IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFOIUE THE PATENT TRIAL AND APPEAL BOARD
`
`Huawei Device Co., Ltd., LG Electronics, Inc., and ZTE (USA) Inc.
`Petitioner,
`
`Papst Licensing GmbH & Co. KG
`Patent Owner.
`
`Case No. To Be Assigned
`Patent No. 6,470,399 B1
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`6,470,399 B1 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,4 70,399 B]
`
`LIST on EXHIBITS
`
`FEXhibit
`
`7 Description
`
`Ex. 1001
`
`U.S. Patent No. 6,470,399 B1 to Tasler
`
`EX. 1002
`
`File History for U.S. Patent No. 6,470,399
`
`EX. 1003
`
`Declaration of Dr. Kevin Almeroth
`
`Ex. 1004
`
`Curriculum Vitae of Kevin C. Almeroth
`
`EX. 1005
`
`U.S. Patent No. 5,508,821 to Murata
`
`1
`
`Ex. 1006
`
`Friedhelm Schmidt, The SCSI Bus and [DE Interface (1995)
`
`EX. 1007
`
`The Microsoft Press® Computer Dictionary (2nd ed. 1994)
`
`Ex. 1008
`
`U.S. Patent No. 6,522,432 to Lin
`
`EX. 1009
`
`L,
`EX. 1010
`
`EX. 1011
`
`EX. 1012
`
`EX. 1013
`
`Papst’s Opening Claim Constr. Brief and Appendix 8 of Papst’s
`Opening Claim Constr. Brief, Papst Licensing GmbH & Co., KG
`12. Apple, Inc., et al., No. 6:15—cV—01095—RWS (E.D. Tex. Nov. 22,
`201g)
`_j
`Papst’s Opening Claim Constr. Brief and Decl. of Robert
`Zeidman, In re Papst Licensing Dig. Camera Pat. Litig., MDL
`No. 1880, No. 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 Sys.
`Interface—2, ANSI X3.131—1994
`_, (1994) (“SCSI Specification”)
`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255,
`1265 (Fed. Cir. 2015
`The Microsoft Press Computer Dictionary (2nd ed. 1994)
`
`EX. 1014
`
`U.S. Patent No. 5,850,484 to Beretta et al.
`
`EX. 1015
`
`Intentionally left blank
`
`Ex. 1016
`
`File History for U.S. Patent Application No. 08/411,369
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`Exhibit
`
`Description
`
`EX. 1017
`
`EX. 1018
`
`Comparison of excerpts of File History for U.S. Patent
`Application No. 08/411,369 (Ex. 1016) and U.S. Patent No.
`L5,850,484 to Beretta et al. (Ex. 1014)
`U.S. Patent No. 4,589,063 to Shah et al.
`
`,1
`
`EX. 1019
`
`U.S. Patent No. 5,038,320 to Heath et al.
`
`i EX. 1020
`
`U.S. Patent No. 5,787,246 to Lichtman et al.
`
`EX. 1021
`
`Ex. 1022
`L
`EX. 1023
`
`Llntentionally lefi blank
`
`Papst’s Brief, In re PapstLicensing Dig. Camera Pat. Litig., No.
`2014-1110 (Fed. Cir. February 20, 2014)
`Rufus P. Turner et al., The Illustrated Dictionary ofElectronics
`(1991)
`
`

`
`I.
`
`II.
`
`III.
`
`IV.
`
`Petition for Inter Partes Review of U.S. Patent No. 6,4 70,399 B1
`
`TABLE on CONTENTS
`
`Introduction ................................................................................................... .. 1
`
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ................................................. .. 3
`
`A.
`
`B.
`
`Real Parties—In-Interest (37 C.F.R. § 42.8(b)(1)) ............................... .. 3
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................... .. 4
`
`1.
`
`2.
`
`3.
`
`Related Litigation ..................................................................... .. 4
`
`Related Inter Partes Review Petitions ..................................... .. 5
`
`Counsel and Service Information (37 C.F.R. § 42.8(b)(3) and
`(b)(4)) ........................................................................................ .. 6
`
`Fees (37 C.F.R. § 42.103) ............................................................................. .. 7
`
`Requirements for Inter Partes Review Under 37 C.F.R. § 42.104 .............. .. 7
`
`A.
`
`B.
`
`C.
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) ................................... .. 7
`
`(37 C.F.R.
`for Which Review is Requested
`Claims
`§ 42.104(b)(1)) .................................................................................... .. 7
`
`Statutory Grounds of Challenge and Prior Art Relied Upon for
`Each Ground (37 C.F.R. § 42.1()4(b)(2)) ........................................... .. 7
`
`D.
`
`Person of Ordinary Skill in the Art ..................................................... .. 9
`
`(37 C.F.R.
`the Construed Claims
`of
`Unpatentability
`§ 42.104(b)(4)) .................................................................................... .. 9
`
`F.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ............................. .. 10
`
`The ’399 Patent ........................................................................................... .. 10
`
`A.
`
`Overview of the ’399 Patent ............................................................. .. 10
`
`B.
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ............................... .. 11
`
`1.
`
`“data transmit/receive device” (claims 1, 3, 6, 8, ll, 14) ...... .. 12
`
`—iii-
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`“the driver for the input/output device customary in a host
`device” (claim 1) .................................................................... .. 12
`
`“the usual driver for the input/output device” (claim 14) ...... .. 13
`
`“an input/output device customary in a host device” (claims 1,
`11, 14) ..................................................................................... .. 13
`
`“interface device” (claims 1, ll, 14) ...................................... .. 13
`
`“virtual files” (claims 7, 8, and 10) ........................................ .. 13
`
`VI.
`
`Summary of the References Applied in This Petition ................................ .. 14
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`U.S. Patent No. 5,508,821 to Murata (Ex. 1005) ............................. .. 14
`
`Schmidt, The SCSI Bus and [DE Interface (Ex. 1006) ..................... .. 15
`
`U.S. Patent No. 6,522,532 to Lin (EX. 1008) ................................... .. 16
`
`U.S. Patent No. 5,850,484 to Beretta et al. (Ex. 1014) ..................... .. 16
`
`The Microsoft Press® Computer Dictionary (Ex. 1013) .................. .. 16
`
`VII. Detailed Explanation of the Grounds .......................................................... .. 17
`
`A.
`
`Ground 1: Claims 1-4, 6-8, 11, and 13-15 are Unpatentable
`Under 35 U.S.C. §103(a) Over the Combination of Murata,
`Schmidt and Lin ................................................................................ .. 17
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Rationale for Combining Murata, Schmidt and Lin ............... .. 17
`
`Claim 1 ................................................................................... .. 19
`
`Claim 2 ................................................................................... .. 37
`
`Claim 3 ................................................................................... .. 38
`
`Claim 4 ................................................................................... .. 38
`
`Claim 6 ................................................................................... .. 39
`
`Claim 7 ................................................................................... .. 40
`
`Claim 8 ................................................................................... .. 43
`
`-iV_
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,4 70,399 B]
`
`9.
`
`Claim 11 ................................................................................. .. 44
`
`10.
`
`Claim 13 ................................................................................. .. 48
`
`11.
`
`Claim 14 ................................................................................. .. 49
`
`12.
`
`Claim 15 ................................................................................. ..59
`
`B.
`
`Ground 11: Claim 5 is Unpatentable Under 35 U.S.C. § 103(a)
`Over
`the Combination of Murata, Schmidt, Lin and The
`Microsoft Press® Computer Dictionary ............................................ .. 60
`
`1.
`
`Rationale for Combining Murata, Schmidt, Lin and The
`Microsoft Press® Computer Dictionary .................................. .. 60
`
`2.
`
`Claim5 ................................................................................... ..60
`
`C.
`
`Ground III: Claim 10 is Unpatentable Under 35 U.S.C. § 103(a)
`Over the Combination of Murata, Schmidt, Lin and Beretta ........... .. 62
`
`1.
`
`2.
`
`Rationale for Combining Murata, Schmidt, Lin and Beretta... 62
`
`Claim 10 ................................................................................. .. 64
`
`VIII. Conclusion ................................................................................................... .. 66
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B]
`
`I.
`
`INTRODUCTION
`
`Desktop and laptop computers that are “PCS” are direct descendants of the
`
`original IBM PC, first released in 1981. The PC owes its longevity, in part, to its
`
`open architecture. A PC manufactured by Dell may have a CPU manufactured by
`
`Intel, 21 graphics card manufactured by Nvidia, a monitor manufactured by Sony, a
`
`keyboard and mouse manufactured by Logitech, and a printer manufactured by HP.
`
`The down—side to the open architecture is the PC must be able to work with a
`
`broad array of different peripherals. A PC manufacturer cannot know, in advance,
`
`which make and model of printer, scanner, camera, speaker, or microphone the
`
`customer may choose
`
`to purchase
`
`and install.
`
`Traditionally, peripheral
`
`manufacturers provided specialized software———called
`
`“device drivers”——that
`
`enabled the PC to communicate with the peripheral. A drawback to this approach
`
`is that each peripheral required its own device driver, and different device drivers
`
`were often incompatible with other models. For example, a printer connected to an
`
`existing computer may no longer be compatible with a new computer.
`
`To address this problem, computer companies have proposed “plug—and—
`
`play” systems that allow a peripheral to communicate with a PC without the need
`
`to install specialized device drivers for each peripheral. See U.S. Patent Nos.
`
`4,589,063 (Ex. 1018), 5,038,320 (EX. 1019), and 5,787,246 (Ex. 1020). The ’399
`
`Patent describes and claims one such system.
`
`-1-
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,4 70,399 B1
`
`The ’399 Patent describes an “interface device”—which might be built into
`
`the peripheral itself—-—that handles all communications between the peripheral and
`
`the computer. The interface device pretends to be a standard peripheral——one for
`
`which the computer already has a device driver. For example, by the late 1990s,
`
`when the application leading the ’399 Patent was filed, every desktop and laptop
`
`computer had a hard disk. Ex. 1001, at 529-13. There were well—established
`
`protocols for identifying, configuring, and controlling hard disks, and every
`
`computer had a pre—insta1led device driver for communicating with a hard disk.
`
`The interface device of the ’399 Patent exploits these protocols and pretends to be
`
`a hard disk. EX. 1001, at 5:6—9, 5:67—6:3. The peripheral——regardless of whether it
`
`is a scanner, a printer, a webcam, or any other type of device———appears to the
`
`computer to be a hard disk. The peripheral is therefore able to communicate with
`
`the computer using the pre—eXisting hard disk device driver, eliminating the need
`
`for a specialized device driver.
`
`This idea was well~known before the ’399 Patent, and the interface device
`
`described and claimed in the ’399 Patent was no leap forward in the art. US.
`
`Patent No. 5,508,821 Murata (“Murata”) (EX. 1005) describes a scanner having an
`
`“interface means
`
`for communicating with a computer and a “file system
`
`9)
`
`emulation means” for simulating a hard disk. Murata, at 1:64-67. Murata’s
`
`scanner “looks like” a hard disk to the computer.
`
`Id. at 4:20-23. The scanner
`
`-2-
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,4 70,399 B]
`
`communicates with the computer “using the device driver for existing hard discs,”
`
`so the scanner does not need its own device driver. Id. at 238-12.
`
`It also was known to configure an interface device to send a signal to the
`
`host device indicating that it is a storage device customary in a host device, so the
`
`host device communicates with the interface device by using the driver for the
`
`storage device customary in a host device. Murata, at 6:33-39, 7:54-55; see also
`
`1:9—12, 4:11-15; Ex. 1006 (“Schmidt”), at 122, 133 (Table 12.1), 137 (Table 12.8),
`
`138 (Table 12.10, showing the INQUIRY command 1211 as Type “M”), 139-40.
`
`Additionally, arranging an interface device for simulating a virtual file system to
`
`the host was also known. Murata, at 6:17-19, 7:31-35.
`
`This Petition demonstrates that claims 1-8, 10-11, and 13-15 of the ’399
`
`Patent are unpatentable under pre—AIA 35 U.S.C. §103(a), and that there is a
`
`reasonable likelihood that Petitioner (collectively Huawei Device Co., Ltd., LG
`
`Electronics, Inc., and ZTE (USA) Inc.) will prevail based on prior art the U.S.
`
`Patent and Trademark Office (“PTO”) did not consider during prosecution.
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`
`A.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real—parties-in interest are: Huawei Device USA Inc., Huawei Device
`
`Co., Ltd., Huawei Device (Dongguan) Co., Ltd., Huawei Technologies Co., Ltd.,
`
`Huawei Technologies USA, Inc., LG Electronics, Inc., LG Electronics U.S.A.,
`
`-3-
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`Inc., LG Electronics Mobilecomm U.S.A.,
`
`Inc., ZTE (USA)
`
`Inc, and ZTE
`
`Corporation.
`
`B.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`1.
`
`Related Litigation
`
`Petitioner is aware of the following litigations involving the ’399 Patent in
`
`the Eastern District of Texas: 6—l5—cv—0lO95, 6-—15—cv—0l099, 6-15—cv—01100, 6-
`
`l5—cv——0l102, 6—15—cv—011ll, and 6-15-cv—01115.
`
`Petitioner is aware of the following litigations involving the ’399 Patent in
`
`the United States District Court for the District of Columbia: l—O9—cv—O0530, 1-08-
`
`cv—01433,
`
`l—O8—cv—01404, 1—O8—cv—Ol405, 1-08—cv—0l406,
`
`l—O8—cv—0l407,
`
`l-O8-
`
`cv—O0985, 1—O8—cv—00865, 1—07—cv—02086,
`
`l—07—cv—O2087, 1-07—cv—()2088, MDL
`
`1880, 1-07-Inc-00493, l—O7—cv—O1222, 1-07-cv—0ll18, and 1—O6—cv—O1751.
`
`Petitioner is aware of the following litigations involving the ’399 Patent in
`
`the Northern District of Illinois: 1-O8-cv—03627, 1—O8—cv—O3606, 1-08-cv—03609, 1-
`
`08-cv—03608, l—08—cv—O25lO, 1-08—cv—0l218 and l—O7—cv—0340l.
`
`Petitioner is aware of the following litigation involving the ’399 Patent in
`
`the Northern District of California: 5—08—cv—O1732.
`
`Petitioner is aware of the following litigation involving the ’399 Patent in
`
`the District of Delaware: l—07—cv—O0415.
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,4 70,399 B]
`
`2.
`
`Related Inter Partes Review Petitions
`
`Petitioner is aware of the following inter partes review Petitions for U.S.
`
`Patent No. 6,470,399: IPR2016—O1839, IPR2016—O1843, and IPR2016—O1864.
`
`Petitioner is aware of the following inter partes review Petitions for U.S.
`
`Patent No. 6,895,449: IPR2017-00415.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 8,504,746:
`
`IPR2016—O1200, IPR2016—O1206,
`
`lPR2016—
`
`01211,
`
`lPR2016—01213,
`
`IPR2016—O1223,
`
`IPR2016—O1224,
`
`IPR2016—01862,
`
`IPR2016-01863, and IPR2017—O0158.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 8,966,144: IPR2016-01199, IPR2016—O1202,
`
`IPR2016—
`
`01212,
`
`lPR2016~01214,
`
`lPR2016—O1216,
`
`lPR2016—01222,
`
`lPR2016—01225,
`
`IPR2016—01849, IPR2016—O1860, and IPR2017-00154.
`
`Petitioner is aware of the following inter partes review Petition filed for
`
`related U.S. Patent No. 9,189,437:
`
`IPR2016—01733, IPR2016—O1840, IPR2016-
`
`01841, IPR2016—O1842, IPRZO16-01844, and IPR2017—00156.
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`3.
`
`Counsel and Service Information (37 C.F.R. §42.8(b)(3)
`and (b)(4))
`
`Counsel
`
`Service Information
`
`Lead Counsel:
`
`Postal and hand delivery:
`
`David A. Garr (Reg. No. 74,932)
`
`Covington & Burling LLP
`
`dgarr@cov.com
`
`One CityCenter
`
`Backup Counsel:
`
`850 Tenth Street, NW
`
`Gregory S. Discher (Reg. No. 42,488)
`
`Washington, DC 20001
`
`gdischer@Cov.corn
`
`T: 202-662-6000
`
`Backup Counsel:
`
`F: 202-662-6291
`
`Postal and hand delivery:
`
`Herbert H. Finn (Reg. No. 38,139)
`
`Greenberg Traurig LLP
`
`finnh@gtlavv.com
`
`77 W. Wacker Dr.
`
`Jonathan E. Giroux (Reg. No. 66,639)
`
`Suite 3100
`
`girouxj@gtlaw.com
`
`Chicago, IL 60601
`
`Backup Counsel:
`
`Scott R. Miller (Reg. No. 32,276)
`
`srni1ler@sheppardrnullin.Com
`
`Darren Franklin (Reg. No. 51,701)
`
`dfranklin@sheppardmullin.com
`
`T: 312-456-8400
`
`F: 312-456-8435
`
`Postal and hand delivery:
`
`Sheppard Mullin Richter & Hampton
`LLP
`
`333 South Hope Street
`
`43“ Floor
`
`-5-
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`Counsel
`
`Service Information
`
`Los Angeles, CA 90071
`
`T: 213-620-1780
`
`F: 213-620-1398
`
`III.
`
`FEES (37 C.F.R. § 42.103)
`
`The PTO is authorized to charge $23,000 ($9,000 request fee and $14,000
`
`post—institution fees) to Deposit Account No. 50-0740. The PTO is also authorized
`
`to charge all fees due at any time during this proceeding to Deposit Account No.
`
`50-0740.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`
`§ 42.104
`
`A.
`
`Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that the ’399 Patent is available for inter partes review
`
`and Petitioner is not barred or estopped from requesting an inter partes review
`
`challenging the ’399 Patent on the grounds identified in the present Petition.
`
`B.
`
`Claims for Which Review is Requested (37 C.F.R. § 42.104(b)(1))
`
`Petitioner requests review of claims 1-8, 10-11, and 13-15 of the ’399 Patent
`
`(“challenged claims”).
`
`C.
`
`Statutory Grounds of Challenge and Prior Art Relied Upon for
`Each Ground (37 C.F.R. § 42.104(b)(2))
`
`The challenged claims should be cancelled as unpatentable based on the
`
`-7-
`
`

`
`Petition for Inter Partes Review of US. Patent’ No. 6,470,399 B1
`
`following grounds:
`
`Ground 1: Claims 1-4, 6-8, 11, and 13-15 are unpatentable under 35 U.S.C.
`
`§ 103(a) in View of U.S. Patent No. 5,508,821 to Murata (EX. 1005), Schmidt, The
`
`SCSI Bus and IDE Interface (Ex. 1006), and U.S. Patent No. 6,522,432 to Lin (Ex.
`
`1008).
`
`Ground 2: Claim 5 is unpatentable under 35 U.S.C. § 103(a) in View of
`
`Murata, Schmidt, Lin, and The Microsoft Press® Computer Dictionary (EX. 1013).
`
`Ground 3: Claim 10 is unpatentable under 35 U.S.C. § 103(a) in View of
`
`Murata, Schmidt, Lin, and U.S. Patent No. 5,850,484 to Beretta et al. (“Beretta”)
`
`(Ex. 1014).
`
`The ’399 Patent claims priority to German Patent Application DE 197 08
`
`755, filed March 4, 1997. For purposes of this proceeding, and without conceding
`
`the claims are in fact entitled to claim priority back to the alleged March 4, 1997
`
`priority date of the German Patent Application, Petitioner has assumed that the
`
`claims of the ’399 Patent are entitled to a priority date of no earlier than March 4,
`
`1997.
`
`Murata was issued on April 16, 1996, and is therefore prior art under at least
`
`35 U.S.C. §§ 102(a) and 102(e).
`
`Schmidt was published in 1995, and is therefore prior art under at least 35
`
`U.S.C. §§ 102(a) and 10203).
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B]
`
`Lin was filed on April 16, 1996,
`
`issued on February 18, 2003, and is
`
`therefore prior art under at least 35 U.S.C. § 102(e).
`
`Beretta is a U.S. Patent
`
`that claims priority under 35 U.S.C. §120 to
`
`Application No. 08/411,369 (Ex. 1016), filed on March 27, 1995.
`
`In Section VII.B
`
`below, Petitioner relies on Beretta, at 4:44-46, 4:56-61, 4:65-67, 5:39-63, 10:1—6,
`
`and 10:1—18. As shown in Ex. 1017,
`
`these disclosures are also disclosed in
`
`the ’369 Application. Accordingly, Beretta is prior art under 35 U.S.C. § 102(e).
`
`The Microsoft Press® Computer Dictionary was published in 1994, and is
`
`therefore prior under at least 35 U.S.C. § 102(b).
`
`D.
`
`Person of Ordinary Skill in the Art
`
`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, A POSITA would also
`
`have either a master’s degree, or at least two years of experience in the relevant
`
`field, eg, computer science, computer systems, or peripheral devices. Ex. 1003,
`
`1147.
`
`E.
`
`Unpatentability
`§ 42.104(b)(4))
`
`of
`
`the Construed
`
`Claims
`
`(37 C.F.R.
`
`Claims 1-8, 10-11, and 13-15 of the ’399 Patent are unpatentable under the
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`statutory ground(s) identified above, as explained in Section VII below.
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`Petition for Inter Parties Review of US. Patent No. 6,470,399 B]
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`F.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
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`The exhibit numbers of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support
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`the challenge, are
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`provided in Section VII, below. An Exhibit List with the exhibit numbers and a
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`brief description of each exhibit is set forth above.
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`V.
`
`THE ’399 PATENT
`
`A.
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`Overview of the ’399 Patent
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`The ’399 Patent generally describes an interface designed to facilitate the
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`transfer of data between a host computer and another device on which data can be
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`placed or from which data can be acquired. Ex. 1001, at Title and Abstract. While
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`the ’399 Patent admits such devices were known at the time of the invention, it
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`states they typically “require very sophisticated drivers” to be downloaded onto the
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`host computer, but such drivers “are prone to malfunction and .
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`.
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`.
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`limit data
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`transfer rates.” Id. at 1223-31.
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`The ’399 Patent describes that an “interface device” eliminates the need for
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`specialized device drivers. When the interface device of the invention is connected
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`to a host, it responds to the host’s request for identification by “simalat[ing] both
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`in terms of hardware and Software, the way in which a conventional input/output
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`device functions, preferably that of a hard disk drive,” for which the host system
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`already has a working driver. Id. at 5:7—9 (emphasis added). By responding in that
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`manner,
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`the interface device induces the host to treat
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`it—~and,
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`indirectly, data
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`devices on the other side of the interface device, no matter what type of devices
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`they are—like the device that is already familiar to the host. Thereafter, when the
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`host communicates with the interface device to request data from or control the
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`operation of the data device, the host uses its pre—installed device driver, and the
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`interface device translates the communications into a form understandable by the
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`connected data device. See id. at 4:23-5:32. The interface device of the ’399
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`Patent does not require a “specially designed driver” for the interface device be
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`loaded into a host computer. Id. at 5:15.
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`B.
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`Claim Construction (37 C.F.R. § 42.104(b)(3))
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`In an inter partes review, the Board construes claim terms in an unexpired
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`patent according to their broadest reasonable construction (“BRC”) in light of the
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`specification. 37 C.F.R. § 42.100(b). Under this standard, claim terms are given
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`their ordinary and accustomed meaning as would be understood by one of ordinary
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`skill in the art in the context of the entire disclosure. In re Trcmslogic Tec/1., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`For this proceeding, Petitioner believes the challenged claims should be
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`interpreted consistent with their ordinary and customary meaning within the
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`context of the ’399 Patent. Further context regarding the meaning of certain terms
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`is set forth below.1
`
`1.
`
`“data transmit/receive device” (claims 1, 3, 6, 8, 11, 14)
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`The broadest reasonable construction of this term encompasses “a device
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`capable of transmitting or receiving data.” This construction is consistent with the
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`specification, which discloses “a data transmit/receive device which is to receive
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`data from the host device or from which data is to be read, i.e. acquired, and
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`transferred to the host device.” Ex. 1001, at 5:56-60; EX. 1003, 1149.
`
`2.
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`“the driver for the input/output device customary in a host
`device” (claim 1)
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`For this proceeding, under the BRC standard, this term should be interpreted
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`to encompass (at a minimum) “the driver for the input/output device normally part
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`0 commercial] available com nter s stems,” as Patent Owner has
`P
`Y
`
`ro osed in
`P P
`
`litigation. EX. 1009, at 29; EX. 1003, ‘H50.
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`1 Petitioner reserves the right to propose different constructions in other
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`proceedings and in particular district court litigation, for which the narrower claim
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`construction standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
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`would apply.
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`3.
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`“the usual driver for the input/output device” (claim 14)
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`For this proceeding, under the BRC standard, this term should be interpreted
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`to encompass (at a minimum) “the set of software routines used to direct a data
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`input/output device normally part of commercially available computer systems,” as
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`Patent Owner has proposed in litigation. EX. 1009, at 29; Ex. 1003, 1151.
`
`4.
`
`“an input/output device customary in a host device” (claims
`1, 11, 14)
`
`For this proceeding, under the BRC standard, this term should be interpreted
`
`to encompass (at a minimum) “a data input/output device normally part of
`
`commercially available computer systems,” as Patent Owner has proposed in
`
`litigation. Ex. 1009, at 23; EX. 1003, 1152.
`
`5.
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`“interface device” (claims 1, 11, 14)
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`This term was previously considered by the Federal Circuit, which stated
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`that an interface device “is not limited to .
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`.
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`. a device that is physically separate
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`and apart
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`from, and not permanently attached to, a data device (or a host
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`computer).” EX. 1012, at 7; Ex. 1003, ‘I153. Under the BRC standard, this term
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`should be interpreted to encompass that construction.
`
`6.
`
`“virtual files” (claims 7, 8, and 10)
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`This term was previously considered by the Federal Circuit, which stated
`
`that virtual files are not limited to a file “whose content is stored ofi" the interface
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`device, though it includes such files.” Ex. 1012, at 11; EX. 1003, ‘|l54. Under the
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`BRC standard, this term should be interpreted to encompass that construction.
`
`VI.
`
`SUMMARY OF THE REFERENCES APPLIED IN THIS PETITION
`
`A.
`
`U.S. Patent No. 5,508,821 to Murata (Ex. 1005)
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`Murata describes several types of computer peripherals—-including an image
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`scanner—-—each of which are able to communicate with a computer without the need
`
`79
`for “any new device driver. Murata, at 1:58-61. The Murata devices connect to
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`the computer through a small computer system interface (SCSI) bus.
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`Id. at 1:17-
`
`37. SCSI is a multi—purpose interface that can be used to connect a variety of
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`different
`
`types of peripherals to a computer. As Murata explains, SCSI “is
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`standardized as an interface means for carrying out high-speed data transfer.
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`Through the standardization, the SCSI is in wide practical use today as an interface
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`for various computers.” Murata, at 1:18-21.
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`Peripherals connected through a SCSI interface generally require a device
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`driver to be installed on the host computer.
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`Id. at 1:32-37. At the time, most
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`computers did not include a device driver for a scanner.
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`Id. at 1:38-41 (“Because
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`image scanners .
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`.
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`. are not standardized in kind of parameters which can be set or
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`in functions, the device driver therefor is not generally contained in an operating
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`system (OS) of the computer. Accordingly, it is necessary to prepare the device
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`driver for the image scanner .
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`.
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`. connected to the host computer.’’). The scanner in
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`Murata, however, does not require a specialized device driver.
`
`The scanner
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`includes a “file system emulation means for emulating a file system contained in
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`the external host computer.” Id. at 1:65-67. The scanner acts “as if it were a hard
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`disc.” Id. at 4:21. “Accordingly, the image scanner .
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`.
`
`. looks like the hard disc
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`from the [computer] and can be handled as the hard disc.” Id. at 4:21-23.
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`In
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`particular,
`
`the scanner is able to Communicate with the computer using the
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`computer’s customary hard disk device driver. Id. at 2:8—12.
`
`B.
`
`Schmidt, The SCSI Bus and IDE Interface (EX. 1006)
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`Schmidt provides details of the SCSI interface. As of 1995, “[a]lmost all
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`modern computers including PCs, workstations and mainframes are equipped with
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`a SCSI interface.” Schmidt, at V. Figure 9.1 of Schmidt (below) illustrates “[a]
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`simple SCSI configuration” where a host adapter sends SCSI commands over a
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`SCSI bus to a disk drive. Id. at 80.
`
`
`
`
`
`mitiator
`
`
`
`command
`
`SCSI bus
`
`Host
`adapter
`
`SCSI ID 7
`
`
`
`“ “EM”
`I
`
`Figure 9.1 A simple SCSI configutetion.
`
`SCSI defines a number of device classes, such as disk drives, as shown in
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B]
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`Table 12.1. Id. at 132-33. One of the mandatory commands supported by a SCSI
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`device is an INQUIRY command that “requests that
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`information regarding
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`parameters of the target and its attached peripheral device(s) be sent
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`to the
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`initiator.” Id. at 88.
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`In response to an INQUIRY command, a device provides,
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`among other parameters, its device class (e.g. disk drive class) “that are returned
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`from an INQUIRY command.” Id. at 132; see also id. at 133 (Table 12.1).
`
`C.
`
`U.S. Patent No. 6,522,532 to Lin (Ex. 1008)
`
`Lin discloses a signal compensation circuit for use with an image scanner.
`
`Lin, at Title and Abstract. The compensation circuit 24 includes a signal amplifier
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`30 for amplifying the image signal and brightness signal from the line image
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`sensor 22 to an appropriate voltage level, an A/D (aiialog—to-digital) converter 32
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`for digitizing the amplified image signal according to an adaptable reference
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`voltage, and a sampling circuit 34 for sampling the brightness signal and
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`generating a sample voltage 20. Id. at 3:14-24.
`
`D.
`
`U.S. Patent No. 5,850,484 to Beretta et 211. (EX. 1014)
`
`Beretta discloses implementing an image compression engine in software as
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`an executable file. Beretta, at 10:1-6.
`
`E.
`
`The Microsoft Press® Computer Dictionary (Ex. 1013)
`
`The Microsoft Press® Computer Dictionary discloses that a digital signal
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`processor is an integrated circuit that is designed for high speed data manipulation
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`and used in image manipulation and other data acquisition and control
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`applications. EX. 1013, at 145.
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`VII. DETAILED EXPLANATION OF THE GROUNDS
`
`As set forth herein and in the Declaration of Dr. Almeroth (Ex. 1003), the
`
`concepts claimed in the ’399 Patent were neither new nor non—obvious. Each
`
`element of the challenged claims is disclosed in the prior art, and the references
`
`cited in Grounds I-111 render each of the challenged claims obvious.
`
`The
`
`combination of prior art in Grounds I—III was not considered by the Examiner.
`
`In
`
`addition,
`
`the Declaration of Dr. Almeroth was also not before the Examiner.
`
`Accordingly, none of Grounds I-111 present the same or substantially the same
`
`prior art or arguments as were previously presented to the Office.
`
`35 U.S.C.
`
`§ 325(d).
`
`A.
`
`Ground 1: Claims 1-4, 6-8, 11, and 13-15 are Unpatentable Under
`35 U.S.C. § 103(a) Over the Combination of Murata, Schmidt and
`Lin
`
`1.
`
`Rationale for Combining Murata, Schmidt and Lin
`
`Murata discloses a scanner connected to a host computer via a SCSI bus.
`
`Murata, at Abstract. While Murata describes its improvement over the prior art as
`
`allowing the “control of the apparatus or the transfer of image data [to] be carried
`
`out using the device driver for existing hard discs” (id. at 2:10-12), Murata does
`
`not disclose the details of the recognition as a hard disk. Schmidt provides a
`
`detailed discussion of the device recognition process. A POSITA would have had
`
`reason to combine Murata with Schmidt. Ex. 1003, 1l55.
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`Murata discloses that the scanner connects to the workstation via a SCSI bus.
`
`Murata, at Figure 3. A POSITA would have looked to a reference, like Schmidt, to
`
`provide details of the SCSI communications between a host computer and a
`
`peripheral device that involve the peripheral device identifying its device Class and
`
`type to the host computer. Ex. 1003, ‘N56. A “computer system is connected to the
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`SCSI bus through a host adapter.” Schmidt, at 79. Accordingly, a POSITA would
`
`appreciate that the teachings of Schmidt could be implemented through the SCSI
`
`controller and on the SCSI bus of Murata, and that Schmidt provides the
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`foundation for what a skilled artisan would have known regarding SCSI. EX. 1003,
`
`156.
`
`Murata disc