[a] person of ordinary skill in the art of the ‘399
`
`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 2
`
`(Petition) at 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. 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 7. Alternatively, a POSITA may
`
`have five or more years of experience in these technologies, without a bachelor’s
`
`
`
`
`7
`
`9
`
`
`
`degree. Id.
`
`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 7 (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 ‘399 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.
`
`
`
`
`8
`
`10
`
`
`
`22. The patent claims describe the invention made by the inventor and
`
`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,
`
`
`
`
`9
`
`11
`
`
`
`combining the right references in the right way so as to achieve the result of the
`
`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
`
`
`
`
`10
`
`12
`
`
`
`invention as found in the patent specification, drawings and claims.
`
`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
`
`
`
`
`11
`
`13
`
`
`
`by the applicant or would no longer achieve the intended purpose(s) of the references
`
`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 ‘399 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
`
`
`
`
`12
`
`14
`
`
`
`determined on a claim-by-claim basis by comparing the claim to the prior art.
`
`VI. Overview of the ‘399 Patent
`33. The ’399 patent involves a unique method for achieving high data
`
`transfer rates for data acquisition systems (e.g., still pictures, videos, voice
`
`recordings) to a general-purpose computer, without requiring a user to purchase,
`
`install, and/or run specialized software for each system. Exhibit 1001 (’399 patent)
`
`at 4:23-27. At the time of the invention, there were an increasing number and variety
`
`of data acquisition systems with the ability to capture high volumes of information.
`
`Id. at 1:34-52. As such, there was an increasing demand to transfer that information
`
`to commercially-available, general purpose computers. Id. at 1:20-32. But at that
`
`time—and today—performing that data transfer operation required either loading
`
`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or specifically
`
`matching interface devices for a data acquisition system to a host system that may
`
`maximize data transfer rates but lacks the flexibility to operate with different
`
`devices. Id. at 1:17-3:21.
`
`34. The ‘399 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 2:17-36 and 3:24-27. The
`
`
`
`
`13
`
`15
`
`
`
`resulting invention would allow a data acquisition system to identify itself as a type
`
`of common device so as to leverage the inherent capabilities of general-purpose,
`
`commercially-available computers. Id. at 5:6-20. Accordingly, users could avoid
`
`loading specific software; improve data transfer efficiency; save time, processing
`
`power, and memory space; and avoid the waste associated with purchasing
`
`specialized computers or loading specific software for each device. Id. at 3:24-27,
`
`8:23-9:58, 9:23-34, 10:6-12 and 12:23-41. The ’399 patent claims variations of this
`
`concept and provides a crucial, yet seemingly simple, method and apparatus for a
`
`high data rate, device-independent information transfer. Id. at 3:24-27.
`
`35. The interface device disclosed in the ‘399 patent can leverage “drivers
`
`for input/output device[s] customary in a host device which reside in the BIOS
`
`system of the host device . . . .” Id. at 11:9-15; see also id. at 5:13-17 (“The interface
`
`device according to the present invention therefore no longer communicates with the
`
`host device or computer by means of a specially designed driver but by means of a
`
`program which is present in the BIOS system . . .”), 6:2-9 (describing the use of
`
`“usual BIOS routines” to issue INQUIRY instructions to the interface), and 8:43-50
`
`(describing use of BIOS routines). Similarly, the written description describes also
`
`using drivers included in the operating system. Id. at 5:64-6:3 (“Communication
`
`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.,
`
`
`
`
`14
`
`16
`
`
`
`DOS®, Windows®, Unix®).”). Alternatively, if the required specific driver or
`
`drivers for a multi-purpose interface (such as a SCSI interface) is already present in
`
`a host device, such drivers could be used with the ‘399 patent’s interface device
`
`instead of, or in addition to, customary drivers which reside in the BIOS. Id. at 11:9-
`
`12. Accordingly, the ’399 patent contemplated a universal interface device that
`
`could operate independent of the manufacturer of the computer. Id. at 12:23-40.
`
`Indeed, the preferred embodiment discloses that the interface device includes three
`
`different connectors, a 50 pin SCSI connector 1240, a 25 pin D-shell connector 1280,
`
`and a 25 pin connector 1282, to allow the ‘399 Patent’s interface device to connect
`
`to a variety of different standard interfaces that could be present in a host computer.
`
`Id. at 9:30-47 and FIG. 2.
`
`36. As is apparent from the title of the ’399 patent, the interface device
`
`disclosed is capable of acquiring and processing analog data. As shown in FIG. 2
`
`reproduced below, the ’399 patent discloses that the interface device 10 has an
`
`analog input at connection 16 for receiving analog data from a data transmit/receive
`
`device on a plurality of analog input channels 1505 and simultaneously digitizing
`
`the received analog data using, inter alia, a sample and hold amplifier 1515 and an
`
`analog to digital converter 1530 that converts analog data received from the plurality
`
`of channels 1505 into digital data that may then be processed by the processor 1300.
`
`Id. at 9:49-64 and 10:27-41. “Each sample/hold circuit is connected to a
`
`
`
`
`15
`
`17
`
`
`
`corresponding input of an 8-channel multiplexer 1520 which feeds its output signals
`
`via a programmable amplifier 1525 into an analog/digital converter (ADC).” Id. at
`
`9:55-58. This arrangement of sample/hold circuits permits a single ADC to be used
`
`even when multiple analog data channels are being utilized. Id. at 9:49-64.
`
`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
`
`
`
`
`
`
`16
`
`18
`
`
`
`IPR proceedings.
`
`38.
`
`It is my understanding that the Board ordinarily construes terms based
`
`on their broadest reasonable construction in view of the specification. However,
`
`because the ‘399 patent will likely expire prior to the Final Written Decision in the
`
`present proceeding, it is my further understanding that the Board will construe the
`
`‘399 patent claims based on their ordinary and customary meaning in accordance
`
`with Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Paper
`
`7 (Institution Decision) at 6.
`
`39.
`
`In the Institution Decision, the Board adopted several claim limitation
`
`constructions from a previous litigation involving the ‘399 patent that was also
`
`appealed to the Federal Circuit. “Interface Device” was construed such that it is not
`
`limited to “a device that is physically separate and apart from, and not permanently
`
`attached to, a data device (or a host computer).” Id. at 7. It was further determined
`
`that a “second connecting device” does not require “a physical plug, socket, or other
`
`structure that permits a user to readily attach and detach something else.” Id. at 8.
`
`A “data transmit/receive device” was determined “need not be capable of
`
`communicating ‘when connected to the host device by the interface device.’” Id.
`
`“Virtual files” were determined to be “not limited to a file ‘whose content is stored
`
`off the interface device, though it includes such files.’” Id. Finally, an “input/output
`
`device customary in a host device” was construed not to be limited to a device
`
`
`
`
`17
`
`19
`
`
`
`“normally present within the chassis of a computer.” Id.
`
`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 ‘399
`
`patent. A copy of this claim construction order has already been included in the
`
`record as Exhibit 2004.
`
`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.
`
`
`
`
`18
`
`20
`
`
`
`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
`
`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 Nation[al]
`
`Standards Institute) standards.” Paper 7 (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
`
`
`
`
`19
`
`21
`
`
`
`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 ‘399 Patent Over Murata, Schmidt, Lin, Beretta and The
`Microsoft Press Computer Dictionary
`In my opinion, Murata alone, or in combination with Schmidt, Lin,
`44.
`
`Beretta and/or The Microsoft Press Computer Dictionary, fail(s) to disclose claim 1
`
`of the ‘399 patent. Murata and/or Schmidt and/or Lin and/or Beretta and/or The
`
`Microsoft Press Computer Dictionary do not disclose the “wherein the first
`
`command interpreter is configured in such a way that the command interpreter, when
`
`receiving an inquiry from the host device as to a type of a device attached to the
`
`multi-purpose interface of the host device, sends a signal, regardless of the type of
`
`the data transmit/receive device attached to the second connecting device of the
`
`interface device, to the host device which signals to the host device that it is an
`
`input/output device customary in a host device, whereupon the host device
`
`communicates with the interface device by means of the driver for the input/output
`
`device customary in a host device” limitation of claim 1 of the ‘399 patent. In fact,
`
`Petitioner and Dr. Almeroth only rely on Murata and Schmidt for disclosing this
`
`limitation and do not apply Lin, Beretta or The Microsoft Press Computer Dictionary
`
`to this limitation. Paper 2 (Petition) at 25-34; Exhibit 1003 (Zadok Declaration) at
`
`¶¶ 80-95.
`
`
`
`
`20
`
`22
`
`
`
`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 a type of
`
`a device attached to the multi-purpose interface of the host device, sends a signal,
`
`regardless of the type of the data transmit/receive device attached to the second
`
`connecting device of the interface device, to the host device which signals to the host
`
`device that it is an input/output device customary in a host device” portion of this
`
`limitation because Murata does not disclose responding to an inquiry from the
`
`workstation by sending a signal that it is an input/output device customary in a host
`
`device and there is no teaching in Schmidt of a device identifying itself as something
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
