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 IPR2017-00714
`Patent 6,470,399
`____________________
`
`DECLARATION OF THOMAS A. GAFFORD IN SUPPORT OF
`PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 1
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ZTE (USA), INC.
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`
`Case IPR2017-00714
`Patent 6,470,399
`____________________
`
`DECLARATION OF THOMAS A. GAFFORD IN SUPPORT OF
`PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 1
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction .......................................................................................... 1
`I.
`Background And Qualifications ........................................................... 2
`II.
`III. Materials Considered ............................................................................ 7
`IV. Person Of Ordinary Skill In The Art .................................................... 8
`V. Applicable Legal Standards .................................................................. 9
`VI. Overview Of The ’399 Patent ............................................................ 14
`VII. Overview Of Aytac ............................................................................. 17
`VIII. The ’399 Patent’s Claims Are Not Obvious Over Aytac
`In View Of The SCSI Specification, Lin, And Alleged
`Admitted Prior Art .............................................................................. 26
`IX. Conclusion .......................................................................................... 38
`
`
`
`
`
`
`i
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 2
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`I.
`
`Introduction
`
`I, Thomas A. Gafford, declare as follows:
`
`1.
`
`I have been retained on behalf of Papst Licensing GmbH &
`
`Co. KG (“Papst”), and its counsel, Fitch Even Tabin & Flannery LLP, as
`
`an expert in this proceeding. I am personally knowledgeable about the
`
`matters stated herein and am competent to make this declaration.
`
`2.
`
`I understand that Petitioner filed a Petition for Inter Partes
`
`Review regarding certain claims of United States Patent No. 6,470,399 (“the
`
`’399 patent”), which was accompanied by the Declaration of Kevin
`
`Almeroth. (Ex. 1003.) I am aware that the Petition challenges claims 1–3, 5,
`
`6, 11, 14, and 15 as unpatentable under 35 U.S.C. § 103(a) over U.S. Patent
`
`No. 5,758,081 to Aytac (Ex. 1005) in combination with the American
`
`National Standard for Information Systems, Small Computer System
`
`Interface-2, ANSI X3.131-1994 (1994) (“SCSI Specification”) (Ex. 1006),
`
`U.S. Patent No. 6,522,432 to Lin (Ex. 1007), and alleged Admitted Prior
`
`Art.
`
`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 Petitioner and Mr. Almeroth have not shown
`
`that the challenged claims of the ’399 patent are unpatentable over Aytac in
`
`1
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`
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`combination with the SCSI Specification, Lin, and the alleged Admitted
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`Prior Art.
`
`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 in the ’399 patent, and my compensation is not dependent
`
`on the outcome of this trial or any of the related district court proceedings
`
`involving the ’399 patent. The conclusions I present are due to my own
`
`judgment.
`
`II. Background And Qualifications
`
`5. 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 of the analog data generating and processing
`
`devices (“ADGPD”) claimed in the ’399 patent, are provided in the
`
`paragraphs below. A copy of my latest curriculum vitae (CV) is attached as
`
`Appendix 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.
`
`6.
`
`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,
`
`2
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`computer peripherals, control systems, digital communications, operating
`
`systems, and related software and hardware components. My technical
`
`expertise relevant to the subject matter of the ADGPD 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.
`
`7.
`
`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 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 analog to digital sensor electronics for robotics and computer interfaces.
`
`8.
`
`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,
`
`3
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 5
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`
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`design of hardware and software interfaces for disk controllers, designing an
`
`embedded microprocessor controller for a printer mechanism and including
`
`modem interfaces, designing peripheral switches incorporated into system
`
`products, communications controllers, co-design of mainframe computers,
`
`and other projects.
`
`9.
`
`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; analyzing, 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 repair support for all hardware components of minicomputer
`
`systems; developing peripheral switch equipment for evolving system
`
`requirements; and manufacturing and selling peripheral switching
`
`equipment.
`
`10.
`
`In 1986 I founded Gafford Technology. 1988–89, I and a
`
`colleague at Gafford Technology designed a switch and repeater for the
`
`4
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 6
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`
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`SCSI bus, which required intimate knowledge of the bus protocol and
`
`general familiarity with the bus commands and device interface design. I
`
`applied for, received, and successfully licensed four patents covering
`
`inventions arising from 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;
`
` 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
`
`5
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 7
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`
`
` Repeater/Switch for Distributed Arbitration Digital Data Buses,
`
`United States Patent No. 6,154,799, issued November 28, 2000.
`
`These patents relate to digital data buses used for communicating
`
`signals between different functional components of digital computer
`
`systems.
`
`13. Each of the patents listed above are 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
`
`80s. 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 Tasler patent,
`
`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.
`
`14. The opinions expressed in this declaration are mine and they
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`6
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 8
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`were developed after studying the ’399 patent, relevant portions of the
`
`prosecution history, relevant prior art publications, the Petition, and the
`
`declaration of Mr. Almeroth.
`
`15. The ’399 patent concerns an interface device for allowing
`
`communication between a host device and a connected data/transmit receive
`
`device by means of a customary driver, such as a hard disk driver or a driver
`
`for a multipurpose interface. I recognize this technology as being well
`
`within the sphere of my experience and expertise, and I understand the
`
`technology described in the ’399 patent 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
`
`16.
`
`I have reviewed and considered the following documents:
`
` U.S. Patent No. 6,470,399 to Tasler (“the ’399 patent”) (Ex.
`
`1001);
`
` U.S. Patent No. 5,758,081 to Aytac (“Aytac”) (Ex. 1005);
`
` Prosecution History of Aytac (Ex. 1020);
`
` American National Standard for Information Systems, Small
`
`7
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`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 9
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`Computer System Interface-2, ANSI X3.131-1994 (1994)
`
`(“SCSI Specification”) (Ex. 1006);
`
` U.S. Patent No. 6,522,432 to Lin (Ex. 1007);
`
` The prosecution history file for the ’399 patent (Ex. 1002);
`
` The Petition for Inter Partes Review of the ’399 patent (Paper 1),
`
`including the exhibits cited therein;
`
` Declaration of Kevin Almeroth (Ex. 1003);
`
` The Transcript of the Deposition of Kevin Almeroth taken
`
`August 24, 2017.
`
` The additional background materials mentioned below in this
`
`declaration.
`
`17. Naturally, my review of these materials was informed by my
`
`education, my experience in and knowledge of industry, and my work as
`
`both as an engineer and a consultant.
`
`IV. Person Of Ordinary Skill In The Art
`
`18.
`
`I have been asked to address the issues raised in the Petition
`
`from the perspective of a person of ordinary skill in the field of the ’399
`
`patent (“POSITA”). 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
`
`8
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`transmit/receive device from which data is to be acquired or with which two-
`
`way communication is to take place.” (See Ex. 1001 at 1:9–13.) 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. Alternatively, a POSITA may have five or more
`
`years of experience in these technologies, without a bachelor’s degree. 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 device 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 first
`
`filed.
`
`V. Applicable Legal Standards
`
`19. 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
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`9
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`technical opinions expressed in this report.
`
`20. The patent claims describe the invention made by the inventor
`
`and describe what the patent owner owns and what the 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.
`
`21.
`
`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.
`
`22.
`
`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
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`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
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`10
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`prior art. In other words, one should avoid using the challenged patent as a
`
`guide through the prior art references, 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.
`
`23.
`
`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.
`
`24.
`
`I also understand that when considering the obviousness of a
`
`patent claim, one may 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
`
`11
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`and the motivation to combine references. I understand that the legal
`
`determination of the motivation to combine references allows recourse to
`
`logic, judgment, and common sense, but that any such motivation to
`
`combine references must still avoid the improper application of hindsight or
`
`reliance on the patentee’s disclosure of his invention as found in the patent
`
`specification, drawings, and claims.
`
`25.
`
`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.
`
`26.
`
`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
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`12
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`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 produce a seemingly inoperative device, or (2) the
`
`references leave the impression that the product would not have the property
`
`sought by the applicant or would no longer achieve the intended purpose(s)
`
`of the references being modified or combined.
`
`27.
`
`I understand that the first step in determining either validity or
`
`infringement is to properly construe the claims. I am advised that the claims
`
`for an unexpired patent are construed in an IPR proceeding using their
`
`broadest reasonable construction in light of the specification of the patent in
`
`which they appear. However, I am informed that the ’399 patent is set to
`
`expire on March 3, 2018, prior to the date that a final written decision in this
`
`proceeding, if instituted, would be due. Under this circumstance, I
`
`understand that the Board has applied the Phillips standard. I understand
`
`that, under this standard, claim terms are given their ordinary and customary
`
`meaning as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. The claim language should be read in light
`
`of the specification as it would be interpreted by one of ordinary skill in the
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`13
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`art. I am further advised that the meaning given to claim language should
`
`take into account any definitions presented in the specification. I understand
`
`that any special definitions for claim terms must be set forth with reasonable
`
`clarity, deliberateness, and precision.
`
`28. My opinions regarding the meaning that a person of ordinary
`
`skill in the art would give to certain disputed claim terms are also addressed
`
`below.
`
`VI. Overview Of The ’399 Patent
`
`29. The ’399 patent discloses a method for achieving high data
`
`transfer rates for data acquisition systems (e.g., imaging data, measurement
`
`data) to a general-purpose computer, without requiring a user to purchase,
`
`install, and/or run specialized software for each system. (Ex. 1001 at 4:23–
`
`27.) The ’399 patent states 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.) The ’399 patent also notes there was an
`
`increasing demand to transfer that information to commercially-available,
`
`general purpose computers. (Id. at 1:20–32.) But at that time, 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
`
`14
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`interface devices for a data acquisition system to a host system that may
`
`maximize data transfer rates but lacks the flexibility to match different
`
`devices with the host. (Id. at 1:17–3:21.)
`
`30. Mr. Tasler recognized that the existing options were wasteful
`
`and inefficient and sought a solution that would achieve high data transfer
`
`rates, without specialized software, while being sufficiently flexible to
`
`operate independently of device or host manufacturers. (Id. at 2:17–36,
`
`3:24–27.) The resulting invention would allow a data acquisition system to
`
`identify itself as a type of common device so as to leverage the inherent
`
`capabilities of general-purpose, commercially-available computers. (Id. at
`
`5:6–20.) Accordingly, by using Mr. Tasler’s invention, users could avoid
`
`loading device-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 provided a groundbreaking,
`
`yet seemingly simple, method and apparatus for a high data rate, device-
`
`independent information transfer. (Id. at 3:24–27.)
`
`31. Tasler discloses that his interface device could leverage “drivers
`
`for input/output device[s] customary in a host device which reside in the
`
`15
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`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 the 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), 8:43–50 (describing use of BIOS
`
`routines).) Similarly, the written description describes also using drivers
`
`included
`
`in
`
`the operating
`
`system.
`
`(See, e.g.,
`
`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 for a common type of
`
`device such as a hard drive as supported by all known operating systems
`
`(e.g., DOS®, Windows®, Unix®).”).)
`
`32. 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 Tasler’s interface device instead
`
`of, or in addition to, customary drivers which reside in the BIOS. (Id. at
`
`11:9–12.) Accordingly, Tasler contemplated a universal interface device that
`
`could operate independent of the manufacturer of the computer. (See 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
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`16
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`25 pin D-shell connector 1280, and a 25 pin connector 1282, to allow
`
`Tasler’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, FIG. 2.)
`
`A POSITA would understand this to mean that OS-provided file operations,
`
`common to the operating systems he mentions and to practically any other
`
`disk-based OS, for reading and writing could be used to access the device.
`
`VII. Overview Of Aytac
`
`33. The
`
`title of
`
`the Aytac patent
`
`is “Computing and
`
`communications transmitting, receiving system, with a push button interface,
`
`that is continuously on, that pairs up with a personal computer and carries
`
`out mainly communications related routine tasks.” (Ex. 1005.) As the title
`
`suggests, Aytac generally relates to a telecommunications apparatus or
`
`“Personal Communicator” in the form of an embedded computer called
`
`“CaTbox” (so named because the device “sits between a Computing and a
`
`Telecommunications apparatus”). (Id. at 4:8–20.) Aytac discloses the
`
`disadvantages associated with trying to integrate telephones, answering
`
`machines, fax machines, and the like with a PC, including the fact that a PC
`
`is not always on and is not push button driven. (Id. at 3:52–60.) Accordingly,
`
`Aytac’s CaTbox
`
`provides
`
`a
`
`simplified
`
`computer
`
`to
`
`handle
`
`telecommunications tasks and free up resources and external interfaces of
`
`17
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 19
`
`
`
`the PC. (Id. at 5:28–35.)
`
`34. Aytac discloses that the CaTbox may be connected to a SCSI
`
`interface of a PC via a cable. Aytac states that “CaTbox would look like a
`
`hard disk to the PC” and particularly a SCSI disk. (Id. at 4:49–51.) Aytac
`
`further explains that the CaTbox actually appears to the host as a plurality of
`
`devices. As “[v]iewed from the host PC, CaTbox looks like a. a SCSI hard
`
`disk (CaTdisc) b. a print server c. a remote data/voice/fax modem(s)
`
`(CaTmodem) d. a remote fax device(s) implementing the CAS protocol.”
`
`(Id. at 8:1–6.)
`
`35. This suggests that rather than the CaTbox itself appearing to be
`
`a single hard disk, the Catbox’s hard disk appears to the PC as a SCSI hard
`
`disk, and at the same time, the CaTbox also appears to be at least three other
`
`separate devices: a separate print server, modem, and a remote fax device.
`
`Other portions of Aytac’s specification are consistent on this point. (See id.
`
`at 5:42–45 (“These files would be transferred to a special directory on the
`
`CaTdisc (the term we use to emphasize that CaTbox has a hard disk that
`
`looks like a SCSI disk to the PC.)”) (emphasis added), 6:20–21, 10:28–30.)
`
`The preferred embodiment of CaTbox uses an IDE hard disk for data storage
`
`because an IDE hard disk was cheaper than a SCSI hard disk, but Aytac
`
`notes that a SCSI disk could be used instead. (Id. at 6:16–31.)
`
`18
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 20
`
`
`
`36. Aytac discloses that:
`
`As a standalone unit, CaTbox implements the following
`functions:
`a. print files found in a spool directory and pointed to in a
`queue
`b. receive faxes and print them or store them on CaTdisc
`c. send faxes driven by keypad
`d. receive voice mail and store them on CaTdisc
`e. play voice mail back driven by keypad
`f. copy from scanner to printer
`g. other functions that may be programmed such as email
`retrieval, faxback and data modem based TCP/IP/PPP node,
`dial a phone number.
`(Id. at 8:7–19.)
`
`37. To achieve these functions, CaTbox will be accessing its local
`
`“CaTdisc” nearly every time it performs one of these functions. Thus, to act
`
`as the multitasking device that Aytac intended, the CaTbox necessarily will
`
`be repeatedly accessing its CaTdisc. To adequately manage the frequent
`
`accessing of the CaTdisc by the CaTbox and the host PC, Aytac discloses
`
`that a number of specialized software drivers and programs are needed for
`
`both the host PC and the CaTbox, as shown in Figure 5 below and described
`
`starting at 10:52 of Aytac.
`
`19
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 21
`
`
`
`
`
`38.
`
`In particular, the PC runs Windows 95 as its operating system
`
`and includes a number of additional programs needed to work properly with
`
`CaTbox, including ASPIDISK.SYS, ASPI2DOS.SYS, CATSYNC.VXD,
`
`WINFAXPRO, CATCAS.EXE, and CATSER.VXD. (Id. at 10:52–66.)
`
`39. According to Aytac, the ASPI driver ASPI2DOS.SYS provides
`
`the SCSI interface layer, ASPIDISK.SYS provides the disk driver, and both
`
`are sourced from Adaptec Corporation. (Ex. 1005 at 10:53–58.) A POSITA
`
`would understand that while both these drivers would be involved in
`
`communications between the host PC and the CatBox, communication is not
`
`and cannot be achieved solely by means of these drivers.
`
`20
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 22
`
`
`
`40. Each of CATSYNC.VXD, CATCAS.EXE, and CATSER.VXD
`
`are specialized software and drivers specifically created for operation of the
`
`CaTbox. (Id. at 10:52–11:64.) These drivers would have to be loaded by an
`
`end user because they are specific to the CaTbox and were developed by the
`
`inventor Aytac and were not customary drivers that were typically present
`
`on most computers at the time of the invention of the ’399 patent. For
`
`example, CATSYNC.VXD is a program written by the inventor of the Aytac
`
`patent and is included in the source code submitted with the Aytac patent
`
`application. (See, e.g., Ex. 1020 at 77, 502.)
`
`41. According
`
`to Aytac, CATSYNC.VXD “implements
`
`the
`
`synchronization between the operating system of PC 101 and that of CaTbox
`
`102 that access the same CaTdisc 301.” (Id. at 10:60–63.) Aytac discloses
`
`that CATCAS.EXE implements the remote CAS modem function (id. at
`
`11:6–37), and CATSER.VXD is a virtual device driver program that
`
`“implements the remote modem (CaTmodem) function.” (Id. at 11:38–64.)
`
`Accordingly, Aytac teaches that each of these specific programs need to be
`
`installed on the host PC for the CaTbox to operate.
`
`42. Aytac
`
`specifically discloses
`
`that
`
`“[i]n
`
`tandem with
`
`[ASPIDISK.SYS], a virtual device driver called CATSYNC.VXD 523
`
`implements the synchronization between the operating system of PC 101
`
`21
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 23
`
`
`
`and that of CaTbox 102 that access the same CaTdisc 301.” (Id. at 10:58–
`
`63.) Aytac further discloses that CATSYNC.VXD is directly involved in
`
`every file transfer from the CaTbox to the host computer:
`
`43. CATSYNC.VXD 523 hooks the File I/O calls from the PC
`
`operating system (in this case Windows 95 520) and replaces the original
`
`call with the following:
`
`if File I/O for CaTdisc
`
`notify CaTdisc of beginning of File I/O receive acknowledgment
`
`flush File I/O caches for CaTdisc
`
`make the intended File I/O call (LUN=0)
`
`notify CaTdisc of end of File I/O
`
`(Ex. 1004 at 10:67–11:5). A POSITA understands that ‘hooks’ means that
`
`the call for File I/O service is first processed by the CATSYNC software,
`
`and then by Windows.
`
`44.
`
`In the below table, I include explanation of each step of the
`
`CATSYNC.VXD pseudo-code:
`
`
`Disclosure at 10:67–11:5
`If File I/O for CaTdisc
`
`notify CaTdisc of beginning of
`File I/O
`
`22
`
`Explanation of program steps
`The host computer OS tests to see
`if the request is for a CaTdisc file
`If so, the host computer notifies the
`CaTdisc that file I/O is beginning.
`This is part of the synchronization
`process, in which the CaTbox
`
`Papst Licensing GmbH & Co. KG's Patent Owner Response - Ex. 2005, p. 24
`
`
`
`receive acknowledgment
`
`flush File I/O caches for
`CaTdisc
`
`make the intended File I/O call
`(LUN=0)
`
`notify CaTdisc of end of File
`I/O
`
`ceases to
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