`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`OLYMPUS CORPORATION and OLYMPUS AMERICA INC.
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`
`Case No. IPR2017-01682
`Patent No. 6,470,399 B1
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`6,470,399 B1 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 6,470,399 B1 to Tasler
`
`File History for U.S. Patent No. 6,470,399
`
`Declaration of Dr. Kevin Almeroth
`
`Curriculum vitae of Kevin C. Almeroth
`
`U.S. Patent No. 5,508,821 to Murata
`
`Friedhelm Schmidt, The SCSI Bus and IDE Interface (1995)
`The Microsoft Press® Computer Dictionary (2nd ed. 1994)
`
`U.S. Patent No. 6,522,432 to Lin
`
`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)
`
`Am. Nat’l Standards Inst., Inc., Am. Nat’l Standard for Info.
`Sys’s, Small Computer Sys. Interface-2, ANSI X3.131-1994
`(1994) (“SCSI Specification”)
`
`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255,
`1265 (Fed. Cir. 2015)
`The Microsoft Press© Computer Dictionary (2nd ed. 1994)
`
`U.S. Patent No. 5,850,484 to Beretta et al.
`
`Intentionally left blank
`
`ii
`
`Exhibit
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`
`
`
`

`

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

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`I.
`
`INTRODUCTION
`
`Desktop and laptop computers that are “PCs” are direct descendants of the
`
`original IBM PC, first released in 1981. The PC owes its longevity, in part, to its
`
`open architecture. A PC manufactured by Dell may have a CPU manufactured by
`
`Intel, a graphics card manufactured by Nvidia, a monitor manufactured by Sony, a
`
`keyboard and mouse manufactured by Logitech, and a printer manufactured by HP.
`
`The down-side to the open architecture is the PC must be able to work with a
`
`broad array of different peripherals. A PC manufacturer cannot know, in advance,
`
`which make and model of printer, scanner, camera, speaker, or microphone the
`
`customer may choose
`
`to purchase and
`
`install. Traditionally, peripheral
`
`manufacturers provided specialized software—called “device drivers”—that
`
`enabled the PC to communicate with the peripheral. A drawback to this approach
`
`is that each peripheral required its own device driver, and different device drivers
`
`were often incompatible with other models. For example, a printer connected to an
`
`existing computer may no longer be compatible with a new computer.
`
`To address this problem, computer companies have proposed “plug-and-
`
`play” systems that allow a peripheral to communicate with a PC without the need
`
`to install specialized device drivers for each peripheral. See U.S. Patent Nos.
`
`4,589,063 (Ex. 1018), 5,038,320 (Ex. 1019), and 5,787,246 (Ex. 1020). The '399
`
`Patent describes and claims one such system.
`
`
`
`1
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`The ’399 Patent describes an “interface device”—which might be built into
`
`the peripheral itself that handles all communications between the peripheral and
`
`the computer. The interface device pretends to be a standard peripheral—one for
`
`which the computer already has a device driver. For example, by the late 1990s,
`
`when the application leading the ’399 Patent was filed, every desktop and laptop
`
`computer had a hard disk. Ex. 1001, at 5:9-13. 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.
`
`The interface device of the '399 Patent exploits these protocols and pretends to be a
`
`hard disk. Ex. 1001, at 5:6-9, 5:67-6:3. The peripheral—regardless of whether it is
`
`a scanner, a printer, a webcam, or any other type of device
`
`appears
`
`to
`
`the
`
`computer to be a hard disk. The peripheral is therefore able to communicate with
`
`the computer using the pre-existing hard disk device driver, eliminating the need
`
`for a specialized device driver.
`
`This idea was well-known before the ’399 Patent, and the interface device
`
`described and claimed in the ’399 Patent was no leap forward in the art. U.S.
`
`Patent No. 5,508,821 Murata (“Murata”) (Ex. 1005) describes a scanner having an
`
`“interface means” for communicating with a computer and a “file system
`
`emulation means” for simulating a hard disk. Murata, at 1:64-67. Murata's scanner
`
`“looks like” a hard disk to the computer. Id. at 4:20-23. The scanner communicates
`
`
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`with the computer “using the device driver for existing hard discs,” so the scanner
`
`does not need its own device driver. Id. at 2:8-12.
`
`It also was known to configure an interface device to send a signal to the
`
`host device indicating that it is a storage device customary in a host device, so the
`
`host device communicates with the interface device by using the driver for the
`
`storage device customary in a host device. Murata, at 6:33-39, 7:54-55; see also
`
`1:9-12, 4:11-15; Ex. 1006 (“Schmidt”), at 122, 133 (Table 12.1), 137 (Table 12.8),
`
`138 (Table 12.10, showing the INQUIRY command 12h as Type “M”), 139-40.
`
`Additionally, arranging an interface device for simulating a virtual file system to
`
`the host was also known. Murata, at 6:17-19, 7:31-35.
`
`This Petition demonstrates that claims 1-8, 10-11, and 13-15 of the '399
`
`Patent are unpatentable under pre-AIA 35 U.S.C. § 103(a), and that there is a
`
`reasonable likelihood that Petitioners Olympus Corporation and Olympus America,
`
`Inc. (collectively, “Petitioners” or “Olympus”) will prevail based on prior art the
`
`U.S. Patent and Trademark Office (“PTO”) did not consider during prosecution.
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real-parties-in interest are: Olympus Corporation and Olympus America
`
`Inc. Olympus further identifies the following parties as real-parties-in interest,
`
`because they are the petitioners on a substantively identical petition with which
`
`
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`Olympus seeks joinder: Huawei Device USA Inc., Huawei Device Co., Ltd.,
`
`Huawei Device (Dongguan) Co., Ltd., Huawei Technologies Co., Ltd., Huawei
`
`Technologies USA, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., LG
`
`Electronics Mobilecomm U.S.A., Inc., ZTE (USA) Inc, and ZTE Corporation.
`
`In addition, out of an abundance of caution, Petitioners bring to the Board’s
`
`attention: Canon Inc.; Canon USA, Inc.; Canon Financial Services, Inc.;
`
`FUJIFILM Corporation; FUJIFILM Holdings America Corporation; FUJIFILM
`
`North America Corporation; JVC KENWOOD Corporation; JVCKENWOOD
`
`USA Corporation; Nikon Corporation; Nikon Inc.; Panasonic Corporation;
`
`Panasonic Corporation of North America; Samsung Electronics Co., Ltd.;
`
`Samsung Electronics America, Inc.; Hanwha Techwin Co., Ltd. (f/k/a Samsung
`
`Techwin Co., Ltd.); Samsung Opto-Electronics America, Inc.; Sanyo Electric Co.,
`
`Ltd.; Sanyo North America Corp.; and HP Inc. (f/k/a/ Hewlett-Packard Company),
`
`who are co-defendants with Petitioner Olympus in the pending multi-district
`
`litigation identified below (MDL 1880) but are not real parties-in-interest to this
`
`proceeding. None of these parties financed or controlled this petition (or had the
`
`opportunity to exercise control over this petition) or otherwise meets the
`
`requirements of 35 U.S.C. § 312(a)(2).
`
`
`
`4
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`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-01095, 6-15-cv-01099, 6-15-cv-01100, 6-
`
`15-cv-01102, 6-15-cv-01111, and 6-15-cv-01115.
`
`Petitioner is aware of the following litigations involving the ’399 Patent in
`
`the United States District Court for the District of Columbia: 1-06-cv-0175, 1-07-
`
`cv-01118, 1-07-cv-01222, 1-07-cv-02086, 1-07-cv-02087, 1-07-cv-02088, 1-08-
`
`cv-00865, 1-08-cv-00985, 1-08-cv-01404, 1-08-cv-01405, 1-08-cv-01406, 1-08-
`
`cv-01407, 1-08-cv-01433, 1-09-cv-00530, and 1-07-mc-00493 (MDL 1880).
`
`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 and 1-07-cv-03401.
`
`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 Petitions for U.S.
`
`Patent No. 6,470,399:
`
`IPR2016-01839,
`
`IPR2016-01843,
`
`IPR2016-01864,
`
`IPR2017-00443, and IPR2017-00714.
`
`
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`Petitioner is aware of the following inter partes review Petitions for U.S.
`
`Patent No. 6,895,449: IPR2017-00415, IPR2017-00448, IPR2017-00713, and
`
`IPR2017-01617.
`
`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, IPR2017-00158, IPR2017-00449, IPR2017-00678, and IPR2017-
`
`00710.
`
`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, IPR2017-00154, IPR2017-00670, IPR2017-
`
`00672, IPR2017-00679, and IPR2017-00711.
`
`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, IPR2017-00156, IPR2017-00712, and
`
`IPR2017-01038.
`
`3.
`
`Counsel and Service Information (37 C.F.R. § 42.8(b)(3)
`and (b)(4))
`
`Petitioners provide the following designation of counsel:
`
`6
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`Backup Counsel
`Andrew V. Devkar
`(pro hac vice application to be
`submitted)
`
`MORGAN, LEWIS & BOCKIUS LLP
`1601 Cloverfield Blvd., Suite 2050N
`Santa Monica, CA 90404-4082
`T: 310-907-1000
`F: 310-907-2000
`andrew.devkar@morganlewis.com
`
`Ahren C. Hsu-Hoffman
`Reg. No. 50,862
`
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`T: 650.843.4000
`F: 650.843.4001
`ahren.hsu-hoffman@morganlewis.com
`
`Ehsun Forghany
`(pro hac vice application to be
`submitted)
`
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`T: 650.843.4000
`F: 650.843.4001
`ehsun.forghany@morganlewis.com
`
`
` power of attorney accompanies this Petition. Please address all correspondences
`
`to lead and backup counsel. Petitioners consent to service by email.
`
`
`
`
`
`7
`
`Lead Counsel
`Dion M. Bregman
`Reg. No. 45,645
`
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`T: 650.843.4000
`F: 650.843.4001
`dion.bregman@morganlewis.com
`
`
`
`
`
`
`
` A
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`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. 50-0310. The PTO is also authorized
`
`to charge all fees due at any time during this proceeding to Deposit Account No.
`
`50-0310.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioners certify that the '399 Patent is available for inter partes review and
`
`Petitioners are not barred or estopped from requesting an inter partes review
`
`challenging the ’399 Patent on the grounds identified in the present Petition. See
`
`37 CFR § 42.122(b).
`
`B. Claims for Which Review is Requested (37 C.F.R. § 42.104(b)(1))
`Petitioners request review of claims 1-8, 10-11, and 13-15 of the ’399 Patent
`
`(“challenged claims”).
`
`C.
`
`Statutory Grounds of Challenge and Prior Art Relied Upon for
`Each Ground (37 C.F.R. § 42.104(b)(2))
`
`The challenged claims should be cancelled as unpatentable based on the
`
`following grounds:
`
`Ground 1: Claims 1-4, 6-8, 11, and 13-15 are unpatentable under 35 U.S.C.
`
`§ 103(a) in view of U.S. Patent No. 5,508,821 to Murata (Ex. 1005), Schmidt, The
`
`
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`SCSI Bus and IDE Interface (Ex. 1006), and U.S. Patent No. 6,522,432 to Lin (Ex.
`
`1008).
`
`Ground 2: Claim 5 is unpatentable under 35 U.S.C. § 103(a) in view of
`
`Murata, Schmidt, Lin, and The Microsoft Press® Computer Dictionary (Ex. 1013).
`
`Ground 3: Claim 10 is unpatentable under 35 U.S.C. § 103(a) in view of
`
`Murata, Schmidt, Lin, and U.S. Patent No. 5,850,484 to Beretta et al. (“Beretta”)
`
`(Ex. 1014).
`
`The ’399 Patent claims priority to German Patent Application DE 197 08
`
`755, filed March 4, 1997. For purposes of this proceeding, and without conceding
`
`the claims are in fact entitled to claim priority back to the alleged March 4, 1997
`
`priority date of the German Patent Application, Petitioners have assumed that the
`
`claims of the ’399 Patent are entitled to a priority date of no earlier than March 4,
`
`1997.
`
`Murata was issued on April 16, 1996, and is therefore prior art under at least
`
`35 U.S.C. §§ 102(a) and 102(e).
`
`Schmidt was published in 1995, and is therefore prior art under at least 35
`
`U.S.C. §§ 102(a) and 102(b).
`
`Lin was filed on April 16, 1996, issued on February 18, 2003, and is
`
`therefore prior art under at least 35 U.S.C. § 102(e).
`
`
`
`9
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`Beretta is a U.S. Patent that claims priority under 35 U.S.C. § 120 to
`
`Application No. 08/411,369 (Ex. 1016), filed on March 27, 1995. In Section VII.B
`
`below, Petitioners rely on Beretta, at 4:44-46, 4:56-61 4:65-67, 5:39-63, 10:1-6,
`
`and 10:1-18. As shown in Ex. 1017, these disclosures are also disclosed in the ’369
`
`Application. Accordingly, Beretta is prior art under 35 U.S.C. § 102(e).
`
`The Microsoft Press® Computer Dictionary was published in 1994, and is
`
`therefore prior under at least 35 U.S.C. § 102(b).
`
`Person of Ordinary Skill in the Art
`
`D.
`A person of ordinary skill in the art of the ’399 Patent at the time of the
`
`alleged invention (“POSITA”) would have a four-year degree in electrical
`
`engineering, computer science, or related field of study. A POSITA would also
`
`have either a master’s degree, or at least two years of experience in the relevant
`
`field, e.g., computer science, computer systems, or peripheral devices. Ex. 1003,
`
`1147.
`
`E. Unpatentability of
`42.104(b)(4))
`
`the Construed Claims
`
`(37 C.F.R. §
`
`Claims 1-8, 10-11, and 13-15 of the ’399 Patent are unpatentable under the
`
`statutory ground(s) identified above, as explained in Section VII below.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`F.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`
`
`10
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided in Section VII, below. An Exhibit List with the exhibit numbers and a
`
`brief description of each exhibit is set forth 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 1:23-31.
`
`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 5:7-9 (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
`
`
`
`11
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`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 4:23-5:32. 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 5:15.
`
`B. 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.1
`
`1 Petitioner reserves the right to propose different constructions in other
`
`proceedings and in particular district court litigation, for which the narrower claim
`
`
`
`12
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
`
`1.
`“data transmit/receive device” (claims 1, 3, 6, 8, 11, 14)
`The broadest reasonable construction of this term encompasses “a device
`
`capable of transmitting or receiving data.” This construction is consistent with the
`
`specification, which discloses “a data transmit/receive device which is to receive
`
`data from the 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. 1003,1149.
`
`2.
`
`“the driver for the input/output device customary in a host
`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. 1009, at 29; Ex. 1003, ¶50.
`
`“the usual driver for the input/output device” (claim 14)
`
`3.
`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 29; Ex. 1003, ¶51.
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`construction standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
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`would apply.
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`4.
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`“an input/output device customary in a host device” (claims
`1, 11, 14)
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`For this proceeding, under the BRC standard, this term should be interpreted
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`to encompass (at a minimum) “a data input/output device normally part of
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`commercially available computer systems,” as Patent Owner has proposed in
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`litigation. Ex. 1009, at 23; Ex. 1003,1152.
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`“interface device” (claims 1, 11, 14)
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`5.
`This term was previously considered by the Federal Circuit, which stated
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`that an interface device “is not limited to . . . a device that is physically separate
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`and apart from, and not permanently attached to, a data device (or a host
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`computer).” Ex. 1012, at 7; Ex. 1003, ¶53. Under the BRC standard, this term
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`should be interpreted to encompass that construction.
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`“virtual files” (claims 7, 8, and 10)
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`6.
`This term was previously considered by the Federal Circuit, which stated
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`that virtual files are not limited to a file “whose content is stored off the interface
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`device, though it includes such files.” Ex. 1012, at 11; Ex. 1003, 1154. Under the
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`BRC standard, this term should be interpreted to encompass that construction.
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`VI. SUMMARY OF THE REFERENCES APPLIED IN THIS PETITION
`A. U.S. Patent No. 5,508,821 to Murata (Ex. 1005)
`Murata describes several types of computer peripherals—including an image
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`scanner—each of which are able to communicate with a computer without the need
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`for “any new device driver.” Murata, at 1:58-61. The Murata devices
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`connect to the computer through a small computer system interface (SCSI) bus. Id.
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`at 1:17-37. SCSI is a multi-purpose interface that can be used to connect a variety
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`of different types of peripherals to a computer. As Murata explains, SCSI “is
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`standardized as an interface means for carrying out high-speed data transfer.
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`Through the standardization, the SCSI is in wide practical use today as an interface
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`for various computers.” Murata, at 1:18-21.
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`Peripherals connected through a SCSI interface generally require a device
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`driver to be installed on the host computer. Id. at 1:32-37. At the time, most
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`computers did not include a device driver for a scanner. Id. at 1:38-41 (“Because
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`image scanners . . . are not standardized in kind of parameters which can be set or
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`in functions, the device driver therefor is not generally contained in an operating
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`system (OS) of the computer. Accordingly, it is necessary to prepare the device
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`driver for the image scanner . . . connected to the host computer.”). The scanner in
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`Murata, however, does not require a specialized device driver. The scanner
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`includes a “file system emulation means for emulating a file system contained in
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`the external host computer.” Id. at 1:65-67. The scanner acts “as if it were a hard
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`disc.” Id. at 4:21. “Accordingly, the image scanner . . . looks like the hard disc
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`from the [computer] and can be handled as the hard disc.” Id. at 4:21-23. In
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`particullar, the sccanner is
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`able to ccommunicaate with tthe compuuter usingg the
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`computer’s custommary hard disk device driver. Idd. at 2:8-122.
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`modernn computerrs includingg PCs, worrkstations
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`and mainfframes are
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`equipped
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`with
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`a SCSI
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`interface.” Schmidtt, at v. Figgure 9.1 oof Schmidtt (below)
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`B.
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`Schmidt prrovides dettails of thee SCSI innterface. AAs of 1995
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`B S
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`(Ex. 1006))
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`Schmmidt, The SSCSI Bus and IDE IInterface
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`, “[a]lmosst all
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`illustrates
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`“[a]
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`simple
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`SCSI conffiguration”” where a
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`host adappter sends
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`SCSI buus to a diskk drive. Id.
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`SCSI commmands ovver a
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`SSCSI defines a numbber of deviice classess, such as
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`disk drive
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`s, as showwn in
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`2.1. Id. at
`Table 1
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`132-33. OOne of the
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`device
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`is an INNQUIRY ccommand
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`mandatorry commannds supporrted by a SSCSI
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`that “reqquests thatt informattion regarrding
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`parametters of the target aand its atttached perripheral ddevice(s) bbe sent too the
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`initiatorr.” Id. at 888. In respponse to aan INQUIRRY commmand, a deevice prov
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`among other parameters, its device class (e.g. disk drive class) “that are returned
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`from an INQUIRY command.” Id. at 132; see also id. at 133 (Table 12.1).
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`C. U.S. Patent No. 6,522,532 to Lin (Ex. 1008)
`Lin discloses a signal compensation circuit for use with an image scanner.
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`Lin, at Title and Abstract. The compensation circuit 24 includes a signal amplifier
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`30 for amplifying the image signal and brightness signal from the line image
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`sensor 22 to an appropriate voltage level, an A/D (analog-to-digital) converter 32
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`for digitizing the amplified image signal according to an adaptable reference
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`voltage, and a sampling circuit 34 for sampling the brightness signal and
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`generating a sample voltage 20. Id. at 3:14-24.
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`D. U.S. Patent No. 5,850,484 to Beretta et al. (Ex. 1014)
`Beretta discloses implementing an image compression engine in software as
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`an executable file. Beretta, at 10:1-6.
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`E.
`The Microsoft Press® Computer Dictionary (Ex. 1013)
`The Microsoft Press® Computer Dictionary discloses that a digital signal
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`processor is an integrated circuit that is designed for high speed data manipulation
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`and used in image manipulation and other data acquisition and control
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`applications. Ex. 1013, at 145.
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`VII. DETAILED EXPLANATION OF THE GROUNDS
`As set forth herein and in the Declaration of Dr. Almeroth (Ex. 1003), the
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`concepts claimed in the ’399 Patent were neither new nor non-obvious. Each
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`element of the challenged claims is disclosed in the prior art, and the references
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`cited in Grounds I–III render each of the challenged claims obvious. The
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`combination of prior art in Grounds I–III was not considered by the Examiner. In
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`addition, the Declaration of Dr. Almeroth was also not before the Examiner.
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`Accordingly, none of Grounds I–III present the same or substantially the same
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`prior art or arguments as were previously presented to the Office. 35 U.S.C.
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`§ 325(d).
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`A. Ground I: Claims 1-4, 6-8, 11, and 13-15 are Unpatentable Under
`35 U.S.C. § 103(a) Over the Combination of Murata, Schmidt and
`Lin
`1.
`Murata discloses a scanner connected to a host computer via a SCSI bus.
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`Rationale for Combining Murata, Schmidt and Lin
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`Murata, at Abstract. While Murata describes its improvement over the prior art as
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`allowing the “control of the apparatus or the transfer of image data [to] be carried
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`out using the device driver for existing hard discs” (id. at 2:10-12), Murata does
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`not disclose the details of the recognition as a hard disk. Schmidt provides a
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`detailed discussion of the device recognition process. A POSITA would have had
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`reason to combine Murata with Schmidt. Ex. 1003, ¶55.
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`Murata discloses that the scanner connects to the workstation via a SCSI
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`bus. Murata, at Figure 3. A POSITA would have looked to a reference, like
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`Schmidt, to provide details of the SCSI communications between a host computer
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`Petition for Inter Partes Review of U.S. Patent No. 6,470,399 B1
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`and a peripheral device that involve the peripheral device identifying its device
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`class and type to the host computer. Ex. 1003, ¶56. A “computer system is
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`connected to the SCSI bus through a host adapter.” Schmidt, at 79. Accordingly, a
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`POSITA would appreciate that the teachings of Schmidt could be implemented
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`through the SCSI controller and on the SCSI bus of Murata, and that Schmidt
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`provides the foundation for what a skilled artisan would have known regarding
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`SCSI. Ex. 1003, ¶56.
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`Murata discloses that the analog image signal 32 from CCD 31 is amplified
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`by an amplifier 33 and converted to a digital image signal 35 by an 8-bit A/D
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`converter 34.” Murata, at 3:24-29; Ex. 1003, ¶57. A POSITA would have also
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`looked to Lin to provide a sampling circuit, as used in the scanner of Lin, in
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`combination with the amplifier and A/D converter configuration within the scanner
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`of Murata. A skilled artisan would have understood that “[a]n A/D converter
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`periodically measures (samples) the analog signal and converts each measurement
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`to the corresponding digital value.” Ex. 1007, at 19; Ex. 1003, ¶58. Accordingly, a
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`POSITA would understand that the A/D converter used in Murata’s scanner would
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`have included or utilized a sampling circuit for sampling the analog data provided
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`by the data transmit/receive device2 (CCD 31). Ex. 1003,1158.
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`2 Italicized text refers to, among other things, claim recitations of the ’399 Patent.
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`TThe combinnation of MMurata, Schhmidt and
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`Lin is therrefore nothhing more
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`an appllication off known techniques
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`(SCSI siggnaling inn Schmidt
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`and use
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`of a
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`samplinng circuit
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`with an image scannner in Liin) to a kknown devvice (Mur
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`scannerr) to yield ppredictablee results (thhe scannerr identifiess and acts aas a SCSI
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`disk andd uses a saampling ciircuit in coonnection
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`Id., ¶59.
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`Claim 1
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`2.
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`a host devvice,
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`unication for commuce device fn interfac[1 preaamble]: An
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`which ccomprisess drivers ffor input/ooutput devvices custtomary in
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`a host deevice
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`and a mmulti-purpose interrface, andd a data ttransmit/rreceive devvice, the ddata
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`transmmit/receive device beiing arrangged for prroviding annalog dataa, comprissing:
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`TTo the exttent the preamble iss limiting
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`with perfoorming A/DD convers
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`ion).
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`, Murata
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`discloses
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`these feattures
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`20 (interfaface devicee) communnicates beetween a wworkstationn 21
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`becausee scanner
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`a charge ccoupled devvice (CCDD) 31 (dataa transmit/rreceive devvice)
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`within tthe scanneer. Ex. 10003, ¶¶60,
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`67. The CCCD 31 is arrangedd for proviiding
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`analog
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`data becauuse “the CCD 31 reaads the refllected lightt from the
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`documentt 2 at
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`and outpuuts an analoogue
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`a resoluution of 4000 dpi, connverts it too the electrric signal,
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`image ssignal 32.”” Murata,
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`at 3:24-277. Ex. 10003, 1166.
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`Accordingg to the Paatent
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`Owner, a CCD is a data trannsmit/receivve device.
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`Ex. 1003,
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`1165; Ex.
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`1022, at 222.
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`TThe workstation 21
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`includes
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`drivers
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`for inpuut/output ddevices cusstomary inn a host
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`device,
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`such as aa hard disk driver. EEx. 1003,
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`¶62. Murrata, at 2:
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`5-17, 4:300-36,
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`11:11-1
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`6. Worksttation 21 aalso includees a multi--purpose innterface, ssuch as a SSCSI
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`for connnecting thee scanner to the workkstation. Idd. at Abstraact, 2:61-33:1, 4:3-16
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`1003,