UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
` CANON, INC., CANON U.S.A., INC., CANON FINANCIAL SERVICES,
`INC., FUJIFILM CORPORATION, FUJIFILM HOLDINGS AMERICA
`CORPORATION, FUJIFILM NORTH AMERICA CORPORATION, JVC
`KENWOOD CORPORATION, JVC KENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION, PANASONIC
`CORPORATION OF NORTH AMERICA, SAMSUNG ELECTRONICS CO.,
`LTD., AND SAMSUNG ELECTRONICS AMERICA, INC.,
`PETITIONER,
`
`V.
`
`PAPST LICENSING GMBH & CO. KG,
`PATENT OWNER.
`______________
`
`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
`
` ______________
`
`Record of Oral Hearing
` September 13, 2017
`______________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L.
`QUINN, Administrative Patent Judges.
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
` CANON, INC., CANON U.S.A., INC., CANON FINANCIAL SERVICES,
`INC., FUJIFILM CORPORATION, FUJIFILM HOLDINGS AMERICA
`CORPORATION, FUJIFILM NORTH AMERICA CORPORATION, JVC
`KENWOOD CORPORATION, JVC KENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION, PANASONIC
`CORPORATION OF NORTH AMERICA, SAMSUNG ELECTRONICS CO.,
`LTD., AND SAMSUNG ELECTRONICS AMERICA, INC.,
`PETITIONER,
`
`V.
`
`PAPST LICENSING GMBH & CO. KG,
`PATENT OWNER.
`______________
`
`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
`
` ______________
`
`Record of Oral Hearing
` September 13, 2017
`______________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L.
`QUINN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DAVID M. MAIORANA, ESQUIRE
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`216.586.3939
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`PAUL B. HENKELMANN, ESQUIRE
`NICHOLAS T. PETERS, ESQUIRE
`FITCH, EVEN, TABIN & FLANNERY, LLP
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`312.577.7000
`
`
`
`
`The above-entitled matter came on for hearing on September 13,
`2017, commencing at 9:59 a.m. at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia in Courtroom A.
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
`
`P R O C E E D I N G S
` JUDGE CHANG: I'm administrative patent Judge Joni
` Chang. Here with me is Judge Jennifer Bisk and Judge Miriam
` Quinn, who is joining us remotely from Texas.
` I just want to double-check, Judge Quinn, can you
` hear us?
` JUDGE QUINN: Yes, I can hear you. Thank you.
` JUDGE CHANG: Okay. Great.
` At this time, I would like to ask the counsel to
` introduce yourselves and your colleagues beginning with the
` Petitioner.
` MR. MAIORANA: Good morning, Your Honor. David
` Maiorana for the Canon parties, lead counsel in the Kawaguchi
` IPRs that we'll be arguing this morning. We've got quite a
` cast of characters, it might take half our hearing time to
` introduce them all.
` JUDGE CHANG: Okay. No worry.
` MR. MAIORANA: But I do want to mention there is
` counsel here for Apple and LG, Ms. Gordon and Mr. Finn, who
` are joined to this Kawaguchi IPRs.
` JUDGE CHANG: Okay. Thank you.
` MR. PETERS: Good morning. Nick Peters on behalf
` of Pabst Licensing. I'm lead counsel. I also have my
` colleague, Paul Henkelmann, who will be addressing the
` Kawaguchi arguments today. And also I have litigation
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` counsel Rich Carl and Gregg Donahue from -- also representing
` Papst in other related matters.
` JUDGE CHANG: Thank you so much.
` MR. PETERS: Thank you.
` JUDGE CHANG: This is the consolidated oral hearing
` for IPR2016-01211, 1212, 1216, and 1225 involving U.S.
` Patents 8,966,144 and 8,504,749 -- I'm sorry, 746.
` Before we begin, I have a few procedural matters to
` go over. This oral hearing is open to the public. The
` transcript of this hearing will be entered into the official
` file of each of the IPR proceedings as well as in the record
` of IPR2016-01199, 1200, 1213, and 1214, which involve the
` same patent and have the same construction issues. The
` transcript of tomorrow's hearing regarding these cases also
` will be entered in each of the eight IPRs.
` So is there any questions as to that matter?
` Okay. Great.
` Early this week, we determined to expunge the
` original Petitioner's demonstrative exhibits found in
` IPR2016-01225 in view of the Patent Owner's objection,
` Paper 28. As to Slides 8 and 9 and pursuant to our
` authorization, the Petitioner refiled its demonstrative
` exhibit without those slides on September 11, 2017.
` Does either Petitioner -- either parties have any
` question as to the expungement and the refiling?
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` MR. MAIORANA: Not from Petitioners, Your Honor.
` JUDGE CHANG: Okay. Thank you.
` MR. PETERS: No questions from Papst.
` JUDGE CHANG: Okay. Thank you.
` We felt it was efficient to handle it as soon as we
` can so that we didn't delay this hearing.
` And please note that the demonstrative exhibits are
` not evidence, they're merely visual aids as to the oral
` hearing today. And further note that the image projected on
` the screen will not be visible to Judge Quinn. So the
` presenter may present only when standing at the podium so to
` make sure that Judge Quinn can hear it clearly, remotely.
` And also for clarity, please identify the specific slide
` number. I know sometimes during the presentation, I will
` remind the presenter if we get too far.
` And consistent with our order, each party has 60
` minutes to present each argument for IPR2016-01211, 1212, and
` 1216, involving prior art reference Kawaguchi.
` The Petitioner will proceed first to present its
` case as to the challenged claims. Thereafter, Patent Owner
` will respond to the Petitioner's case.
` Petitioner may reserve a small portion of its time
` for rebuttal responding to the Patent Owner's specific
` argument expressly presented during this oral hearing.
` Thereafter, we will take a 15-minute break before
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` the argument for the IPR2016-0115.
` Is there any questions as to the format of this
` oral hearing?
` MR. MAIORANA: Nothing from Petitioners, Your
` Honor.
` JUDGE CHANG: Okay.
` MR. PETERS: Nothing from the Patent Owner.
` JUDGE CHANG: Okay. Thank you.
` And, of course, if you need -- anyone needs a
` break, please let us know. If there's any emergency, we will
` accommodate that.
` Okay. And without further ado, please counsel for
` Petitioner, you may start whenever you like.
` MR. MAIORANA: Thank you, Your Honor.
` JUDGE CHANG: Do you have a copy of the
` demonstrative for the court reporter?
` MR. MAIORANA: Yes, I've already provided those for
` Petitioner's demonstratives.
` Would the panel like hard copies as well? I have
` extra copies, if you like.
` JUDGE CHANG: Sure. I would like a copy.
` MR. MAIORANA: Okay.
` May I approach, Your Honor?
` JUDGE CHANG: Yes, please.
` MR. MAIORANA: Your Honor, I would like to reserve
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` ten minutes of my 60 for rebuttal if that's okay with the
` panel.
` JUDGE CHANG: Okay.
` MR. MAIORANA: Good morning, Your Honors. My name
` is David Maiorana. I'm one of the counsel for the Canon's
` parties, lead counsel for the Kawaguchi IPRs. And I'll be
` presenting on behalf of the Petitioners today.
` Can you hear me okay, Judge Quinn?
` JUDGE QUINN: Yes, I can hear perfectly. Thank
` you.
` MR. MAIORANA: Thank you.
` So I'm going to start off with IPR1211. And I have
` some slides that cover any issues that are unique to the
` other two, but for the most part I'm going to focus on 1211.
` But of course if Your Honors have any questions about
` anything, I'll be happy to address those.
` The '746 patent, which is at issue in 1211, has a
` number of claims at issue. And we have primarily a
` combination of Kawaguchi and Matsumoto are the grounds that
` were instituted and what I'm going to focus on today.
` As I mentioned, the issues across all three
` Kawaguchi IPRs are virtually identical. The issues that
` Patent Owner has raised in response to our grounds and
` grounds that were instituted are very similar so I'm going to
` try to address them together. And I'm going to apologize, I
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
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` am fighting a cold so I'll do my best not to cough during the
` presentation.
` But the -- I wanted to emphasize at the outset this
` is an obviousness inquiry. The grounds that the panel
` instituted are obviousness under Section 103 based on
` Kawaguchi, Matsumoto, and some additional secondary
` references. I'm going to focus my presentation on
` obviousness and the arguments that Patent Owner has made in
` response to the obviousness grounds.
` Now, the primary point that Patent Owner has raised
` is an interpretation of Kawaguchi that Petitioners submit
` simply is inconsistent with Kawaguchi. It's an
` implementation using supposedly a FIFO buffer to transfer the
` data from the peripherals to the host computer. And
` Petitioners submit that that's simply inconsistent with
` Kawaguchi and I'll explain why.
` JUDGE CHANG: Before you go on, can I ask you a
` question?
` MR. MAIORANA: Yes.
` JUDGE CHANG: I notice there's two translations of
` Kawaguchi. The first one was submitted by the Petitioner.
` And then the second one, Exhibit -- I believe it's in the --
` one of the cases is Exhibit 2009. So when you're referring
` to Kawaguchi, it would be nice to know which translation you are
`relying upon.
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` MR. MAIORANA: Yes, I understand, Your Honor. And
` there's two versions, 1207 is the Petitioner's version and
` 2009 is the Patent Owner's version. And there's really only
` one issue with respect to the translation, it relates to the
` phrase "arbitrary data" and I'm going to address that.
` So when I'm referring to Kawaguchi, I'll be
` referring to 2000- -- excuse me, 1207 which is Petitioner's
` version of Kawaguchi. And when I get to the arbitrary data
` portion, I'll point out the difference between the two
` translations. But, otherwise, in Petitioner's view, the two
` translations have no bearing on the issues before you.
` JUDGE CHANG: Okay. Thank you.
` JUDGE QUINN: I have a question as well about the
` translations.
` Did you lodge an objection to the second
` translation in any way?
` MR. MAIORANA: We did not, Your Honor, because we
` don't believe that the differences between the two
` translations are material to any of the issues before the
` panel. We feel that other than the arbitrary data issue,
` which I plan to explain, and that, in the end, doesn't have
` any bearing on the ultimate issues either. So we didn't feel
` that it was necessary to object to Patent Owner's
` translation.
` So Kawaguchi and the '746 patent are remarkably
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` similar. They address the same problem in an almost
` identical manner. The issue presented in both documents is
` how to get data from peripheral devices to a host computer
` without having to have drivers for each of the peripheral
` devices on the host computer.
` And as you see showing here on Slide No. 5, on the
` left-hand side, is Figure 1 of the '746 patent. And on the
` right-hand side, is Figure 1 of Kawaguchi. As you can see,
` we've highlighted in colors the four main components of both
` systems.
` You've got the host system on the left-hand side of
` each drawing. You have a SCSI interface on the left-hand
` side that's in green, that communicates between the interface
` device and the host device. And then you've got on the
` right-hand side in yellow, the interface that communicates
` between the interface device and the peripherals. And then
` within the device, you have a processor in red and you have a
` memory in blue.
` The systems are remarkably similar. There's of
` course different language used in both documents, not
` surprisingly, to describe the two systems, but their
` operation is virtually identical.
` Now, Patent Owner primarily contends that Kawaguchi
` doesn't disclose the file system limitations. And
` Petitioners submit that Kawaguchi alone or Kawaguchi in
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` combination with Matsumoto do disclose a claim file system.
` And we have citations here on Slide 6 to where we presented
` those arguments in our opening papers. And I'm going to walk
` through those as we go.
` JUDGE QUINN: Counsel, can you go back to Slide 5?
` MR. MAIORANA: Yes, Your Honor.
` JUDGE QUINN: So you're mapping Figure 1 of the
` patent to Kawaguchi, but the claims of the '746 patent don't
` necessarily claim the components the way they are depicted in
` Figure 1. So I'm interested in the Kawaguchi representation
` what did -- what was your contention in that petition
` regarding the A to D converter 19 and the other interfaces 8,
` 9, and 10, and what did they equate to as far as the claim
` language of the '746 patent?
` MR. MAIORANA: So on the right-hand side of
` Kawaguchi, you have examples of the types of peripherals that
` Kawaguchi discloses can be connected to the host computer
` using the SCSI device converter. And Kawaguchi says, and
` it's undisputed really in this proceeding, that any
` peripheral, all different types, RS 232, all different types
` of communication protocols and different peripherals can be
` connected to the SCSI device converter in Kawaguchi.
` And in the section of Kawaguchi where it's
` discussing that flexibility, it mentions sensor 18 and the A
` to D converter as another example of an analog source that
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` can be connected to the SCSI device converter to communicate
` with the host computer through the converter.
` So what Kawaguchi is saying is sensor 18 is an
` analog source -- any analog source, it's not limited to any
` type of analog source, it generates analog data, which then
` is converted to digital data in the A to D converter. And
` then it would go into the data reading unit 12. And from
` there, through -- and also through the control data writing
` unit which needs to translate that data into the SCSI format,
` and then through the SCSI interface 7 into the EWS.
` So Kawaguchi is clear that the A to D converter 19
` and sensor 18 are just one example of the type of analog
` source that can be connected to a host computer using the
` SCSI device converter 3.
` JUDGE QUINN: Aren't there claims in the '746
` patent that require multiple sources of analog data?
` MR. MAIORANA: That's right, Your Honor. There are
` -- if we go to Slide 45, please. So Claims 10 and 35 of the
` '746 patent, Your Honor, refer to a plurality of independent
` analog signal acquisition channels, which I think is what
` you're getting at. And, as I said, Kawaguchi discloses that
` any number of peripherals can be connected to the SCSI device
` converter at one time and it talks about parallel processing.
` And Petitioners submit that Kawaguchi discloses the
` plurality of independent analog signal acquisition channels
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` of Claims 10 and 35 of '746. Of course Figure 1 is not the
` only disclosure of Kawaguchi. I have it on the screen in
` order to help explain how Kawaguchi works, but it is
` certainly contemplated within Kawaguchi that you could have
` sensor 18 and A to D converter 19 connected at the same time
` as input device 5 or output device 4 or any other type of
` peripheral. Kawaguchi is not limited to any particular type
` of peripheral and certainly contemplates and discloses having
` them connected at the same time.
` Mr. Gafford, who is the expert proffered by Patent
` Owner, agreed in the deposition when I asked him certainly
` Kawaguchi discloses that a scanner could be connected as one
` of the peripheral devices and that's of course what Matsumoto
` discloses.
` So to answer your question, Your Honor, Petitioners
` submit that Kawaguchi discloses the plurality of multiple
` independent analog signal acquisition channels.
` JUDGE QUINN: Okay.
` The question I have for you, however, is that in
` our decision on institution, we stated that the Petitioner
` had failed to show that the analog signal acquisition
` channels could be mapped to either the CD-ROM or the
` interrupt control device 6 because those were not analog
` sources. So what I'm trying to get at is, is it still your
` contention that somehow those devices still continue to be
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`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` analog sources?
` MR. MAIORANA: No. Certainly we did present in our
` petition that the CD-ROM could be considered by a person of
` skill in the art as an analog source. Reasonable minds could
` differ on that, but that's not really limiting of Kawaguchi.
` Figure 1 is just one example of the type of
` peripherals that could be connected to the SDC, it's not
` limited to those type of peripherals. And, in fact, as I
` mentioned, Mr. Gafford, Patent Owner's expert, agreed with me
` that there's no limitation at all in Kawaguchi of what type
` of peripherals can be connected.
` Right. So up on the screen now, I know you can't
` see this, Judge Quinn, but I've got page 75 from
` Mr. Gafford's deposition. And I said, you would agree that
` Kawaguchi's SCSI device converter can be adapted to connect
` to more peripherals than what are depicted in Figure 1?
` JUDGE CHANG: What Exhibit Number is that?
` MR. MAIORANA: It's 1216, Your Honor. Thank you.
` JUDGE CHANG: And also what case is it?
` MR. MAIORANA: This -- we took one deposition of
` Mr. Gafford for all of the IPRs --
` JUDGE CHANG: Okay.
` MR. MAIORANA: -- together. So it's one Exhibit
` 1216. It's 1216 in the 1211 IPR.
` JUDGE CHANG: Thank you.
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` MR. MAIORANA: Thank you. And then he agreed with
` me that -- in fact, he said that, there's no limit, it's a
` broad disclosure in Kawaguchi of what types of sources --
` analog sources can be connected to the SDC. And I said, does
` that even include a scanner? And he said, yes.
` JUDGE BISK: Can you show the evidence, though, in
` Kawaguchi that multiple can be attached at the same time?
` Because that seems to be saying you could use lots of types,
` but it doesn't necessarily say you can attach them at the
` same time.
` MR. MAIORANA: Yeah, so the -- in Kawaguchi, which
` is Exhibit 1207, in the object of the invention, it's talking
` about being able to connect -- to easily connect different
` peripherals to the EWS and it talks about parallel
` processing.
` Right. So on page 6 of Exhibit 1207, it says, in
` the present invention in that paragraph. It's the
` second-to-last paragraph on the page. It talks about there's
` multiple writing and reading units that EWS recognizes them
` as separate devices. And the EWS can simultaneously launch
` separate writing and reading programs for the writing and
` reading units and perform parallel processing for higher
` processing efficiency.
` So the Petitioners submit, Judge Bisk, that that's
` a disclosure in Kawaguchi of having multiple peripherals at
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` the same time. Some may be read, some may be writing and the
` parallel processing is disclosure of that multiple
` peripherals at the same time.
` So I want to talk about the file system
` limitations, that was the vast majority of the Patent Owner's
` response. And there's three bases we've provided in our
` petition and in Dr. Reynolds' declaration as to why Kawaguchi
` either discloses a file system or that it would have been
` obvious to a person of ordinary skill the art to use a file
` system in Kawaguchi.
` First of all, it's undisputed Kawaguchi clearly
` discloses that the data reading and writing units are
` emulating hard disks. That's clear from Kawaguchi that the
` SDC is telling the EWS that it's talking to hard drives. So
` that disclosure of a hard disk suggests to a person of skill
` in the art, we submit, that you would use a file system, that
` Kawaguchi would have a file system. Hard drives
` conventionally have file systems.
` Here, on Slide 9, is a portion of Kawaguchi page 6
` which talks about the data reading and writing units
` emulating hard disks. It's well known and customary at the
` time of the Tasler filing date that hard drives -- customary
` hard drives had file systems. There's multiple disclosures
` in the MS-DOS encyclopedia that we presented as Appendix A-3
` to Dr. Reynolds' declaration, Exhibit 1204. It was well
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` known at the time. It's undisputed in this case that file
` systems -- hard drives were well known to have file systems
` at that time.
` I asked Mr. Gafford in the deposition, which is
` Exhibit 1216, and we got some excerpts pulled out here on
` Slide 11. I said that conventional hard disk include a file
` allocation table and that the presence on a hard disk of the
` file allocation table is indicative that the hard drive has a
` file system. And Mr. Gafford agreed with me.
` And he also agreed with me that when a hard drive
` is inquired from the host, the hard drive sends back to the
` host a virtual boot sequence which includes the file
` allocation table and information about where the information
` is located on the drive so that the host can find the
` information on the hard drive.
` So Kawaguchi discloses that the reading and writing
` units emulate hard disks. Hard disks were well known at the
` time of the Tasler filing data to have file systems. And
` file systems and emulated hard drives would send information
` back to the host telling the host how you can access that
` data. That's all conventional in the 1980s from the MS-DOS
` encyclopedia.
` So in our view, a person of skill in the art
` reading Kawaguchi would understand that data reading unit 12
` operating in a manner emulating a hard disk would utilize a
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` file system because file systems were included on hard disks
` by default.
` But we have a second basis for why Kawaguchi would
` disclose to a person of skill in the art that there was a
` file system on the device. Kawaguchi suggests the use of a
` RAM drive. Kawaguchi says that all of the active operations
` of the SDC are performed by a microcomputer ROM and RAM.
` That's here on Slide 14, I pulled it out from Kawaguchi
` page 5. And it's very clear that all the operations of the
` SDC are performed by a microcomputer ROM and RAM.
` So how would a person of skill in the art
` understand that disclosure of Kawaguchi? Well, Dr. Reynolds
` testified -- and now I'm looking at Slide 15 -- that it would
` have been obvious to a person of skill in the art to utilize
` the file system on Kawaguchi's hard disk emulating reading
` unit 12 because of the knowledge of RAM drives. RAM drives
` were well known, they're described in the MS-DOS
` encyclopedia.
` And all it would take to create a RAM drive on a
` system like Kawaguchi is to put a single line into the
` CONFIG.SYS file, create a RAM drive, and then the system
` would use that as a file system when transferring data from
` the peripherals to the host computer.
` So Slide 16, citing to page 907 of the MS-DOS
` encyclopedia, which is Appendix A-3 to Exhibit 1204, which is
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` Dr. Reynolds' declaration in the 1211 IPR. And as I
` mentioned, a RAM drive can be created by simply putting a
` line into the CONFIG.SYS file and restarting the system.
` This was well known to computer engineers at the time of
` Tasler's filing date that you could create a RAM drive which
` would include a directory, a file allocation table, and files
` on a RAM, random access memory, like is disclosed in
` Kawaguchi.
` So Slide 17 is a graphical summary of how the file
` system would work on a Kawaguchi disclosure as interpreted by
` a person of skill in the art. The green arrows show data
` coming from the peripheral whether it be sensor 18 through
` the A to D converter 19 or from the CD-ROM or from any other
` analog source that Kawaguchi says, and Mr. Gafford agrees,
` can be connected as a peripheral to the SDC.
` Data coming from an analog, data coming from the
` peripherals or in the case of sensor 18, it would be
` digitized at the A to D converter. It would go to data
` reading unit 12, which would have a file system to collect
` and organize the data. The data would then be converted to
` SCSI and go through SCSI interface 7 to the EWS.
` The right arrows on the figure in Slide 17 show the
` direction coming from the EWS back to one of the peripherals.
` Kawaguchi discloses that all of these interfaces, 8, 9 and 10
` are IO interfaces, they are bidirectional, so data can go in
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` either direction. So Slide 17 is simply a graphical
` representation of how a file system would work on Kawaguchi.
` We have yet a third reason why it would have been
` obvious to use a file system in Kawaguchi's SDC and that's
` from the Matsumoto reference. Matsumoto discloses a file
` system for off-host storage of digitized analog data coming
` from a scanner. And it explains that here in Slide 18, I'm
` showing Figure 1 of Matsumoto, we have file management
` section 10 and storage device 11.
` So Matsumoto, just like Kawaguchi, discloses a way
` to get analog data, digitize it, and put in into files for
` use by a host computer. Same concept, same problem as
` Kawaguchi, same field of endeavor as Kawaguchi and certainly,
` as we provided in our papers, obvious to combine the two
` references together. So Matsumoto undisputedly discloses a
` file system. Nobody contests that in this case.
` I've highlighted in Slide 19, two portions of
` Matsumoto disclosing the file storage area, which they call
` storage apparatus 11. And then that storing the file in
` reading and writing is controlled by the file management
` section 10.
` Matsumoto describes the process of capturing an
` analog image via the scanner and storing it on the storage
` device 11. And then in other parts of Matsumoto that I show
` here on Slide 20 that the stored file can be pulled from the
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`Case IPR2016-01216 (Patent 8,966,144)
`Case IPR2016-01225 (Patent 8,966,144)
`
` storage device such as when printing or when the host wants
` to access the image that's stored on the storage device 11.
` So Slide 21 is a graphical representation of a
` combination of Kawaguchi and Matsumoto. And you can see
` we've graphically put storage device 11 into the Kawaguchi
` SDC in place of the reading and writing units 11 and 12.
` But, again, the green arrows show how this would work, analog
` data would come from the peripheral.
` And in the case of sensor 18, it would be digitized
` at the A to D converter. It would go to the storage device,
` and then through the SCSI interface 7 to the EWS. Same exact
` operation as I described before with Kawaguchi by itself and
` clearly within the purview of a person of skill in the art to
` make this combination to use a file system in Kawaguchi based
` on Yamamoto.
` And I want to mention that the main argument that
` Patent Owner is making with respect to the file system, and
` this is in slides -- their Slides 13 to 19, is that Kawaguchi
` cannot support a file system. And they actually used the
` word "impossible." They say it's impossible for Kawaguchi to
` have a file system. And, Your Honors, we submit to you that
` that's improper under the law. That's basically a physical
` combinability argument. They're saying you couldn't
` physically take a file system from Matsumoto and put it into
` Kawaguchi.
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`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Patent 8,966,144)
`
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