UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA) INC. and ZTE CORPORATION, OLYMPUS
`CORPORATION, OLYMPUS AMERICA INC., SAMSUNG
`ELECTRONICS CO. LTD., AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
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`CASE: IPR2017-007141
`Patent No. 6,470,399 B2
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`1 Case IPR2017-01808 has been joined with this proceeding.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA) INC. and ZTE CORPORATION, OLYMPUS
`CORPORATION, OLYMPUS AMERICA INC., SAMSUNG
`ELECTRONICS CO. LTD., AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
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`
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`
`
`CASE: IPR2017-007141
`Patent No. 6,470,399 B2
`
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`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`1 Case IPR2017-01808 has been joined with this proceeding.
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`
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`
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`I.
`II.
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`C.
`D.
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`B.
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`CONTENTS
`Introduction ..................................................................................................... 1
`Claim Construction ......................................................................................... 3
`A.
`Relevant Legal Standards ..................................................................... 4
`B.
`“Whereupon the Host Device Communicates . . . By Means Of” ....... 5
`1.
`The Board Should Not Import Negative Limitations ................ 5
`2.
`Even If Importation of a Limitation Were Appropriate,
`Papst’s Various Proposals Go Too Far ...................................... 9
`There Is No Concept of Reliability in the Challenged Claims .......... 11
`Immaterial Proposed Constructions ................................................... 12
`1.
`Papst Mischaracterizes Petitioner’s Position Regarding
`the Temporal Limitation for “Customary” or “Usual” ............ 12
`Data Transmit/Receive Device ................................................ 13
`2.
`III. Undisputed Prior Art Disclosure .................................................................. 13
`IV. Aytac Discloses Communication By Means of the Claimed Drivers .......... 17
`A. Aytac’s Customary I/O Device Drivers and Specific Multi-
`Purpose Interface Drivers Handle Communication ........................... 18
`Aytac’s System Still Communicates By Means of the Claimed
`Drivers Even If Other Software Is Implicated in the
`Communication .................................................................................. 21
`V. Aytac’s System Need Not Be Modified ....................................................... 24
`VI. The Dependent Claims Are Unpatentable .................................................... 26
`VII. Conclusion .................................................................................................... 26
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`TABLE OF AUTHORITIES
`
`Cases
`Allergan Inc. v. Apotex Inc., 754 F.3d 952 (Fed. Cir. 2014) ................................... 25
`Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547 (Fed. Cir. 1989) ....... 27
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) ............................... 26
`Canon Inc. v. Papst Licensing GmbH & Co. KG, IPR2016-01199, Final
`Written Decision, Paper No. 20 (PTAB Dec. 11, 2017) .............................. passim
`Canon Inc. v. Papst Licensing GmbH & Co. KG, IPR2016-01200, Final
`Written Decision, Paper No. 20 (PTAB Dec. 11, 2017) .............................. passim
`Celsis In Vitro, Inc. v. CellzDirect, Inc., 664 F.3d 922 (Fed. Cir. 2012). ................. 6
`EWP Corp. v. Reliance Universal Inc., 755 F.2d 898 (Fed. Cir. 1985) .................. 26
`In re Heck, 699 F.2d 1331 (Fed. Cir. 1983) ............................................................. 26
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................. 4, 5, 7
`Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012) ......................... 5
`Upsher-Smith Laboratories, Inc. v. Pamlab, LLC, 412 F.3d 1319 (Fed. Cir.
`2005). .................................................................................................................... 22
`Statutes
`35 U.S.C. § 112 .......................................................................................................... 5
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`ii
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`EXHIBIT LIST
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`Exhibit Description
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`1001 U.S. Pat. No. 6,470,399 to Tasler (“the ’399 Patent”)
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`1002
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`File History for U.S. Pat. No. 6,470,399
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`1003 Declaration of Kevin C. Almeroth (“Almeroth Declaration”)
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`1004
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`Curriculum vitae of Kevin C. Almeroth
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`1005 U.S. Patent No. 5,758,081 to Aytac (“Aytac”)
`
`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”)
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`1007 U.S. Patent No. 6,522,432 to Lin (“Lin”)
`
`1008
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`1009
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`1010
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`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255,
`1265 (Fed. Cir. 2015)
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`Papst’s Opening Claim Constr. Brief and Appendix 8 of
`Papst’s Opening Claim Constr. Brief, Papst Licensing GmbH
`& Co., KG v. Apple, Inc., et al., No. 6:15-cv-01095-RWS
`(E.D. Tex. Nov. 22, 2016)
`
`Papst’s Opening Claim Constr. Brief and Decl. of Robert
`Zeidman, In re Papst Licensing Dig. Camera Pat. Litig.,
`MDL No. 1880, No. 1:07-mc-00493 (D.D.C. June 3, 2016)
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`1011 As-Filed Filed German priority document Patent Application
`197 08 755.8
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`iii
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`EXHIBIT LIST
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`Exhibit Description
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`1012
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`1013
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`1014
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`’399 German Application Publication (DE 197 08 755)
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`Certified Translation of Published ‘399 German Application
`(DE 197 08 755)
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`English Translation of PCT Application PCT/EP98/01187
`(published as PCT Pub. No. WO98/39710)
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`1015 U.S. Patent No. 4,589,063
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`1016 U.S. Patent No. 5,038,320
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`1017 U.S. Patent No. 5,787,246
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`1018 Rufus P. Turner et al., The Illustrated Dictionary of
`Electronics (1991)
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`1019
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`1020
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`1021
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`1022
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`1023
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`IPR2016-1200, Paper No. 8
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`Source code submitted with the Aytac application in 1995
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`Papst’s Brief, In re Papst Licensing Digital Camera Patent
`Litig., No. 2014-1110 (Fed. Cir., February 20, 2014)
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`Canon Inc. v. Papst Licensing GmbH & Co. KG, IPR2016-
`01199, Final Written Decision, Paper No. 20 (Dec. 11, 2017)
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`Canon Inc. v. Papst Licensing GmbH & Co. KG, IPR2016-
`01200, Final Written Decision, Paper No. 20 (Dec. 11, 2017)
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`1024 Webster’s II New College Dictionary, Houghton Mifflin Co.,
`Boston (1995)
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`2001 Declaration of Thomas Gafford
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`2002
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`(Reserved)
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`iv
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`EXHIBIT LIST
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`Exhibit Description
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`2003 Manual of Patent Examining Procedure 608.05, 6th ed., rev. 1
`(Sept. 1, 1995)
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`2004
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`Claim Construction Opinion and Order, Papst Licensing
`GmbH & Co., KG v. Apple, Inc., 6:15-cv-01095, D.E. 275
`(E.D. Tex. March 7, 2017)
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`2005 Declaration of Thomas Gafford In Support of Patent Owner
`Response
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`2006
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`Transcript of Deposition of Kevin Almeroth Taken on August
`24, 2017
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`3001 Microsoft Press Computer Dictionary, Second Edition, 1994
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`v
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`I.
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`INTRODUCTION
`The Petition established that the Challenged Claims2 are unpatentable under
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`§ 103(a) as obvious over Aytac combined with secondary references. Conceding
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`the prior art’s disclosure of all but one limitation, Papst now relies on imported
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`negative claim limitations and recycled arguments that the Board already has
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`rejected.
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`The Board determined that Aytac in view of the SCSI Specification renders
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`unpatentable claims of two overlapping patents that are continuations of the ’399
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`patent and tied to it via a terminal disclaimer.3 The challenged claims of the ’144
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`and ’746 patents recited similar subject matter as the Challenged Claims but were
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`further limited by a negative limitation—not found in the Challenged Claims—
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`reciting that data transfer occurs without requiring use or installation of specialized
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`software on the host. The Board found that Aytac discloses transfer of a file to a
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`2 Claims 1-3, 5, 6, 11, 14, and 15 of the ’399 patent.
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`3 Canon Inc. v. Papst Licensing GmbH & Co. KG, IPR2016-01199 (“the 1199 IPR”),
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`Final Written Decision, Paper No. 20 (PTAB Dec. 11, 2017) (Ex. 1022) (U.S. Patent
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`No. 8,966,144 (“the ’144 patent”)); Canon Inc. v. Papst Licensing GmbH & Co. KG,
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`IPR2016-01200 (“the 1200 IPR”), Final Written Decision, Paper No. 20 (PTAB
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`Dec. 11, 2017) (Ex. 1023) (U.S. Patent No. 8,504,746 (“the ’746 patent”)).
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`host computer “using the SCSI protocol and ASPI drivers” without requiring
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`Petitioner’s Reply to Patent Owner’s Response
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`installation of those drivers. Ex. 1022 at 41-42; Ex. 1023 at 28-29. Importantly, the
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`Board determined that Aytac’s specialized programs, which are the focus of Papst’s
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`arguments again here, merely provided additional unclaimed functionalities. Ex.
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`1022 at 41-42; Ex. 1023 at 29.
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`The Challenged Claims similarly do not recite any concept related to Aytac’s
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`specialized software. But the Challenged Claims are broader because they do not
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`recite the negative limitation concerning the installation of specialized software.
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`They merely recite “communication” occurring between the host and interface “by
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`means of” recited drivers and are agnostic to the presence of software beyond the
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`recited drivers.
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`As the Board already found, Aytac discloses this and more—disclosing
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`communication (file transfer) occurring without the need for specialized software.
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`Thus, the (broader) claims are unpatentable based on Aytac in view of the secondary
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`references for
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`the same reasons discussed
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`in
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`the related proceedings:
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`communication in Aytac occurs by means of the customary SCSI drivers whereas
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`the specialized software implements ancillary functions of synchronization and
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`cache clearing/disabling.
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`In addition, this proceeding is unique in the way Papst ignores basic patent
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`law to escape an unpatentability finding. Papst needed to rewrite the Challenged
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`-2-
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`Claims to import negative limitations for any of its arguments to be relevant. See
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`Decision on Institution (“Decision”), Paper No. 10 at 17 (June 21, 2017) (finding
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`Papst’s arguments and expert testimony premised on “improperly importing
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`negative limitations into the claims”).
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`As the Board recognized, Papst’s importation of the negative limitation is
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`improper. And even if the Board agreed that the claims require the imported
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`limitation—requiring communication solely by means of the recited drivers—the
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`result is still the same. In Aytac, communication occurs by means of SCSI drivers,
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`which handle data transfer between the host and interface (CaTbox) device. The
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`specialized software is not required for communication between the devices and,
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`therefore, is irrelevant to Papst’s imported negative limitation.
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`Petitioner has established that the Challenged Claims are unpatentable and
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`requests their cancellation.4
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`II. CLAIM CONSTRUCTION
`Papst’s sole patentability argument for the Challenged Claims relies upon one
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`claim construction argument: the “whereupon” clause’s interpretation. Papst fails to
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`4 Contrary to Papst’s assertions, see Resp. at 30-34, Petitioner demonstrated the prior
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`art’s disclosure of every Challenged Claim, see Pet. at 26-73, together with
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`motivation to combine, see id. at 26-28. See Decision at 19-20; Ex. 1003 ¶¶87-95.
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`clearly articulate its proposed construction. But Papst clearly strives to import some
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`Petitioner’s Reply to Patent Owner’s Response
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`sort of negative limitation prohibiting the presence of software so that it can recycle
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`its unsuccessful arguments regarding Aytac’s synchronization and cache clearing
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`software.
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`Because Papst’s importation of a negative limitation, however worded, is
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`improper, Papst’s entire argument fails, rendering the asserted prior art’s disclosure
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`of every claim limitation undisputed.
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`A. Relevant Legal Standards
`Claim terms are construed from the perspective of a person of ordinary skill
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`in the art (“POSITA”) in light of the specification. Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005). Where the meaning of claim language is “readily
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`apparent even to lay judges,” its construction may involve “little more than the
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`application of the widely accepted meaning of commonly understood words.” Id. at
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`1314.
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`Limitations should not be imported into claims from the specification. See id.
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`at 1323. The focus should be on understanding the claim terms’ meaning without
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`“confining the claims to those embodiments” in the specification. Id. That is the
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`case, first, “because section 112 of the Patent Act requires that the claims themselves
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`set forth the limits of the patent grant,” and second, “because [POSITAs] rarely
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`would confine their definitions of terms to the exact representations depicted in the
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`-4-
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`embodiments.” Id. (emphasis added). “[I]t is important to keep in mind that the
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`purposes of the specification are to teach and enable those of skill in the art to make
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`and use the invention and provide a best mode for doing so.” Id.
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`A specification must provide adequate support for any proposed limitation.
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`See 35 U.S.C. § 112 ¶1. A negative limitation is supported “when the specification
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`describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm.,
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`Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Moreover, the explicit negative
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`limitation “without requiring” does not mean “prohibiting.” Celsis In Vitro, Inc. v.
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`CellzDirect, Inc., 664 F.3d 922, 926-27 (Fed. Cir. 2012).
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`B.
`“Whereupon the Host Device Communicates . . . By Means Of”
`Papst rewrites a claim limitation that, on its face, is easily understood. For the
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`first time in a decade of litigation regarding this patent, Papst now suggests
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`importing an unclaimed negative limitation into each claim. See Ex. 1009 at 23-24
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`(proposing construction for “first command interpreter” limitation, which includes
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`the recited “whereupon” clause, without mention of any negative limitation); Ex.
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`1010 at 37-40 (same). Its argument—designed to manufacture relevance for its
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`patentability arguments regarding Aytac—fails.
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`1.
`The Board Should Not Import Negative Limitations
`The independent claims recite variations of the “whereupon” clause requiring
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`communication “by means of” a driver:
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`Claim 1
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`Claim 11
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`Claim 14
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`“whereupon the host
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`“whereupon the host
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`“whereupon the host
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`device communicates
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`device communicates
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`device communicates
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`with the interface device
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`with the interface device
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`with the interface device
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`by means of the driver
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`by means of the specific
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`by means of the usual
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`for the input/output
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`driver for the multi-
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`driver for the
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`device customary in a
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`purpose interface”5
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`input/output device”
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`host device”
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`The claim language is clear that, upon the occurrence of the handshake
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`process,6 communication occurs “by means of” the recited driver. It does not state
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`that all communication must occur by means of only that driver without involvement
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`5 Papst admits that a SCSI interface is a multi-purpose interface, see Resp. at 7 (“a
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`multi-purpose interface (such as a SCSI interface)”) and Ex. 2005 ¶32, and that ASPI
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`drivers are specific drivers for a SCSI interface. See Resp. at 39 (acknowledging that
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`“ASPI2DOS.SYS ‘provides the SCSI interface layer to all LUNs on CaTbox’ and
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`ASPIDISK.SYS ‘provides the disk driver’”).
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`6 E.g., the interface device’s first command interpreter sending a signal identifying
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`itself to the host device.
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`-6-
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`of any type by any other software. This is readily apparent, requiring no more than
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`Petitioner’s Reply to Patent Owner’s Response
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`application of the plain meaning. See Phillips, 415 F.3d at 1314. Nothing in the
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`specification indicates a special definition of “by means of” that contradicts its
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`widely accepted meaning. See generally Ex. 1001. Nor does anything in the
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`prosecution history suggest a different meaning. See generally Ex. 1002. Moreover,
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`the plain meaning of “by means of” is “[w]ith the use of : owing to”—a far cry from
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`the narrow definition Papst seeks. See Webster’s II New College Dictionary,
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`Houghton Mifflin Co. (1995) (Ex. 1024).
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`The Challenged Claims do not prohibit the presence of other software that
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`may in some way be involved in communication, so long as only the customary /
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`usual / specific multi-purpose interface driver is needed for the communication.
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`Indeed, the ’399 patent disclosure contradicts Papst’s contention, allowing software
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`that facilitates communication in many instances. See Ex. 1001 at 5:64-67 (presence
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`of an operating system), 6:55-7:37 ( “the user can also create a configuration file,
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`whose entries automatically set and control various functions of the interface
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`device,” including sampling time and volume of data to be acquired), 8:18-22 (to
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`“perform, e.g. mail functions or monitor processes which run continuously, for
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`example, in multi-tasking environments”), 9:23-28 (on the interface device to
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`perform optional data compression “of the data to be transferred from the data
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`transmit/receive device to the host device”); see also Ex. 1003 ¶88. Though none of
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`these communication-facilitating software corresponds to the claimed drivers in the
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`Challenged Claims, the disclosure of the ’399 patent anticipates their operation.
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`Software tangential to communication on either the host or interface is not
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`prohibited by the claims. In other words, communication still may “occur by means
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`of” the recited driver while other software performs additional ancillary processes.
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`Surrounding claim language further refutes the imported negative limitation.
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`Each independent claim further requires “interpret[ing] a data request command
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`from the host device . . . as a data transfer command for initiating a transfer of the
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`digital data to the host device.” In Texas, Papst explained that after the handshake:
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`[T]he host device will then use its appropriate driver, e.g., its hard disk
`driver, to communicate with the interface device. (Id. at 6:22-26.) As
`the patent explains, both of these steps are implemented by “known
`standard access commands.” (Id. at 5:64-67.) The details of these steps
`would be known to one of skill in the art. (Ex. 8 ¶¶ 43-45.)
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`Ex. 1009 at 24. Papst thus argued that “communication” occurs by “standard access
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`commands” known by a POSITA without any indication that other ancillary
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`software would be prohibited.
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`The language of the claims, in view of the specification and prosecution
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`history, requires that the recited “communication”—which may include data request
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`and transfer commands—occur by the recited driver; it does not address the
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`presence/absence or operation of other software. The Board should reject Papst’s
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`plea to insert a negative limitation into the claims.
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`2.
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`Even If Importation of a Limitation Were Appropriate,
`Papst’s Various Proposals Go Too Far
`While interpreting claims in light of the specification is proper, Papst
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`oversteps in a transparent attempt to make relevant its recycled arguments.
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`None of Papst’s evidence is commensurate in scope with its proposed
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`construction. Papst appears to demand a construction precluding the presence of any
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`software that is related in any way to any communication between the host and
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`interface device. This is evident in the various iterations in Papst’s Response:
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` Claim “requires that other specific, user-loaded or non-customary
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`software beyond the explicitly required customary drivers . . . not be
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`used for communications.” Resp. at 24-25;
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` Claims “exclude reliance on a specialized driver for communication.”
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`Id. at 25;
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` Claims require communicating “using the specified driver without
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`resorting to specialized, non-customary software.” Id. at 35, 36 (same);
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`and
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` Papst argues that Aytac fails to disclose “that the host computer
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`communicates with the CaTbox solely by means of the driver for a
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`storage device customary in a host device or by means of the specific
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`driver for the multi-purpose interface.” Id. at 37.
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`Papst’s inconsistent views appear to be that “by means of” should be
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`interpreted as “solely by means of” and that use of any software other than the recited
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`drivers, at any point in the communication process, including for additional
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`unclaimed functionalities, is strictly prohibited.
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`By contrast, the cited specification passages merely disclose to a POSITA that
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`the interface’s identification as a customary device causes the host computer to use
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`the corresponding customary driver. See Resp. at 22-24; Ex. 1003 ¶¶42-44, 88. The
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`disclosure does not support the proposed prohibition against any software that could
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`be involved in data transfer at some point in the process. See Ex. 2006 at 25:9-19,
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`26:5-18, 29:10-18, 35:4-37:1, 91:14-93:3, 96:21-97:16.
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`Moreover, the Board recently rejected Papst’s similar attempt to construe a
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`negative limitation explicitly recited in the ’746 and ’144 patents. See Ex. 1022 at
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`11-12 (“without requiring” a user to install software “does not prohibit software to
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`be loaded or installed”); Ex. 1023 at 11. The Board should not construe Papst’s
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`imported negative limitation as explicitly prohibiting use of other software when an
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`explicitly recited negative limitation was not so limited.
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
`C. There Is No Concept of Reliability in the Challenged Claims
`Having previously failed to persuade the Board that Aytac’s specialized
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`software addressing reliability is relevant, Ex. 1022 at 42; Ex. 1023 at 29, Papst
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`seeks to import yet another limitation. Papst asserts that the Challenged Claims
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`inherently require reliability despite their silence on that feature. See Resp. at 47-48.
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`The basis for this supposed “inherent” requirement is Papst’s rhetorical question in
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`its Response and unsupported expert testimony.7 Papst cannot reasonably argue that
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`importing “reliability” is supported by its Patent Owner Response and conclusory
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`expert declaration.
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`Curiously, Papst relies on Aytac’s claims to argue that the Board should
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`import a “reliability” limitation. Specifically, it notes that Aytac explicitly claimed
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`features that would implicate CATSYNC functionality (i.e., reliability) and quotes
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`Aytac’s claim 3, which recites “whereby reliable access . . . is achieved.” Resp. at
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`46-47. The fact that Aytac’s claims explicitly recite reliability only highlights its
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`absence from the Challenged Claims. The only place that “reliability” appears as a
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`limitation of the Challenged Claims is in Papst’s attorney argument and retained
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`7 Papst’s two citations to the ’399 patent on this point are irrelevant. See Resp. at 48.
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`The first citation concerns disclosure of a buffer for error-free operation, Ex. 1001
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`at 9:8-14, and the second concerns a description of the prior art, id. at 2:48-63.
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`expert’s unsupported declaration, just like in the 1199 and 1200 IPRs. Ex. 1022 at
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`42; Ex. 1023 at 29.
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`All that is required by the Challenged Claims is that communication between
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`the host and interface device occur by means of a recited driver, nothing more.
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`D.
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`Immaterial Proposed Constructions
`1.
`Papst Mischaracterizes Petitioner’s Position Regarding the
`Temporal Limitation for “Customary” or “Usual”
`Papst states that the “parties’ proposed construction reflects that ‘customary’
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`corresponds to the driver that is normally part of the computer system when sold,
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`rather than the particular time of the invention.” Resp. at 27 (emphasis added).
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`Petitioner merely proposed adopting Papst’s constructions for purposes of this
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`proceeding under the broadest reasonable construction standard. See Pet. at 15-16.
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`The proper construction under Phillips is different.
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`Regardless the construction, Petitioner agrees with Papst that the timeframe
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`for the “customary” term has no impact on the outcome of this proceeding. See Resp.
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`at 28. It is undisputed that any disclosure in the relied-upon prior art, which Papst
`
`does not dispute is prior art, would necessarily constitute disclosure before the time
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`of the invention. As such, the timeframe for the “customary” limitation is not
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`material to the outcome of this proceeding. See, e.g., 1199 IPR, Paper No. 8 at 11
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`(Board: “it is not necessary to recite expressly ‘at the time of the invention’ in our
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`claim construction.”).
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`Nevertheless, to ensure a clear record, Petitioner submits that the Federal
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`
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`Circuit defined the term to be limited to computer systems at the time of the
`
`invention. Ex. 1008 at 1270 (“The written description makes clear that it is enough
`
`for the device to be one that was normally part of commercially available computer
`
`systems at the time of the invention.”) (emphasis added). Thus, the quoted language
`
`from the Federal Circuit regarding the “time of the invention” is part of the proper
`
`construction for the customary terms. The Eastern District of Texas agrees. Ex. 2004
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`at 27-28 (applying “the Federal Circuit’s finding that ‘customary’ includes a
`
`limitation of ‘normally part of commercially available computer systems at the time
`
`of the invention.’”).
`
`2.
`Data Transmit/Receive Device
`Papst proposes that this term be construed to mean “a device capable of either
`
`(a) transmitting data or (b) transmitting data and receiving data.” Resp. at 27.
`
`Regardless the construction, it is undisputed that Aytac discloses a data
`
`transmit/receive device (“DTRD”). See Pet. at 34; Section III infra.
`
`III. UNDISPUTED PRIOR ART DISCLOSURE
`Papst argues that Aytac’s synchronization software violates an imported
`
`limitation. It does not dispute the prior art’s disclosure of the remaining limitations.
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`Nor does it dispute the details of Aytac’s communication by means of SCSI
`
`protocols and ASPI drivers and the correspondence of those drivers to the claims.
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`Aytac’s CaTbox is connected to several DTRDs, “including printer 103,
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`
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`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,
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`telephone receiver 107, microphone 125, and speaker 124.” Pet. at 15; Ex. 1003
`
`¶¶57-61. In addition, Papst acknowledged that a charge coupled device (“CCD”) is
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`a DTRD. See Ex. 1021 at 22; Pet. at 36; Ex. 1003 ¶111. The scanner of Aytac
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`necessarily includes a CCD (i.e. DTRD). Pet. at 35-37; Ex. 1003 ¶¶111-12.
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`Regardless the connected peripherals, the CaTbox presents itself to the host
`
`as a SCSI disk and communicates with the host solely over a SCSI interface. Pet. at
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`16; Ex. 1005 at 4:49-53, 10:28-29. Aytac’s host computer uses ASPI drivers to
`
`communicate with and access CaTbox’s SCSI hard disk. Pet. at 18, 63; Ex. 1005 at
`
`10:53-66; Ex. 1003 ¶159.
`
`According to the ’399 patent, ASPI drivers correspond to specific drivers for
`
`the multi-purpose SCSI interface as well as drivers for customary i/o devices (hard
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`disks). See Pet. at 31-32. The ’399 patent explains:
`
`[C]ommunication between the host device and the multi-purpose
`interface can take place not only via drivers for input/output device
`customary in a host device which reside in the BIOS system of the host
`device but also via specific interface drivers which, in the case of SCSI
`interfaces, are known as multi-purpose interface ASPI (advanced SCSI
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`programming interface) drivers. This ASPI driver . . . is normally
`included by the manufacturer of the multi-purpose interface.
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`Ex. 1001 at 11:9-19, 4:27-30 (hard disks are customary i/o devices).
`
`The data transfer between host and interface is enabled after a sequence of
`
`exchanges occur according to the SCSI protocol (depicted below).
`
`
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`Pet. at 57-58; Ex. 1003 ¶148. Because the CaTbox “look[s] like a SCSI disk to the
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`PC” and communicates over a SCSI interface and cable, the exchange depicted
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`above occurs between CaTbox and the host. Pet. at 60; Ex. 1005 at 4:49-53, 7:61-
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`62; Ex. 1003 ¶¶141-55, 157-60. Thereafter, SCSI read/write requests from the PC
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`are translated by the SCSI driver residing on CaTbox, known as “MASPI.SYS,” into
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`ATA hard disk commands presented to the CaTdisc. Pet. at 60; Ex. 1005 at 6:16,
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`12:6-10; Ex. 1003 ¶¶151-52. An ASPI driver “provides the SCSI interface layer to
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`all LUNs on CaTbox 12 SCSI node, as well as other SCSI nodes.” Pet. at 63-64; Ex.
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`1003 ¶159; Ex. 1005 at 10:67-11:5, 11:25-27 (a read call, by default, “goes through
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`LUN=0”).
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`In an exemplary embodiment, CaTbox is connected to a scanner (CCD) as a
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`DTRD. Ex. 1003 ¶¶86, 92, 111-12, 129. Scanned and digitized data would be stored
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`on CaTdisc for later access by the host. Pet. at 65; Ex. 1003 ¶162; Ex. 1005 at 10:8-
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`13, 18:52-65. The CaTbox processor would then process a SCSI READ command
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`from the host to “translate hard disk SCSI read/write calls to local INT 13h calls to
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`CaTdisc,” thereby retrieving the requested data from CaTbox’s ATA disk drive. Pet.
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`at 65; Ex. 1003 ¶¶152, 162; Ex. 1005 at 6:16, 12:6-10.
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`Use of standard ASPI drivers in Aytac’s SCSI-based communications is
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`admitted by Papst. Resp. at 39 (“ASPI2DOS.SYS ‘provides the SCSI interface layer
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`to all LUNs on CaTbox’ and ASPIDISK.SYS ‘provides the disk driver.’”). Mr.
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`Gafford acknowledges that Aytac’s specialized software is not needed for data
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`transfer. He explains that CATSYNC synchronizes simultaneous accesses to the
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`CaTdisk, Ex. 2005 ¶58, which will not necessarily occur, id. ¶59 (admitting reliable
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`transfer in one embodiment). He asserts that CATSYNC ensures acquiring “the
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`requested file from the CaTbox rather than a cached version of the file stored on the
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`host PC,” acknowledging that a successful file transfer already occurred. Id. ¶58.
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`IPR2017-00714
`Petitioner’s Reply to Patent Owner’s Response
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`IV. AYTAC DISCLOSES COMMUNICATION BY MEANS OF THE
`CLAIMED DRIVERS
`The Board thoroughly analyzed Aytac and in 90 pages explained why claims
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`of the related ’746 and ’144 patents are unpatentable in view of its disclosure.
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`Indeed, those claims are narrower in scope than the Challenged Claims. Unlike here,
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`the related patents explicitly recite that communication in the form of a file transfer
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`occurs “without requiring” use or installation of specialized file transfer enabling
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`software. The broader Challenged Claims must also be unpatentable for similar
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`reasons.
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`Papst focuses on the limitation stating “whereupon [communication] occurs
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`by means of . . .” either the driver for the input/output device customary in a host
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`device (claim 1), the usual driver for the input/output device (claim 14), or the
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`specific driver for the multi-purpose interface (claim 11). See Resp. at 30-50.8 As in
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`8 Papst includes additional arguments, which, although not conceded, have no impact
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`on patentability in this proceeding and thus need not be further addressed. See Resp.
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`at 9-10 (whether the ’399 patent is entitled to claim priority to the earlier German
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`patent application), 11-16 (the status of the Aytac source code as prior art), 17
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`(whether the AAPA is “nearly identical” or “analogous” to Aytac’s disclosure).
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`Papst’s references to IPR2017-00713 are also irrelevant. Id. at 43-45. The
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`the 1199 and 1200 IPRs, Papst argues that Aytac does not disclose the imported
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`IPR2017-00714
`Petitioner
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