IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZTE (USA) Inc.,
`Petitioner,
`
`
`v.
`
`
`
`Papst Licensing GmbH & Co. KG,
`Patent Owner.
`
`
`Case No. To Be Assigned
`Patent No. 6,470,399 B2
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`
`6,470,399 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZTE (USA) Inc.,
`Petitioner,
`
`
`v.
`
`
`
`Papst Licensing GmbH & Co. KG,
`Patent Owner.
`
`
`Case No. To Be Assigned
`Patent No. 6,470,399 B2
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`
`6,470,399 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`Exhibit Description
`
`Ex. 1001 U.S. Pat. No. 6,470,399 to Tasler (“the ‘399 Patent”)
`
`Ex. 1002 File History for U.S. Pat. No. 6,470,399
`
`Ex. 1003 Declaration of Kevin C. Almeroth (“Almeroth Declaration”)
`
`Ex. 1004 Curriculum vitae of Kevin C. Almeroth
`
`Ex. 1005 U.S. Patent No. 5,758,081 to Aytac (“Aytac”)
`
`Ex. 1006 Am. Nat’l Standard Inst., Inc., Am. Nat’l Standard for Info.
`
`Sys’s, Small Computer System Interface-2, ANSI X3.131-1994
`
`(1994) (the “SCSI Specification”)
`
`Ex. 1007 U.S. Patent No. 6,522,432 to Lin (“Lin”)
`
`Ex. 1008
`
`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255,
`
`1265 (Fed. Cir. 2015)
`
`Ex. 1009 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)
`
`Ex. 1010 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)
`
`Ex. 1011 As-Filed Filed German priority document Patent Application
`
`197 08 755.8
`
`Ex. 1012
`
`’399 German Application Publication (DE 197 08 755)
`
`Ex. 1013 Certified Translation of Published ’399 German Application
`
`(DE 197 08 755)
`
`Ex. 1014 English Translation of PCT Application PCT/EP98/01187
`
`(published as PCT Pub. No. WO98/39710)
`
`Ex. 1015 U.S. Patent No. 4,589,063
`
`Ex. 1016 U.S. Patent No. 5,038,320
`
`Ex. 1017 U.S. Patent No. 5,787,246
`
`Ex. 1018 Rufus P. Turner et al., The Illustrated Dictionary of
`
`Electronics (1991)
`
`Ex. 1019
`
`IPR2016-1200, Paper No. 8
`
`Ex. 1020 Source code submitted with the Aytac application in 1995
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction
`
`II. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`B.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`1.
`
`2.
`
`Related Litigation
`
`Related Inter Partes Review Petitions
`
`C. Counsel and Service Information (37 C.F.R. § 42.8(b)(3) and (b)(4))
`
`III.
`
`Fees (37 C.F.R. § 42.103)
`
`IV. Requirements for Inter Partes Review Under 37 C.F.R. § 42.104
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`B.
`
`C.
`
`Claims for Which Review is Requested (37 C.F.R. § 42.104(b)(1))
`
`Statutory Grounds of Challenge and Prior Art Relied Upon for Each
`
`Ground (37 C.F.R. § 42.104(b)(2))
`
`D.
`
`Person of Ordinary Skill in the Art
`
`E. Unpatentability of the Construed Claims (37 C.F.R. § 42.104(b)(4))
`
`F.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`V.
`
`The ‘399 Patent
`
`A. Overview of the ‘399 Patent
`
`B.
`
`Prosecution History of the ‘399 Patent
`
`
`
`C.
`
`Priority Date of the Claims of the ‘399 Patent
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`1.
`
`2.
`
`3.
`
`“data transmit/receive device”
`
`“simulating a virtual file system”
`
`“interface device”
`
`VI.
`
`Summary of References Applied in this Petition
`
`A. U.S. Patent No. 5,758,081 to Aytac (Ex. 1005)
`
`B. Am. Nat’l Standard Inst., Inc., Am. Nat’l Standard for Info. Sys’s,
`
`Small Computer System Interface-2, ANSI X3.131-1994 (1994) (Ex. 1006)
`
`C. U.S. Patent No. 6,522,432 to Lin (Ex. 1009)
`
`VII. Detailed Explanation of Grounds
`
`A. Ground I: Claims 1-3, 5, 6, 11, 14 and 15 are Unpatentable Under 35
`
`U.S.C. § 103(a) over Aytac in view of the SCSI Specification, Lin, and the
`
`admitted prior art
`
`1.
`
`Rationale for Combining Aytac with the SCSI Specification
`
`and Lin.
`
`1.
`2.
`3.
`4.
`5.
`
`Claims 1, 11 and 14
`Claims 2 and 15
`Claim 3
`Claim 5
`Claim 6
`
`
`
`6.
`
`Claim 15
`
`VIII. Conclusion
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Gosteli,
`872 F.2d 1009 (Fed. Cir. 1989)
`
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007)
`
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565,1571 (Fed. Cir. 1997)
`
`
`Martin v. Mayer,
`823 F.2d 500 (Fed. Cir. 1987)
`
`
`Motorola Mobility LLC v. Arnouse, No. IPR2013-00010, 2013 WL 2023657, at *4
`(Jan. 30, 2013)
`
`MPEP 6th ed., Rev. 1, Sept. 1, 1995, § 608.05.
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)
`
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008)
`
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991)
`
`
`
`Statutes
`
`35 U.S.C. § 102(b)
`
`35 U.S.C. § 102(e)
`
`35 U.S.C. § 103(a)
`
`
`
`35 U.S.C. § 325(d)
`35 U.S.C. § 325(d)
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Desktop and laptop computers that are "PCs" are direct descendants of the
`
`original IBM PC, first released in 1981. The down-side to the open architecture is
`
`the PC must be able to work with 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 each other or with different PC’s. For
`
`example, a printer connected to an existing computer may no longer be compatible
`
`with a new computer.
`
`To address this problem, computer companies proposed “plug-and-play”
`
`systems that allowed peripherals to communicate with a PC without the need for
`
`specialized device drivers for each peripheral. See e.g. Exs. 1015, 1016, and 1017.
`
`The ‘399 Patent describes and claims one such system, but, as explained herein,
`
`not the first.
`
`The ‘399 Patent purports to describe an “interface device”—which may or
`
`may not be built into the peripheral itself—that handles communications between a
`
`peripheral and the host computer without requiring the use of different drivers for
`
`
`
`different peripheral devices. Ex. 1001 at 3:20-43, 4:17-22. Thus, ‘399 Patent
`
`discusses an “interface device” intended to eliminate the need for specialized
`
`device drivers. When the interface device is connected to a host, it responds to the
`
`host’s request for identification by “simulat[ing] both in terms of hardware and
`
`software, the way in which a conventional input/output device functions, preferably
`
`that of a hard disk drive,” for which the host system already has a working driver.
`
`Ex. 1001, at 5:6-9 (emphasis added). And as the ‘399 patent admits, there were
`
`well-established protocols for identifying, configuring, and controlling hard disks,
`
`and every computer had a pre-installed device driver for communicating with a
`
`hard disk. Ex. 1001, at 4:23-29. Ex 1003 at ¶¶43-45.
`
`The interface device of the ‘399 Patent merely exploits these protocols and
`
`identifies itself as a hard disk to the computer, regardless of the type of device it is
`
`in fact. Ex. 1001, at 4:65-5:32; Ex 1003 at ¶¶ 43-44. In so doing, the peripheral is
`
`able to communicate with the computer using the preexisting hard disk device
`
`driver that apply well known protocols, rather than a specialized device driver. Id.
`
`See also, Ex. 1003,at ¶¶62-83.
`
`But this idea was well known before the ‘399 Patent was filed. For example,
`
`U.S. Patent No. 5,758,081 to Aytac (“Aytac” or Ex. 1005) describes a device
`
`referred to as a “CaTbox” that provides an interface for handling communications
`
`between a host computer and various peripheral devices (e.g., Fax modems 308-11,
`
`
`
`“printer 103,” “Central Office 123” and accompanying telephone lines, “scanner
`
`104,” “speaker 124,” “microphone 125,” “receiver 107”, “handset 105,” etc.). Ex.
`
`1005, at 8:61-9:4, Fig. 1; Ex. 1003 at ¶57. Regardless of which one or more of
`
`these peripherals is connected to the CaTbox, however, a PC sees the CaTbox as a
`
`hard disk customarily found in such computers. Ex. 1005 at 4:49-50; Ex. 1003, at
`
`¶¶ 154-56. In the preferred embodiment, the “CaTbox look[s] like a SCSI disk to
`
`the PC” in accordance with “a specification of SCSI.” Ex. 1005, at 4:49-53.
`
`It was also known to configure an interface device to send a signal to a host
`
`device indicating that it is a storage device customary in the host device – so the
`
`host device can communicate with the interface device by using the driver for the
`
`storage device customary in a host device. Aytac, with the known teachings of the
`
`SCSI Specification, proves that this idea was not new as of the effective filing date
`
`of the ‘399. Ex. 1005, at 10:52-58. Indeed, the source code filed with the Aytac
`
`patent application proves that this was known to a POSA before the `399 patent
`
`was filed. Ex. 1020, at 114-16, Ex. 1003, at 60, 155.
`
`This Petition demonstrates that claims 1-3, 5, 6, 11, 14 and 15 (the
`
`“Challenged Claims”) of the ‘399 Patent are unpatentable under pre-AIA 35
`
`U.S.C. § 103(a), and that there is a reasonable likelihood that Petitioner will prevail
`
`based on prior art the U.S. Patent and Trademark Office (“PTO”) did not consider
`
`
`
`during prosecution. Accordingly, and for the reasons set forth below, Petitioner
`
`respectfully requests inter partes review of the Challenged Claims.
`
`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 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: 6-15-cv-01099, 6-15-cv-01100, 6-15-cv-01001, 6-
`
`15-cv-01011, and 6-15-cv-01013.
`
`Petitioner is aware of the following litigations involving the ‘399 Patent in
`
`the United States District Court for the District of Columbia: 1-09-cv-00530, 1-08-
`
`cv-01433, 1-08-cv-01404, 1-08-cv-01405, 1-08-cv-01406, 1-08-cv-01407, 1-08-
`
`cv-00985, 1-08-cv-00865, 1-07-cv-02086, 1-07-cv-02087, 1-07-cv-02088, MDL
`
`1880, 1-07-mc-00493, 1-07-cv-01222, 1-07-cv-01016, and 1-06-cv-01751.
`
`Petitioner is aware of the following litigations involving the ‘399 Patent in
`
`the Northern District of Illinois: 1-08-cv-03627, 1-08-cv-03606, 1-08-cv-03609, 1-
`
`08-cv-03608, 1-08-cv-02510, 1-08-cv-01218.
`
`Petitioner is aware of the following litigation involving the ‘399 Patent in
`
`the Northern District of California: 5-08-cv-01732.
`
`
`
`Petitioner is aware of the following litigation involving the ‘399 Patent in
`
`the District of Delaware: 1-07-cv-00415.
`
`2.
`
`Related Inter Partes Review Petitions
`
`Petitioner is aware of the following inter partes review Petition 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. 6,470,399: IPR2016-01839, IPR2016-01843, IPR2016-
`
`01864, and IPR2017-00443.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 8,504,746: IPR2016-01200, IPR2016-01206, IPR2016-
`
`01211,
`
`IPR2016-01213,
`
`IPR2016-01223,
`
`IPR2016-01224,
`
`IPR2016-01862,
`
`IPR2016-01863, and IPR2017-00158.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 8,966,144: IPR2016-01199, IPR2016-01202, IPR2016-
`
`01212,
`
`IPR2016-01214,
`
`IPR2016-01216,
`
`IPR2016-01222,
`
`IPR2016-01225,
`
`IPR2016-01849, IPR2016-01860, 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, IPR2016-01840, IPR2016-
`
`01841, IPR2016-01842, IPR2016-01844, and IPR2017-00156.
`
`
`
`Concurrent with the filing of this Petition, Petitioner is also filing one
`
`additional inter partes review Petition for related U.S. Patent No. 6,895,449, one
`
`additional inter partes review Petition for related U.S. Patent No. 8,966,144, and
`
`one additional inter partes review Petition for related U.S. Patent No. 9,189,437.
`
`C. Counsel and Service Information (37 C.F.R. § 42.8(b)(3) and
`
`(b)(4))
`
`Counsel
`
`Lead Counsel:
`
`Service Information
`
`Postal and hand delivery
`
`Scott R. Miller (Reg. No. 32,276)
`
`Sheppard Mullin Richter & Hampton LLP
`
`smiller@sheppardmullin.com
`
`333 South Hope Street, 43rd Floor
`
`Backup Counsel:
`
`Los Angeles, CA 90071
`
`Darren Franklin (Reg. No. 51,701)
`
`T: 213-620-1780
`
`dfranklin@sheppardmullin.com
`
`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. 50-4562. The PTO is also authorized
`
`to charge all fees due at any time during this proceeding to Deposit Account No.
`
`50-4562.
`
`
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`
`§ 42.104
`
`D. 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.1
`
`E. Claims for Which Review is Requested (37 C.F.R. § 42.104(b)(1))
`
`Petitioner requests review of claims 1-3, 5, 6, 11, 14 and 15 of the ‘399
`
`Patent (“Challenged Claims”).
`
`F.
`
`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
`
`following grounds:
`
`Ground 1: Claims 1-3, 5, 6, 11, 14 and 15 are unpatentable under 35 U.S.C.
`
`§ 103(a) over U.S. Patent No. 5,758,081 to Aytac (Ex. 1005) in view of the SCSI
`
`Specification (Ex. 1006), Lin (Ex. 1007), and the admitted prior art in the ‘399
`
`Patent (Ex. 1001).
`
`
`1 The Patent Owner filed a Waiver of Service of Summon in Papst Licensing GmbH & Co. KG v. ZTE Corp. et al.,
`No. 6:15-cv-1100 (E.D. Tex.) on January 14, 2016. Ex. 1012. “[I]n the situation where the petitioner waives
`service of a summons, the one-year time period begins on the date on which such a waiver is filed.” Motorola
`Mobility LLC v. Arnouse, No. IPR2013-00010, 2013 WL 2023657, at *4 (Jan. 30, 2013).
`
`
`
`G. Relevant Dates for the Prior Art Relied Upon
`
`Aytac issued on May 26, 1998 from an application filed on December 8,
`
`1995, and is therefore prior art under at least 35 U.S.C. § 102(e).
`
`The SCSI Specification was published in 1994, and is therefore prior art
`
`under at least 35 U.S.C. §§ 102(a), 102(b).
`
`Lin issued on February 18, 2003 from an application filed on April 16, 1998,
`
`and is therefore prior art under at least 35 U.S.C. § 102(e).
`
`H.
`
`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 masters degree, or at least two years of experience in the relevant
`
`field, e.g., computer science, computer systems, or peripheral devices. Ex. 1003,
`
`¶46-49.
`
`I.
`
`Unpatentability of
`
`the Construed Claims
`
`(37 C.F.R. §
`
`42.104(b)(4))
`
`Claims 1-3, 5, 6, 11, 14 and 15 of the ‘399 Patent are unpatentable under the
`
`statutory ground(s) identified above, as explained in Section VII below.
`
`
`
`J.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided in Section VII, below, and the Exhibit List above.
`
`V. THE ‘399 PATENT
`
`A. Overview of the ‘399 Patent
`
`The '399 Patent generally describes an interface designed to facilitate the
`
`transfer of data between a host computer and another device on which data can be
`
`placed or from which data can be acquired. Ex. 1001, at Title and Abstract. While
`
`the '399 Patent admits such devices were known at the time of the invention, it
`
`states they typically "require very sophisticated drivers" to be downloaded onto the
`
`host computer, but such drivers "are prone to malfunction and . . . limit data
`
`transfer rates." Id. at 1:23-33.
`
`The '399 Patent describes that an "interface device" eliminates the need for
`
`specialized device drivers. When the interface device of the invention is connected
`
`to a host, it responds to the host's request for identification by "simulat[ing] both in
`
`terms of hardware and software, the way in which a conventional input/output
`
`device functions, preferably that of a hard disk drive," for which the host system
`
`already has a working driver. Id. at 5:6-9 (emphasis added). By responding in that
`
`
`
`manner, the interface device induces the host to treat it-and, indirectly, data devices
`
`on the other side of the interface device, no matter what type of devices they are-
`
`like the device that is already familiar to the host. Thereafter, when the host
`
`communicates with the interface device to request data from or control the
`
`operation of the data device, the host uses its pre-installed device driver, and the
`
`interface device translates the communications into a form understandable by the
`
`connected data device. See id. at 3:25-4:39. The interface device of the '399 Patent
`
`does not require a "specially designed driver" for the interface device be loaded
`
`into a host computer. Id. at 4:17-22, 8:43-50.
`
`B.
`
`Priority Date of the Claims of the ‘399 Patent
`
`The ‘399 Patent claims priority to PCT application PCT/EP98/01187 filed
`
`on March 3, 1998 (Ex. 1014), which claims priority to a German application filed
`
`on March 4, 1997 (Ex. 1011). The German application was published as German
`
`publication no. 19708755 A1 (Ex. 1012). A certified translation of the German
`
`priority application is provided as Ex. 1013.
`
`As discussed more fully in the accompanying declaration of Kevin Almeroth
`
`(Ex. 1003), claims 1-15 of the ’399 Patent are not entitled to claim priority to the
`
`German priority application as the Patent Owner added new matter to its PCT
`
`application (Ex. 1014), subject matter that was included in claims 1-15 but not
`
`supported in the German priority application. Consequently, the ’399 Patent
`
`
`
`claims are not entitled to a benefit date earlier than the actual filing date of the PCT
`
`application, March 3, 1998. Ex. 1003, ¶¶ 181-89.
`
`To benefit from the filing date of an earlier application, each application in
`
`the chain leading back to the earlier application must comply with the written
`
`description requirement of 35 U.S.C. § 112, first paragraph. The earlier
`
`application must clearly convey to skilled artisans the subject matter later claimed.
`
`Because the German priority application filed on March 4, 1997 (Ex. 1011) does
`
`not disclose a multi-purpose interface, the '399 patent does not get priority back to
`
`this application.
`
`The table in the Almeroth declaration (Ex. 1003, at ¶ 184) compares the
`
`disclosure of the certified translation of published German Application (DE 197 08
`
`755) filed on March 4, 1997 (Ex. 1013) to the disclosure in the filed PCT
`
`application. The table shows that the German application did not disclose a multi-
`
`purpose interface, as recited in all of the independent claims of the '399 patent.
`
`The claims of the ’399 patent thus are not entitled to a priority date earlier
`
`than
`
`the March 3, 1998
`
`filing date of
`
`the
`
`international application
`
`PCT/EP98/01187 (Ex. 1014) because the German priority application does not
`
`convey to a POSA that, as of the filing date sought, the inventor was in possession
`
`of at least the “inquiry from the host device as to the type of a device attached at
`
`the multi-purpose interface of the host device” described in claims 1 and 11 and
`
`
`
`the “inquiring by the host device at the interface device as to the type of device to
`
`which the multi-purpose interface of the host device is attached” described in claim
`
`14.
`
`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`In an inter partes review, the Board construes claim terms in an unexpired
`
`patent according to their broadest reasonable construction (“BRC”) in light of the
`
`specification. 37 C.F.R. § 42.100(b). Under this standard, claim terms are given
`
`their ordinary and accustomed meaning as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`For this proceeding, Petitioner believes the Challenged Claims should be
`
`interpreted consistent with their ordinary and customary meaning within the
`
`context of the ‘399 Patent. Further context regarding the meaning of certain terms
`
`is set forth below.2
`
`1.
`
`“data transmit/receive device” (claims 1, 3, 6, 11, and 14)
`
`This term is recited in claims 1, 3, 6, 11, and 14. The broadest reasonable
`
`construction encompasses “a device capable of transmitting data or transmitting
`
`and receiving data.” Support for this construction can be found in the specification,
`
`which discloses “a data transmit/receive device which is to receive data from the
`
`2 Petitioner reserves the right to propose different constructions in other proceedings and in particular
`district court litigation, for which the narrower claim construction standard of Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) would apply.
`
`
`
`host device or from which data is to be read, i.e. acquired, and transferred to the
`
`host device.” Ex. 1001, at 5:56-60; Ex. 1003,¶ 51.
`
`“the driver for the input/output device customary in a host
`2.
`device” (claim 1)
`
`For this proceeding, under the BRC standard, this term should be interpreted
`
`
`
`to encompass (at a minimum) "the driver for the input/output device normally part
`
`of commercially available computer systems," as Patent Owner has proposed in
`
`litigation. Ex. 1010, at 29; Ex. 1003, ¶52.
`
`3.
`
`"the usual driver for the input/output device" (claim 14)
`
`For this proceeding, under the BRC standard, this term should be interpreted
`
`to encompass (at a minimum) "the set of software routines used to direct 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, ¶ 53.
`
`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, ¶ 54.
`
`
`
`5.
`
`“interface device” (claims 1, 11, 14)
`
`
`
`This term, recited in claims 1, 11 and 14, was considered by the Federal
`
`Circuit, which stated that an interface device “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).” Ex. 1008, at 7; Ex. 1003, ¶55. Under the broadest reasonable
`
`construction standard, this term should be interpreted to encompass (at a
`
`minimum) that construction.
`
`VI. SUMMARY OF REFERENCES APPLIED IN THIS PETITION
`
`A. U.S. Pat. No. 5,758, 081 Aytac (Ex. 1005)
`
`Overview
`
`Aytac teaches a multi-function data generating and processing device,
`
`termed by the inventor the “CaTbox,” as an allusion to the way the device sits as
`
`an interface device between Computing and Telecommunications apparatus. Ex.
`
`1005, 4:8-14; Ex. 1003, ¶ 56. As explained in the claim analysis below, Aytac’s
`
`CaTbox meets all the limitations, both structurally and functionally, of the
`
`Challenged Claims when combined with the SCSI Specification referred to in the
`
`Aytac disclosure.
`
`In the preferred embodiment, various peripheral data transmit/receive
`
`devices are attached to the CaTbox 102 as depicted below in Figure 1. Ex. 1005,
`
`8:61-9:4; Ex. 1003, ¶ 57.
`
`
`
`
`
`Thus, CaTbox 102 receives inputs transmitted from these various peripheral
`
`data transmit/receive devices, including printer 103, scanner 104, telephone
`
`network 123 (connecting fax machines and telephones via phone lines 116, 118,
`
`120, and 122, fax modems 308-311), telephone handset 105, telephone receiver
`
`107, microphone 125, and speaker 124. Id.; Ex. 1003, ¶¶ 57-61. Such peripheral
`
`devices send and/or receive data that is shared with or from the host computer
`
`including, without limitation, scanned and/or fax images and voice data (from
`
`telephone lines). Id. The CaTbox modems 308-311 convert between analog
`
`signals and digital representations of fax images, voice mail, and other types of
`
`data. Id.; Ex. 1003, ¶¶ 59, 93-94. These peripheral devices may transmit and/or
`
`receive information to/from CaTbox, and be stored as digital files on CaTdisc
`
`under the control of X86 processor 201. Ex. 1005, at id., Abstract; Ex. 1003, ¶¶
`
`
`
`120-122. Aytac discusses how these peripheral data transmit/receive devices may
`
`be tied in to the CaTbox through various connections such as, for example,
`
`elements 312-319 and 321. See Ex. 1005, 9:5-52, Fig. 3; Ex. 1003, ¶¶ 128-129.
`
`Regardless of what peripheral data transmit/receive devices are plugged in to
`
`the CaTbox, CaTbox 102 presents itself to the host as a “SCSI disk”, and
`
`communicates with PC 101 solely over a SCSI interface 113. Ex. 1001, at 4:39-53;
`
`6:16-20, 10:28-29.
`
`CaTbox 102 has both program memory (BIOS EPROM 222, RAM 203,
`
`portions of CaTdisc storing CaTOS 590) and data memory (RAM 203, portions of
`
`CaTdisc, buffer memories within the modems). Ex. 1005, 9:5-15, 11:58-64.
`
`CaTOS is built on MS-DOS, and CaTdisc uses a DOS-FAT file system. Ex. 1005,
`
`11:65-12:39; Ex. 1003, ¶¶ 120-123. CaTbox data processing, storage and
`
`communications operations are controlled by the processor 201 and its associated
`
`chipset 221. See Ex. 1005, at 9:5-15, Fig. 2 (below).
`
`
`
`CaTbox 102 includes motherboard 200 and daughter boards 308-311
`
`mounted within casing 300, as depicted in Figures 3 and 4 below:
`
`
`
`
`
`
`
`
`
`CaTbox 102 includes BIOS code which allows the system to run MS-DOS
`
`and applications for controlling various CaTbox functions. Ex. 1005, at 8:20-23,
`
`11:65-67, Fig. 5; Ex. 1003, ¶¶ 122. Not surprisingly, in connection with a “multi-
`
`purpose interface,” both Aytac’s ’081 patent and Tasler’s ’399 patent disclose the
`
`use of an ASPI driver as an exemplary “specific driver.” Ex. 1001, at 11:9-22; Ex.
`
`1005, at 10:53-66; Ex. 1003, ¶ 160.
`
`In particular, Aytac discloses “[a]n ASPI driver such as ASPI2DOS.SYS
`
`521” for use as the driver specific to the SCSI interface (the multi-purpose
`
`interface). Ex. 1005, at 10:53-54. The ‘399 discloses that “[g]enerally speaking,
`
`this multi-purpose interface driver has the task of moving precisely specified SCSI
`
`commands from the host system program to the host system SCSI adaptor.” Ex.
`
`1001, at 11:19-22. This is exactly what Aytac’s ASPI2DOS.SYS driver does.
`
`
`
`Aytac even points out that the ASPI2DOS.SYS driver “provides the SCSI
`
`interface layer to all LUNs on CaTbox 102 SCSI node, as well as other SCSI
`
`nodes,” which necessarily involves moving the SCSI commands from the PC
`
`program to the SCSI adaptor. Ex. 1005, at 10:53-56. The CaTbox hard disk drive
`
`(CaTdisc) can also be accessed by the host PC for tasks such as retrieving or
`
`playing a voicemail recording, reading or printing a stored fax, retrieving and
`
`reading a scanned a document, and transferring data received via a modem. Ex.
`
`1005, at 7:56 -8:26, 17:41-18:13, Fig. 5; Ex. 1003, ¶¶ 178-180.
`
`Under control of processor 201, when CaTbox and PC 101 are operatively
`
`interfaced through the SCSI connection, a recognition process is carried out using
`
`standard SCSI procedures whereby the PC side issues an INQUIRY command and
`
`CaTbox responds that it is a SCSI disk drive. Ex. 1003, at ¶143. It is not necessary
`
`for an end user to load any additional software on the PC to carry out the SCSI
`
`recognition process.
`
`Following the recognition process, CaTbox looks like a hard disk to PC 101.
`
`Ex. 1005, 4:49-50, 10:28-29; Ex. 1003, ¶¶ 152, 168, 178. Files of digitized analog
`
`data stored on CaTdisc can then be accessed by and transferred to PC 101
`
`involving control by processor 201, without requiring any user-loaded transfer
`
`enabling software installed on PC 101. See Section VI.; Ex. 1003, ¶ 152.
`
`
`
`CaTbox is capable of numerous functions in addition to those described
`
`herein, for example, remote fax server and print server functions. Ex. 1005, 10:36-
`
`40; Ex. 1003, ¶ 59. For implementing those functions, additional software may be
`
`loaded on PC 101 in addition to the standard SCSI software. Ex. 1003, ¶ 91.
`
`However, neither the additional software nor additional functionality are required
`
`for the above-described recognition and data file transfer functions. Ex. 1003, ¶¶
`
`142-150.
`
`Aytac Source Code
`
`Aytac’s disclosure describes the ‘399 Patent’s claimed invention better than
`
`the specification of the ‘399 Patent. In addition to the Aytac disclosure itself, 450
`
`pages of source code were submitted with the Aytac application in 1995. This
`
`source code demonstrates a working embodiment of the invention that Papst tries
`
`to claim in the `449 Patent. The Aytac Patent discloses details about its CaTbox
`
`device, and includes source code utilized in an actual implementation of CaTbox
`
`and which supplements the other disclosures in the Aytac Patent. The source code
`
`was filed with the Office as part of underlying Application No. 08/569,846. Ex.
`
`1002 (Aytac Patent file wrapper, pages 77-527). The Office did not print the
`
`source code as part of the issued patent because the total number of pages (450)
`
`exceeded the ten-page limit in effect at the relevant time, but Aytac’s application
`
`transmittal letter and the title page indicate that the source code was filed as an
`
`
`
`integral part of the application. Ex. 1002, at 4, 77. Aytac’s mode of filing the
`
`source code followed the requirements for computer listing filings in effect as of
`
`the application date. See e.g, MPEP 6th ed., Rev. 1, Sept. 1, 1995, § 608.05. The
`
`Aytac source code supplements the disclosures of the Aytac Patent and further
`
`evidences the functionality of CaTbox at the time the Aytac application was filed.
`
`Petitioner is mindful that the PTAB has decided, in instituting an IPR on a
`
`patent related to the `449 Patent, that the Aytac source code is not part of the Aytac
`
`patent disclosure, but rather that the source code may be relied upon to show the
`
`level of ordinary skill in the art at or around the time of the invention of the `449
`
`Patent. See IPR2016-1200, Paper No. 8 at pp. 15-17 (Ex. 1019).
`
`Petitioner submits that the source code appendix was included in the
`
`disclosure of Aytac and, to the extent not considered part of the patent disclosure,
`
`should qualify as prior art under at least 35 U.S.C. § 102(e). The Atyac patent
`
`makes reference to programming for the interface device of the ’081 patent, and
`
`manners of implementation of that interface device, that would direct one of skill
`
`in the art to the attached source code filed with the Atyac application. See e.g., Ex.
`
`1005 at 12:13-39; 12:49-18:67 and 19:16-43. Though it reserves the right to use it
`
`as prior art should the PTAB allow it to do so, Petitioner has used the Aytac source
`
`code only as evidence showing what would be known to a POSA at or around the
`
`time of the invention of the ‘399 Patent.
`
`
`
`
`
`B.
`
`The SCSI Specification (Ex. 1006)
`
`
`
`The Small Computer Systems Interface (“SCSI,” pronounced “scuzzy”) was
`
`developed to enable a variety of peripheral devices to be connected to a computer.
`
`Included in the SCSI Specification are command sets for a range of
`
`peripheral devices: “magnetic and optical disks, tapes, printers, processors, CD-
`
`ROMs, scanners, medium changers, and communications devices.” Ex. 1006, at
`
`25; Ex. 1003, ¶¶ 63-72 153. SCSI was designed to function with a variety of
`
`peripheral devices and operating systems (such as MS-DOS and UNIX), such that :
`
`The command set definitions allow a sophisticated operating system
`to obtain all required initialization information from the attached
`SCSI-2 devices.
`Ex. 1006, at 33.
`
`A typical SCSI arrangement includes one
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