`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`
`Case No. IPR2017-01808
`Patent No. 6,470,399 B2
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,470,399 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. § 42.100 et seq.
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`Petition for IPR of US 6,470,399
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`PETITIONER’S EXHIBIT LIST
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`Exhibit Description
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`Ex. 1001 U.S. Pat. No. 6,470,399 to Tasler (“the ’399 Patent”)
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`Ex. 1002 File History for U.S. Pat. No. 6,470,399
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`Ex. 1003 Declaration of Kevin C. Almeroth (“Almeroth Declaration”)
`
`Ex. 1004 Curriculum vitae of Kevin C. Almeroth
`
`Ex. 1005 U.S. Patent No. 5,758,081 to Aytac (“Aytac”)
`
`Ex. 1006 Am. Nat’l Standard Inst., Inc., Am. Nat’l Standard for Info.
`
`Sys’s, Small Computer System Interface-2, ANSI X3.131-
`
`1994 (1994) (the “SCSI Specification”)
`
`Ex. 1007 U.S. Patent No. 6,522,432 to Lin (“Lin”)
`
`Ex. 1008
`
`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255,
`
`1265 (Fed. Cir. 2015)
`
`Ex. 1009 Papst’s Opening Claim Constr. Brief and Appendix 8 of
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`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)
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`i
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`Petition for IPR of US 6,470,399
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`PETITIONER’S EXHIBIT LIST
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`Exhibit Description
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`Ex. 1010 Papst’s Opening Claim Constr. Brief and Decl. of Robert
`
`Zeidman, In re Papst Licensing Dig. Camera Pat. Litig.,
`
`MDL No. 1880, No. 1:07-mc-00493 (D.D.C. June 3, 2016)
`
`Ex. 1011 As-Filed Filed German priority document Patent Application
`197 08 755.8
`
`Ex. 1012
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`‘399 German Application Publication (DE 197 08 755)
`
`Ex. 1013 Certified Translation of Published ‘399 German Application
`(DE 197 08 755)
`
`Ex. 1014 English Translation of PCT Application PCT/EP98/01187
`(published as PCT Pub. No. WO98/39710)
`
`Ex. 1015 U.S. Patent No. 4,589,063
`
`Ex. 1016 U.S. Patent No. 5,038,320
`
`Ex. 1017 U.S. Patent No. 5,787,246
`
`Ex. 1018 Rufus P. Turner et al., The Illustrated Dictionary of
`
`Electronics (1991)
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`Ex. 1019
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`IPR2016-1200, Paper No. 8
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`Ex. 1020 Source code submitted with the Aytac application in 1995
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`
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`ii
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`Petition for IPR of US 6,470,399
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`PETITIONER’S EXHIBIT LIST
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`Exhibit Description
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`Ex. 1021 Papst’s Brief, In re Papst Licensing Digital Camera Patent
`Litig., No. 2014-1110 (Fed. Cir., February 20, 2014)
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`iii
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`I.
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`INTRODUCTION
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`Desktop and laptop computers that are “PCs” are direct descendants of the
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`original IBM PC, first released in 1981. The down-side to the open architecture is
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`the PC must be able to work with different peripherals. A PC manufacturer cannot
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`know, in advance, which make and model of printer, scanner, camera, speaker, or
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`microphone the customer may choose to purchase and install. Traditionally,
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`peripheral manufacturers provided specialized software – called “device drivers” –
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`that enabled the PC to communicate with the peripheral. A drawback to this
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`approach is that each peripheral required its own device driver, and different
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`device drivers were often incompatible with each other or with different PC’s. For
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`example, a printer connected to an existing computer may no longer be compatible
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`with a new computer.
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`To address this problem, computer companies proposed “plug-and-play”
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`systems that allowed peripherals to communicate with a PC without the need for
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`specialized device drivers for each peripheral. See e.g. Exs. 1015, 1016, and 1017.
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`The ‘399 Patent describes and claims one such system, but, as explained herein,
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`not the first.
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`The ‘399 Patent purports to describe an “interface device”—which may or
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`may not be built into the peripheral itself—that handles communications between a
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`peripheral and the host computer without requiring the use of different drivers for
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`-1-
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`Petition for IPR of US 6,470,399
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`different peripheral devices. Ex. 1001 at 3:20-43, 4:17-22. Thus, ‘399 Patent
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`discusses an “interface device” intended to eliminate the need for specialized
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`device drivers. When the interface device is connected to a host, it responds to the
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`host’s request for identification by “simulat[ing] both in terms of hardware and
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`software, the way in which a conventional input/output device functions, preferably
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`that of a hard disk drive,” for which the host system already has a working driver.
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`Ex. 1001, at 5:6-9 (emphasis added). And as the ‘399 patent admits, there were
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`well-established protocols for identifying, configuring, and controlling hard disks,
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`and every computer had a pre-installed device driver for communicating with a
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`hard disk. Ex. 1001, at 4:23-29. Ex 1003 at ¶¶43-45.
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`The interface device of the ‘399 Patent merely exploits these protocols and
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`identifies itself as a hard disk to the computer, regardless of the type of device it is
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`in fact. Ex. 1001, at 4:65-5:32; Ex 1003 at ¶¶ 43-44. In so doing, the peripheral is
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`able to communicate with the computer using the preexisting hard disk device
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`driver that apply well known protocols, rather than a specialized device driver. Id.
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`See also, Ex. 1003,at ¶¶62-83.
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`But this idea was well known before the ‘399 Patent was filed. For example,
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`U.S. Patent No. 5,758,081 to Aytac (“Aytac” or Ex. 1005) describes a device
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`referred to as a “CaTbox” that provides an interface for handling communications
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`between a host computer and various peripheral devices (e.g., Fax modems 308-11,
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`2
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`Petition for IPR of US 6,470,399
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`“printer 103,” “Central Office 123” and accompanying telephone lines, “scanner
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`104,” “speaker 124,” “microphone 125,” “receiver 107”, “handset 105,” etc.). Ex.
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`1005, at 8:61-9:4, Fig. 1; Ex. 1003 at ¶57. Regardless of which one or more of
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`these peripherals is connected to the CaTbox, however, a PC sees the CaTbox as a
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`hard disk customarily found in such computers. Ex. 1005 at 4:49-50; Ex. 1003, at
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`¶¶ 154-56. In the preferred embodiment, the “CaTbox look[s] like a SCSI disk to
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`the PC” in accordance with “a specification of SCSI.” Ex. 1005, at 4:49-53.
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`It was also known to configure an interface device to send a signal to a host
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`device indicating that it is a storage device customary in the host device – so the
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`host device can communicate with the interface device by using the driver for the
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`storage device customary in a host device. Aytac, with the known teachings of the
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`SCSI Specification, proves that this idea was not new as of the effective filing date
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`of the ‘399. Ex. 1005, at 10:52-58. Indeed, the source code filed with the Aytac
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`patent application proves that this was known to a POSA before the `399 patent
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`was filed. Ex. 1020, at 114-16, Ex. 1003, at 60, 155.
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`This Petition demonstrates that claims 1-3, 5, 6, 11, 14 and 15 (the
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`“Challenged Claims”) of the ‘399 Patent are unpatentable under pre-AIA 35
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`U.S.C. § 103(a), and that there is a reasonable likelihood that Petitioner will prevail
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`based on prior art the U.S. Patent and Trademark Office (“PTO”) did not consider
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`3
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`Petition for IPR of US 6,470,399
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`during prosecution. Accordingly, and for the reasons set forth below, Petitioner
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`respectfully requests inter partes review of the Challenged Claims.
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`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. (collectively, “Olympus”) and Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. (collectively, “Samsung”) (Olympus and Samsung,
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`collectively, “Petitioner”). Petitioner further identifies the following parties as real-
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`parties-in interest, because they are the petitioners on a substantively identical
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`petition with which Petitioner seeks joinder: ZTE (USA) Inc. and ZTE
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`Corporation.
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`In addition, out of an abundance of caution, Petitioner brings to the Board’s
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`attention: Canon Inc.; Canon USA, Inc.; Canon Financial Services, Inc.;
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`FUJIFILM Corporation; FUJIFILM Holdings America Corporation; FUJIFILM
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`North America Corporation; JVC KENWOOD Corporation; JVCKENWOOD
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`USA Corporation; Nikon Corporation; Nikon Inc.; Panasonic Corporation;
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`Panasonic Corporation of North America; Hanwha Techwin Co., Ltd. (f/k/a
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`Samsung Techwin Co., Ltd.); Samsung Opto-Electronics America, Inc.; Sanyo
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`Electric Co., Ltd.; Sanyo North America Corp.; and HP Inc. (f/k/a/ Hewlett-
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`Packard Company), who are co-defendants with Petitioner Olympus in the pending
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`Petition for IPR of US 6,470,399
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`multi-district litigation identified below (MDL 1880) but are not real parties-in-
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`interest to this proceeding; and Apple Inc.; LG Electronics, Inc.; LG Electronics
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`U.S.A., Inc.; LG Electronics Mobilecomm U.S.A., Inc.; Lenovo (United States)
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`Inc.; Motorola Mobility LLC; Huawei Technologies Co., Ltd.; and Huawei
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`Technologies USA, Inc., who are consolidated co-defendants with Petitioner
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`Samsung in the pending lead case in the Eastern District of Texas identified below
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`(6-15-cv-01095) but are not real parties-in-interest to this proceeding. None of
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`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. §
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`312(a)(2).
`
`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
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`the Eastern District of Texas: 6-15-cv-01095 (lead case), 6-15-cv-01099, 6-15-cv-
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`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
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`the United States District Court for the District of Columbia: 1-06-cv-0175, 1-07-
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`cv-01118, 1-07-cv-01222, 1-07-cv-02086, 1-07-cv-02087, 1-07-cv-02088, 1-08-
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`cv-00865, 1-08-cv-00985, 1-08-cv-01404, 1-08-cv-01405, 1-08-cv-01406, 1-08-
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`cv-01407, 1-08-cv-01433, 1-09-cv-00530, and 1-07-mc-00493 (MDL 1880).
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`5
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`Petition for IPR of US 6,470,399
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`Petitioner is aware of the following litigations involving the ’399 Patent in
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`the Northern District of Illinois: 1-08-cv-03627, 1-08-cv-03606, 1-08-cv-03609, 1-
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`08-cv-03608, 1-08-cv-02510, 1-08-cv-01218 and 1-07-cv-03401.
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`Petitioner is aware of the following litigation involving the ’399 Patent in
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`the Northern District of California: 5-08-cv-01732.
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`Petitioner is aware of the following litigation involving the ’399 Patent in
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`the District of Delaware: 1-07-cv-00415.
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`Petitioner is aware of the following litigation involving the ’399 Patent in
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`the District of New Jersey: 2:07-cv-4940.
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`Petitioner understands that all currently pending litigations not pending in
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`the Eastern District of Texas have been consolidated into MDL 1880.
`
`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,
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`IPR2016-01843,
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`IPR2016-01864,
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`IPR2017-00443, IPR2017-00714, and IPR2017-01682.
`
`Petitioner is aware of the following inter partes review Petitions filed for
`
`related U.S. Patent No. 6,895,449: IPR2017-00415, IPR2017-00448, IPR2017-
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`00713, and IPR2017-01617.
`
`Petitioner is aware of the following inter partes review Petitions filed for
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`related U.S. Patent No. 8,504,746: IPR2016-01200, IPR2016-01206, IPR2016-
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`6
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`Petition for IPR of US 6,470,399
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`01211,
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`IPR2016-01213,
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`IPR2016-01223,
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`IPR2016-01224,
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`IPR2016-01862,
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`IPR2016-01863, IPR2017-00158, IPR2017-00449, IPR2017-00678, and IPR2017-
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`00710.
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`Petitioner is aware of the following inter partes review Petitions filed for
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`related U.S. Patent No. 8,966,144: IPR2016-01199, IPR2016-01202, IPR2016-
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`01212,
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`IPR2016-01214,
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`IPR2016-01216,
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`IPR2016-01222,
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`IPR2016-01225,
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`IPR2016-01849, IPR2016-01860, IPR2017-00154, IPR2017-00670, IPR2017-
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`00672, IPR2017-00679, and IPR2017-00711.
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`Petitioner is aware of the following inter partes review Petition filed for
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`related U.S. Patent No. 9,189,437: IPR2016-01733, IPR2016-01840, IPR2016-
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`01841, IPR2016-01842, IPR2016-01844, IPR2017-00156, IPR2017-00712, and
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`IPR2017-01038.
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`C. Counsel and Service Information (37 C.F.R. § 42.8(b)(3) and
`(b)(4))
`
`Petitioner provides the following designation of counsel:
`
`Lead Counsel
`Backup Counsel
`Dion M. Bregman
`Andrew V. Devkar
`(pro hac vice application to be
`Reg. No. 45,645
`
`submitted)
`MORGAN, LEWIS & BOCKIUS LLP
`
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`2049 Century Park East, Suite 700
`T: 650.843.4000
`Los Angeles, CA 90067-3109
`F: 650.843.4001
`T: 310-907-1000
`dion.bregman@morganlewis.com
`F: 310-907-2000
`andrew.devkar@morganlewis.com
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`7
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`Petition for IPR of US 6,470,399
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`Ahren C. Hsu-Hoffman
`Reg. No. 50,862
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`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
`
`Brian C. Rupp
`Reg. No. 35,665
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`DRINKER BIDDLE & REATH LLP
`191 N. Wacker Dr., Suite 3700
`Chicago, IL 60606
`Telephone: 312-569-1000
`Facsimile: 312-569-3000
`Brian.Rupp@dbr.com
`
`Carrie A. Beyer
`Reg. No. 59,195
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`DRINKER BIDDLE & REATH LLP
`191 N. Wacker Dr., Suite 3700
`Chicago, IL 60606
`Telephone: 312-569-1000
`Facsimile: 312-569-3000
`Carrie.Beyer@dbr.com
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`8
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`Petition for IPR of US 6,470,399
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`Nikola Colic
`Reg. No. 62,412
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`DRINKER BIDDLE & REATH LLP
`1500 K Street, N.W. , Suite 1100
`Washington, DC 20005
`Telephone: 202-230-5115
`Facsimile: 202-842-8465
`Nick.Colic@dbr.com
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`
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`Powers of attorney accompany this Petition. Please address all correspondences to
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`lead and backup counsel. Petitioner consents to service by email.
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`III. FEES (37 C.F.R. § 42.103)
`The PTO is authorized to charge $23,000 ($9,000 request fee and $14,000
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`post-institution fees) to Deposit Account No. 50-0310. The PTO is also authorized
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`to charge all fees due at any time during this proceeding to Deposit Account No.
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`50-0310.
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`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioner certifies that the ‘399 Patent is available for inter partes review
`
`and Petitioner is not barred or estopped from requesting an inter partes review
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`challenging the ‘399 Patent on the grounds identified in the present Petition. See
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`37 CFR § 42.122(b).
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`9
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`Petition for IPR of US 6,470,399
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`B. Claims for Which Review is Requested (37 C.F.R. § 42.104(b)(1))
`Petitioner requests review of claims 1-3, 5, 6, 11, 14 and 15 of the ‘399
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`Patent (“Challenged Claims”).
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`C.
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`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
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`following grounds:
`
`Ground 1: Claims 1-3, 5, 6, 11, 14 and 15 are unpatentable under 35 U.S.C.
`
`§ 103(a) over U.S. Patent No. 5,758,081 to Aytac (Ex. 1005) in view of the SCSI
`
`Specification (Ex. 1006), Lin (Ex. 1007), and the admitted prior art in the ‘399
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`Patent (Ex. 1001).
`
`D. Relevant Dates for the Prior Art Relied Upon
`Aytac issued on May 26, 1998 from an application filed on December 8,
`
`1995, and is therefore prior art under at least 35 U.S.C. § 102(e).
`
`The SCSI Specification was published in 1994, and is therefore prior art
`
`under at least 35 U.S.C. §§ 102(a), 102(b).
`
`Lin issued on February 18, 2003 from an application filed on April 16, 1998,
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`and is therefore prior art under at least 35 U.S.C. § 102(e).
`
`Person of Ordinary Skill in the Art
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`E.
`A person of ordinary skill in the art of the ‘399 Patent at the time of the
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`alleged invention (“POSITA”) would have a four-year degree in electrical
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`Petition for IPR of US 6,470,399
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`engineering, computer science, or related field of study. A POSITA would also
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`have either a masters degree, or at least two years of experience in the relevant
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`field, e.g., computer science, computer systems, or peripheral devices. Ex. 1003,
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`¶46-49.
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`F. Unpatentability of the Construed Claims (37 C.F.R. §
`42.104(b)(4))
`
`Claims 1-3, 5, 6, 11, 14 and 15 of the ‘399 Patent are unpatentable under the
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`statutory ground(s) identified above, as explained in Section VII below.
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`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
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`The exhibit numbers of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge, are
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`provided in Section VII, below, and the Exhibit List above.
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`V. THE ‘399 PATENT
`A. Overview of the ‘399 Patent
`The ‘399 Patent generally describes an interface designed to facilitate the
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`transfer of data between a host computer and another device on which data can be
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`placed or from which data can be acquired. Ex. 1001, at Title and Abstract. While
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`the ‘399 Patent admits such devices were known at the time of the invention, it
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`states they typically “require very sophisticated drivers” to be downloaded onto the
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`host computer, but such drivers “are prone to malfunction and . . . limit data
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`transfer rates.” Id. at 1:23-33.
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`The ‘399 Patent describes that an “interface device” eliminates the need for
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`specialized device drivers. When the interface device of the invention is connected
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`to a host, it responds to the host’s request for identification by “simulat[ing] both in
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`terms of hardware and software, the way in which a conventional input/output
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`device functions, preferably that of a hard disk drive,” for which the host system
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`already has a working driver. Id. at 5:6-9 (emphasis added). By responding in that
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`manner, the interface device induces the host to treat it-and, indirectly, data devices
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`on the other side of the interface device, no matter what type of devices they are-
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`like the device that is already familiar to the host. Thereafter, when the host
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`communicates with the interface device to request data from or control the
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`operation of the data device, the host uses its pre-installed device driver, and the
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`interface device translates the communications into a form understandable by the
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`connected data device. See id. at 3:25-4:39. The interface device of the ‘399 Patent
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`does not require a “specially designed driver” for the interface device be loaded
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`into a host computer. Id. at 4:17-22, 8:43-50.
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`Priority Date of the Claims of the ‘399 Patent
`
`B.
`The ‘399 Patent claims priority to PCT application PCT/EP98/01187 filed
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`on March 3, 1998 (Ex. 1014), which claims priority to a German application filed
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`12
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`Petition for IPR of US 6,470,399
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`on March 4, 1997 (Ex. 1011). The German application was published as German
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`publication no. 19708755 A1 (Ex. 1012). A certified translation of the German
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`priority application is provided as Ex. 1013.
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`As discussed more fully in the accompanying declaration of Kevin Almeroth
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`(Ex. 1003), claims 1-15 of the ‘399 Patent are not entitled to claim priority to the
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`German priority application as the Patent Owner added new matter to its PCT
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`application (Ex. 1014), subject matter that was included in claims 1-15 but not
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`supported in the German priority application. Consequently, the ‘399 Patent claims
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`are not entitled to a benefit date earlier than the actual filing date of the PCT
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`application, March 3, 1998. Ex. 1003, ¶¶ 181-89.
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`To benefit from the filing date of an earlier application, each application in
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`the chain leading back to the earlier application must comply with the written
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`description requirement of 35 U.S.C. § 112, first paragraph. The earlier application
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`must clearly convey to skilled artisans the subject matter later claimed. Because the
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`German priority application filed on March 4, 1997 (Ex. 1011) does not disclose a
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`multi-purpose interface, the ‘399 patent does not get priority back to this
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`application.
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`The table in the Almeroth declaration (Ex. 1003, at ¶ 184) compares the
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`disclosure of the certified translation of published German Application (DE 197 08
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`755) filed on March 4, 1997 (Ex. 1013) to the disclosure in the filed PCT
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`Petition for IPR of US 6,470,399
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`application. The table shows that the German application did not disclose a multi-
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`purpose interface, as recited in all of the independent claims of the ‘399 patent.
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`The claims of the ‘399 patent thus are not entitled to a priority date earlier
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`than
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`the March 3, 1998
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`filing date of
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`the
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`international application
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`PCT/EP98/01187 (Ex. 1014) because the German priority application does not
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`convey to a POSA that, as of the filing date sought, the inventor was in possession
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`of at least the “inquiry from the host device as to the type of a device attached at
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`the multi-purpose interface of the host device” described in claims 1 and 11 and
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`the “inquiring by the host device at the interface device as to the type of device to
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`which the multi-purpose interface of the host device is attached” described in claim
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`14.
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`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
`In an inter partes review, the Board construes claim terms in an unexpired
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`patent according to their broadest reasonable construction (“BRC”) in light of the
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`specification. 37 C.F.R. § 42.100(b). Under this standard, claim terms are given
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`their ordinary and accustomed meaning as would be understood by one of ordinary
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`skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`For this proceeding, Petitioner believes the Challenged Claims should be
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`interpreted consistent with their ordinary and customary meaning within the
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`context of the ‘399 Patent. Further context regarding the meaning of certain terms
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`is set forth below.1
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`“data transmit/receive device” (claims 1, 3, 6, 11, and 14)
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`1.
`This term is recited in claims 1, 3, 6, 11, and 14. The broadest reasonable
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`construction encompasses “a device capable of transmitting data or transmitting
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`and receiving data.” Support for this construction can be found in the specification,
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`which discloses “a data transmit/receive device which is to receive data from the
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`host device or from which data is to be read, i.e. acquired, and transferred to the
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`host device.” Ex. 1001, at 5:56-60; Ex. 1003,¶ 51.
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`2.
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`“the driver for the input/output device customary in a host
`device” (claim 1)
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`For this proceeding, under the BRC standard, this term should be interpreted
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`to encompass (at a minimum) “the driver for the input/output device normally part
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`of commercially available computer systems,” as Patent Owner has proposed in
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`litigation. Ex. 1010, at 29; Ex. 1003, ¶52.
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`“the usual driver for the input/output device” (claim 14)
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`3.
`For this proceeding, under the BRC standard, this term should be interpreted
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`to encompass (at a minimum) “the set of software routines used to direct a data
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`1 Petitioner reserves the right to propose different constructions in other
`proceedings and in particular district court litigation, for which the narrower claim
`construction standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`would apply.
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`input/output device normally part of commercially available computer systems,” as
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`Patent Owner has proposed in litigation. Ex. 1009, at 23; Ex. 1003, ¶ 53.
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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, ¶ 54.
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`“interface device” (claims 1, 11, 14)
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`5.
`This term, recited in claims 1, 11 and 14, was considered by the Federal
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`Circuit, which stated that an interface device “is not limited to . . . a device that is
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`physically separate and apart from, and not permanently attached to, a data device
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`(or a host computer).” Ex. 1008, at 7; Ex. 1003, ¶55. Under the broadest reasonable
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`construction standard, this term should be interpreted to encompass (at a
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`minimum) that construction.
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`VI. SUMMARY OF REFERENCES APPLIED IN THIS PETITION
`A. U.S. Pat. No. 5,758, 081 Aytac (Ex. 1005)
`Overview
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`Aytac teaches a multi-function data generating and processing device,
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`termed by the inventor the “CaTbox,” as an allusion to the way the device sits as
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`an interface device between Computing and Telecommunications apparatus. Ex.
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`1005, 4:8-14; Ex. 1003, ¶ 56. As explained in the claim analysis below, Aytac’s
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`CaTbox meets all the limitations, both structurally and functionally, of the
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`Challenged Claims when combined with the SCSI Specification referred to in the
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`Aytac disclosure.
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`In the preferred embodiment, various peripheral data transmit/receive
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`devices are attached to the CaTbox 102 as depicted below in Figure 1. Ex. 1005,
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`8:61-9:4; Ex. 1003, ¶ 57.
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`
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`Thus, CaTbox 102 receives inputs transmitted from these various peripheral
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`data transmit/receive devices, including printer 103, scanner 104, telephone
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`network 123 (connecting fax machines and telephones via phone lines 116, 118,
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`120, and 122, fax modems 308-311), telephone handset 105, telephone receiver
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`107, microphone 125, and speaker 124. Id.; Ex. 1003, ¶¶ 57-61. Such peripheral
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`devices send and/or receive data that is shared with or from the host computer
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`including, without limitation, scanned and/or fax images and voice data (from
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`telephone lines). Id. The CaTbox modems 308-311 convert between analog signals
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`and digital representations of fax images, voice mail, and other types of data. Id.;
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`Ex. 1003, ¶¶ 59, 93-94. These peripheral devices may transmit and/or receive
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`information to/from CaTbox, and be stored as digital files on CaTdisc under the
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`control of X86 processor 201. Ex. 1005, at id., Abstract; Ex. 1003, ¶¶ 120-122.
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`Aytac discusses how these peripheral data transmit/receive devices may be tied in
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`to the CaTbox through various connections such as, for example, elements 312-319
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`and 321. See Ex. 1005, 9:5-52, Fig. 3; Ex. 1003, ¶¶ 128-129.
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`Regardless of what peripheral data transmit/receive devices are plugged in to
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`the CaTbox, CaTbox 102 presents itself to the host as a “SCSI disk”, and
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`communicates with PC 101 solely over a SCSI interface 113. Ex. 1001, at 4:39-53;
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`6:16-20, 10:28-29.
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`CaTbox 102 has both program memory (BIOS EPROM 222, RAM 203,
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`portions of CaTdisc storing CaTOS 590) and data memory (RAM 203, portions of
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`CaTdisc, buffer memories within the modems). Ex. 1005, 9:5-15, 11:58-64.
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`CaTOS is built on MS-DOS, and CaTdisc uses a DOS-FAT file system. Ex. 1005,
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`11:65-12:39; Ex. 1003, ¶¶ 120-123. CaTbox data processing, storage and
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`communications operations are controlled by the processor 201 and its associated
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`chipset 221. See Ex. 1005, at 9:5-15, Fig. 2 (below).
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`CaTbox 102 includes motherboard 200 and daughter boards 308-311
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`mounted within casing 300, as depicted in Figures 3 and 4 below:
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`DOS system too run MS-D
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`CCaTbox 102 includess BIOS codde which aallows the
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`and appplications ffor controllling varioous CaTbo
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`x functionns. Ex. 10005, at 8:200-23,
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`11:65-667, Fig. 5;
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`Ex. 1003,
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`¶¶ 122. NNot surprisiingly, in c
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`onnection
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`with a “mmulti-
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`purpose interface,” both Aytac’s ‘081 patent and Tasler’s ‘399 patent disclose the
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`use of an ASPI driver as an exemplary “specific driver.” Ex. 1001, at 11:9-22; Ex.
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`1005, at 10:53-66; Ex. 1003, ¶ 160.
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`In particular, Aytac discloses “[a]n ASPI driver such as ASPI2DOS.SYS
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`521” for use as the driver specific to the SCSI interface (the multi-purpose
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`interface). Ex. 1005, at 10:53-54. The ‘399 discloses that “[g]enerally speaking,
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`this multi-purpose interface driver has the task of moving precisely specified SCSI
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`commands from the host system program to the host system SCSI adaptor.” Ex.
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`1001, at 11:19-22. This is exactly what Aytac’s ASPI2DOS.SYS driver does.
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`Aytac even points out that the ASPI2DOS.SYS driver “provides the SCSI interface
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`layer to all LUNs on CaTbox 102 SCSI node, as well as other SCSI nodes,” which
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`necessarily involves moving the SCSI commands from the PC program to the
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`SCSI adaptor. Ex. 1005, at 10:53-56. The CaTbox hard disk drive (CaTdisc) can
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`also be accessed by the host PC for tasks such as retrieving or playing a voicemail
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`recording, reading or printing a stored fax, retrieving and reading a scanned a
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`document, and transferring data received via a modem. Ex. 1005, at 7:56 -8:26,
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`17:41-18:13, Fig. 5; Ex. 1003, ¶¶ 178-180.
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`Under control of processor 201, when CaTbox and PC 101 are operatively
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`interfaced through the SCSI connection, a recognition process is carried out using
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`standard SCSI procedures whereby the PC side issues an INQUIRY command and
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`CaTbox responds that it is a SCSI disk drive. Ex. 1003, at ¶143. It is not necessary
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`for an end user to load any additional software on the PC to carry out the SCSI
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`recognition process.
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`Following the recognition process, CaTbox looks like a hard disk to PC 101.
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`Ex. 1005, 4:49-50, 10:28-29; Ex. 1003, ¶¶ 152, 168, 178. Files of digitized analog
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`data stored on CaTdisc can then be accessed by and transferred to PC 101
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`involving control by processor 201, without requiring any user-loaded transfer
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`enabling software installed on PC 101. See Section VI.; Ex. 1003, ¶ 152.
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`CaTbox is capable of numerous functions in addition to those described
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`herein, for example, remote fax server and print server functions. Ex. 1005, 10:36-
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`40; Ex. 1003, ¶ 59. For implementing those functions, additional software may be
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`loaded on PC 101 in addition to the standard SCSI software. Ex. 1003, ¶ 91.
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`However, neither the additional software nor additional functionality are required
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`for the above-described recognition and data file transfer functions. Ex. 1003, ¶¶
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`142-150.
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`Aytac Source Code
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`Aytac’s disclosure describes the ‘399 Patent’s claimed invention better than
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`the specification of the ‘399 Patent. In addition to the Aytac disclosure itself, 450
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`pages of source code were submitted with the Aytac application in 1995. This
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`source code demonstrates a working embodiment of the invention that Papst tries
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`Petition for IPR of US 6,470,399
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`to claim in the `399 Patent. The Aytac Patent discloses details about its CaTbox
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`device, and includes source code utilized in an actual implementation of CaTbox
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`and which supplements the other disclosures in the Aytac Patent. The source code
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`was filed with the Office as part of underlying Application No. 08/569,846. Ex.
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`1002 (Aytac Patent file wrapper, pages 77-527). The Office did not print the source
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`code as part of the issued patent because the total number of pages (450) exceeded
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`the ten-page limit in effect at the relevant time, but Aytac’s application transmittal
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`letter and the title page indicate that the source code was filed as an integral part of
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`the application. Ex. 1002, at 4, 77. Aytac’s mode of filing the source code followed
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`the requirements for computer listing filings in effect as of the application date.
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`See e.g, MPEP 6th ed., Rev. 1, Sept. 1, 1995, § 608.05. The Aytac source code
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`supplements the disclosures of the Aytac Patent and further evidences the
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`functionality of CaTbox at the time the Aytac application was filed.
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`Petitioner is mindful that the PTAB has decided, in instituting an IPR on a
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`patent related to the `449 Patent, that the Aytac source code is not part of the Aytac
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`patent disclosure, but rather that the source code may be relied upon to show the
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`level of ordinary skill in the art at or around the time of the invention of the `449
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`Patent. See IPR2016-1200, Pape