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:
`
`
`GREGORY S. CORDREY, ESQUIRE
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`3 Park Plaza
`Suite 1100
`Irvine, California 92614
`949.623.7236
`
`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 12:14 p.m. at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia in Courtroom A.
`
`
`
`
`
`
`
`
`2
`
`
`
`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)
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`P R O C E E D I N G S
` JUDGE CHANG: We're going to start on the second
` portion of the consolidated oral hearing. This will be
` IPR2016-01225 involving Patent 8,966,144. Each party will
` have 30 minutes of argument time, and the Petitioner may
` reserve a small portion of the time for rebuttal.
` MR. CORDREY: Good afternoon, Your Honors.
` JUDGE CHANG: Okay.
` MR. CORDREY: My name is Gregg Cordrey. I'm
` counsel for Petitioners. I'm lead counsel in this IPR.
` Just a couple of housekeeping things before we get
` going here.
` JUDGE CHANG: Sure.
` MR. CORDREY: I have hard copies. I've given one
` to the court reporter.
` May I approach?
` And I'd also like to reserve at this point five
` minutes for rebuttal.
` JUDGE CHANG: Okay.
` MR. CORDREY: So the 1225 IPR, as you pointed out,
` involves the '144 patent. I've identified in Slide 2 the
` challenged claims that were instituted in this IPR. And
` this, also like the prior IPRs, was instituted based on
` obviousness determination with a primary prior art reference
`3
`
`
`
`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)
`
`
` being McNeill, and then in combination with the SCSI
` specification and admitted prior art.
` Now, McNeill is a lot like the '144 patent in that
` it discloses an interface device that basically connects
` peripheral devices to a host, and it does it using customary
` driver, in this case, the SCSI interface or the SCSI scanner.
` Now, McNeill's emulator, which resides on the
` target computer, allows the initiator to use SCSI commands in
` order to access either non-SCSI peripherals that are attached
` to the target computer or SCSI peripherals that are attached
` to the target computer and command them as if they were local
` to the initiator computer.
` And this is Figure 2 now from -- I'm on Slide 4
` now. This is Figure 2 from McNeill, and it's the only
` embodiment that it describes here in terms of showing how it
` would be laid out. And you can see it's got two computers,
` the initiator, 10, and the target computer, 14.
` McNeill discloses that these computers are personal
` computers, they can be, for example, the IBM PS2 or
` compatibles.
` The initiator and the target computers also each
` have a SCSI adapter. They're identified as numerals 18 and
` 20 respectively.
` And then there's a SCSI bus that connect the
` initiator and the target together. That's identified as
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`4
`
`
`
`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)
`
`
` numeral 12 in Figure 2.
` The target computer also shows in this embodiment
` that there's a peripheral device, a mag disk, that's numeral
` 16, that's attached to the target. McNeill goes on to
` disclose that it's not limited to using mag disks as
` peripheral devices; in fact, there could be a number of other
` peripheral devices such as printers, scanners, optical
` devices, et cetera, that can be connected.
` So having disclosed that you can use as peripheral
` devices a mag disk and a scanner, a person of ordinary skill
` in the art would understand that the scanner could be
` connected to the target computer's parallel port.
` The scanner can be controlled one of three ways.
` For example, a scanner can be controlled manually. You can
` push the buttons on the scanner machine itself and operate
` the scanner manually. You can operate and control the
` scanner using an application local to the target computer or
` you can use the initiator, and the initiator could control
` the scanner via SCSI commands.
` Now, in the latter case, the target would ID itself
` as two logic devices, a scanner and a hard disk. And, again,
` using the SCSI commands, it could control both -- the
` initiator could control both devices.
` A person of ordinary skill in the art would
` understand in that circumstance that you would save the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`5
`
`
`
`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)
`
`
` scanned image data from the scanner to the mag disk as one or
` more files. In that way, the initiator or other initiators
` that are connected to the SCSI bus can access the mag disk
` and the scanned image data. And this is all consistent with
` McNeill's objective of device sharing among a number of
` possible initiators.
` So I'll touch on this briefly because this doesn't
` seem to be an area where the board has a dispute, but we
` defined -- Petitioners have defined a level of ordinary skill
` in the art as generally being a Bachelor of Science in
` Computer Engineering or Electrical Engineering with about two
` years of experience. I think Patent Owner has a similar
` definition with maybe three years of experience. The board
` determined that there really was no meaningful difference in
` this. So there's not really an issue of contention here.
` Petitioners' expert, Dr. Reynolds, his credentials
` are shown on Slide 7 and I won't go through them in detail,
` they're part of the record, but the bottom line here is that
` there's no dispute that Petitioner's expert can speak on
` behalf of a person of ordinary skill in this art.
` So with that, I'll turn to the issues that are
` disputed here, and there are three limitations that the
` Patent Owner has identified in its response. So in Slide 8,
` I've identified the first of the three limitations. And
` basically the argument that Patent Owner asserts is that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`6
`
`
`
`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)
`
`
` McNeill does not disclose storing data from a sensor on
` McNeill's mag disk. And it makes two points related to that.
` So the first point it makes is that in order for
` the target to present itself as two peripheral devices to the
` initiator as proposed, the target would have to occupy two
` SCSI IDs. The argument goes on to say that, as shown in
` Figure 2, there's only one SCSI adapter and, therefore, there
` can only be one SCSI ID. Therefore, you can't have two
` peripheral devices each with its own SCSI ID.
` Now, it's worth noting at the outset that this view
` that McNeill is limited to a single peripheral device is
` contrary to many disclosures in McNeill. For example, at
` Column 7, lines 37 through 8:6, McNeill describes that
` emulation routines support various types of devices. So
` we're not just talking about a mag disk as shown in Figure 2.
` At Column 2, lines 48 through 57, McNeill also
` gives an example of an initiator using peripherals of a mag
` disk and a printer. So, again, we have two different
` types -- we have more than one peripheral and we have two
` different types of peripheral devices.
` And then --
` JUDGE QUINN: Counsel, can I ask you something
` about this argument in the previous case.
` We heard a lot about SCSI IDs and somewhat I'm
` seeing the specter of the same type of argument here where it
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`7
`
`
`
`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)
`
`
` appears that, in this case, the initiator wants to see the
` peripherals that are connected to the target system and so
` that's why you need a SCSI ID for each peripheral or anything
` else that is attached to this target system; is that right?
` MR. CORDREY: In order for the initiator to command
` that peripheral, that's right, it would need to be recognized
` on the SCSI bus.
` JUDGE QUINN: Okay. Now, one of your arguments,
` though, is that the target system itself is occupying one
` SCSI ID; right?
` MR. CORDREY: Right.
` JUDGE QUINN: And then you have another argument in
` which you have two things attached to the target device, the
` mag disk, plus the scanner, and each one has its SCSI ID; is
` that what you're saying?
` MR. CORDREY: That's correct.
` JUDGE QUINN: Okay. So if that follows, then the
` initiator can then independently access the mag -- the
` magnetic disk -- or what's a mag -- the magnetic disk --
` MR. CORDREY: Right.
` JUDGE QUINN: -- that is attached to the target
` device and also independently access the scanner that is also
` attached to that target device; correct?
` MR. CORDREY: In the scenario where there's two
` SCSI IDs, that's correct.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`8
`
`
`
`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)
`
`
` JUDGE QUINN: Okay. I just needed to get that.
` MR. CORDREY: Sure.
` And, in fact, we're going to get there because the
` Petitioners did propose, as you just described, two
` solutions, two ways that the scanner image data would be
` saved to the mag disk, and both of these would have been
` obvious to somebody of ordinary skill in the art in view of
` McNeill.
` And the first, as you just described, and I'm
` looking at Slide 10, is to have a single SCSI ID for the mag
` disk and then you would have a scanner attached to the target
` computer either through a parallel port or a serial port, but
` it wouldn't be recognized on the SCSI bus.
` The second would be to have two SCSI IDs, one for
` the scanner and then one for the mag disk, and that would
` enable the initiator to command and control either peripheral
` device.
` And as Dr. Reynolds explained, both of these are
` technically workable in light of McNeill, it would have been
` obvious. And Patent Owner's expert, in fact, agreed at his
` deposition that these would have been workable and would have
` been known to those skilled in the art.
` So, first, let's turn to the single SCSI ID
` scenario. And this is where we have, as we stated in the
` petition, that the scanner might be attached to a parallel
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`9
`
`
`
`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)
`
`
` port and controlled manually or by an application that's
` local to the target computer. And I asked Patent Owner's
` expert at his deposition if that were the case, that we had
` the scanner attached to a parallel or serial port of the
` target, but not on the SCSI bus and we did have the mag disc
` assigned a SCSI ID and it was available on the SCSI bus,
` would you need two SCSI IDs, and essentially what he agreed
` to was that you would not need two SCSIs IDs.
` And some of his testimony here is shown in
` Slide 12. And his transcript's at Exhibit 1315 in this case.
` And it's at -- the general discussion was at pages 89 through
` 90 in that area. I couldn't fit all the testimony up there.
` It was a little bit of a convoluted back and forth between
` myself and the expert.
` Now, so that's one scenario where we would need two
` SCSI IDs. And as Dr. Reynolds explained as well, this is
` something that would have been known to those skilled in the
` art. Patent Owner's expert agreed. And it would have
` rendered -- it would have provided -- McNeill would have
` rendered it obvious in light of that -- strike that.
` Looking at Slide 13 now, the other configuration
` that we set forth was that McNeill discloses using two SCSI
` IDs. And these are the ones we just described a few minutes
` ago.
` Now, again, we asked the Patent Owner's expert
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`10
`
`
`
`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)
`
`
` whether there was anything in McNeill -- in the emulation
` that's described by McNeill in his target computer that would
` limit the emulation to a single SCSI ID. And, in fact,
` Patent Owner's expert said that there's nothing in McNeill
` that says that the emulator cannot address two devices at the
` same time. And the testimony is, again, shown there on
` Slide 14.
` In fact, he said, McNeill says you can write an
` emulator for anything. And this is consistent with the
` disclosures in McNeill. Again, McNeill doesn't limit itself
` to emulating a single device at one time and, therefore,
` using only a single SCSI ID.
` At Column 7, line 37 through 8:6, and I referred to
` this earlier a few minutes ago, McNeill expressly states that
` target emulation routines (device drivers) could be written
` to support various types of devices and functions using
` similar structures under DOS or other operating systems --
` I'm sorry, operating environments.
` McNeill goes on to say that "Consideration must be
` given to device-sharing support based upon the number of
` possible initiators and the particular emulated device
` characteristics."
` So basically McNeill is telling us there -- telling
` a person of ordinary skill in the art that its emulator can
` emulate different types of devices and so consideration must
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`11
`
`
`
`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)
`
`
` be given to the actual device being emulated as well as the
` number of possible initiators that may want access to that
` device.
` And there are other disclosures in McNeill -- I
` won't read these, they're on Slide 15 -- where McNeill
` discloses using multiple peripheral devices. At Column
` 2:14-15, again, Column 2:48 through 57 was the example in
` McNeill using the mag disk and the printer. And then, of
` course, McNeill's objective, which is stated on Slide 15, and
` repeated, is that the invention provides a practical and
` economic system for achieving access to a multiplicity of
` peripherals in a SCSI environment.
` So McNeill itself is disclosing to those skilled in
` the art that it can emulate multiple peripheral devises and
` they can be devices of different types. So to take the view
` that McNeill is limited to a single peripheral at a time is
` inconsistent with the disclosures in McNeill.
` Now, even if you were to -- even if you were --
` JUDGE QUINN: But my -- I'm sorry, I got confused
` because my understanding as a whole from reading the response
` is not that you cannot have it -- you cannot have both a
` scanner and a magnetic disk, is that if you do have them,
` that whatever comes out of the scanner does not get stored in
` that magnetic disk, it goes straight through to the computer.
` MR. CORDREY: That's the position that the Patent
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`12
`
`
`
`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)
`
`
` Owner's taking that --
` JUDGE QUINN: Yes.
` MR. CORDREY: -- if you were to have -- they do
` contest, by the way, though, that you could have -- whether
` you could have a scanner and a mag disk both have a SCSI ID
` and both be controlled by the initiator at the same time. So
` they do contest that.
` But they do then argue -- okay. Setting that
` argument aside, if you were to have both, then they contend
` that the scanner's data would be read directly by the
` initiator and transferred directly from the scanner to the
` initiator. And that's their position.
` A person of ordinary skill in the art, however,
` would look at the configuration where you do have a scanner
` and you do have a mag disk and to them, they would understand
` that it would be obvious that you store the scanned image
` data to the mag disk on the target computer. And the reason
` you do that is because, again, McNeill is disclosing an
` emulator that is trying to improve access to a number of
` initiators.
` So if you were to store that scanned image data,
` and there doesn't seem to be a dispute at this point about
` whether you do actually need to store that scanned image data
` because Patent Owner's expert agreed or testified that you
` have to store the image data somewhere because the scanner
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`13
`
`
`
`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)
`
`
` simply can't buffer enough of the data when they do scan it,
` but it would make more sense if you're going to store that
` data, to store it on the target computer where it would be
` accessible to any number of initiators.
` If you were to store it on the initiator side of
` the computer, then the issue you have there is that now that
` initiator is burdened with dealing with other initiators that
` may want access to that data. And the whole purpose of
` McNeill is to lighten the load on the initiator so that it
` frees up its processing and its code requirements when it
` accesses peripheral devices.
` So storing it on the initiator, as Patent Owner
` suggests, is contrary to what McNeill is actually trying to
` achieve, which is basically access to a number of -- allow
` access to a number of initiators that will be on the SCSI
` bus.
` So even with that, there is a way, though, that
` even if you do require two SCSI IDs, it was well known, and
` Patent Owner's expert agreed, that you could configure
` McNeill readily to have a scanner and a mag disk both on the
` SCSI bus at the same time. And all you do there is simply
` add another SCSI adapter to the target computer. Instead,
` Patent Owner has taken the position, apparently, that McNeill
` discloses only using a single SCSI adapter as shown in
` Figure 2 and, therefore, that's why you couldn't have both
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`14
`
`
`
`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 scanner and the mag disk available on the SCSI bus.
` But, in fact, he admitted in his deposition that
` certainly you can have a SCSI adapter per device and you can
` have more than one SCSI adapter on the target computer. And
` Dr. Reynolds illustrated this configuration in modifying
` Figure 2 shown in Slide 17 where it has a SCSI adapter for
` the scanner and a SCSI adapter for the mag disk.
` And this again, according to Patent Owner's own
` expert and Dr. Reynolds as well, this was well known at the
` time of the Tasler patents.
` Now, the second argument that the Patent Owner
` raised, and we kind of leapt ahead and got into this a little
` bit, was that if you save the image data from the scanner
` onto the mag disk, it would worsen the performance in
` McNeill. And, in fact, as their expert testified, you have
` to save the scanner image data somewhere because scanners
` simply cannot buffer enough to save its own data. So in his
` own words, he said scanners typically can't buffer anything,
` they're lucky if they can buffer two or three lines.
` So you have the scanner attached to the target
` computer, that scanned image data has to be saved somewhere
` and a person of ordinary skill in the art would understand if
` you have a hard drive or a mag disk available, it would make
` sense to save that data to the target computer's mag disk or
` hard drive where it would also be available to other
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`15
`
`
`
`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)
`
`
` initiators on the SCSI bus.
` In fact, before I go on, Dr. Reynolds also
` identified other advantages to having the data on the target
` computer, some of which I eluded to. It does -- as McNeill
` says, it does make the data available to multiple initiators.
` It also frees up the scanner so that you can have a
` standalone operation of the scanner. And it frees up the
` resources of the initiator computer so the memory and the
` processor as well as the disk space of the initiator aren't
` burdened with having to save the image data from the scanner
` and then also respond to other initiators that might want
` access to that same information, that same scanned image
` files.
` Now, the second issue that the Patent Owner
` identified was that McNeill -- it asserts that McNeill
` doesn't disclose a file system. And, again, both experts
` agreed that McNeill clearly discloses the use of the OS2 and
` the DOS operating systems. And both experts agree and other
` extrinsic evidence confirms that the OS2 and DOS operating
` systems had file systems at the time.
` And you can see on Slides -- Slide 23, we have a
` citation to a number of the sources. Dr. Reynolds'
` declaration, Patent Owner's expert's testimony agreeing that
` the DOS operating system has a file system, the MS-DOS
` Encyclopedia, and the Microsoft Computer Dictionary that the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`16
`
`
`
`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)
`
`
` board put in the record all confirmed that these operating
` systems which are disclosed in McNeill all had file systems.
` So the third issue that the Patent Owner raises
` relates to the limitation of the processors adapted to be
` involved in the data generation process. And this really
` turns on a claim construction issue. And this is actually a
` claim construction issue that was addressed in the
` institution decision.
` In the institution decision, the board rejected the
` construction offered by the Patent Owner that the processor
` has to generate the data and that it has to convert the
` analog data. The Patent Owner, again, has raised -- has
` apparently dropped the argument that the processor is
` required to generate the data, but has asserted that the
` processor should be construed to require that it's involved
` in converting the data.
` Again, the Patent Owner doesn't point to anything
` in the specification that supports this construction. The
` citations that it points to are limited. And they don't say
` -- they don't support that the processor should be involved
` in converting the analog data.
` And so for the reasons the board gave in its
` institution decision construing it apply equally here.
` There's nothing in the record that's changed that. And we
` would submit that the construction that the board gave or the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`17
`
`
`
`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)
`
`
` position they took in its institution decision should be
` adopted here.
` And if you do that, then their last argument that
` McNeill doesn't disclose a processor involved in converting
` the analog data to digital data falls away. And, in fact,
` McNeill does meet the limitation of showing that the
` processor's adapted to be involved in the data generation
` process.
` And, again, on Slide 27, we have a citation to
` McNeill and Dr. Reynolds' declaration confirming that the
` processor from the target computer is involved in various
` aspects everywhere from responding to the re-commands to
` acquiring the data to saving it to transmitting it back to
` the initiator computer. So for that reason, that limitation
` is met.
` So, in conclusion, the challenged claims are
` unpatentable and the board should cancel them.
` That's all I have, unless you have any questions
` for me.
` JUDGE CHANG: No, I don't.
` Thank you.
` MR. CORDREY: Thank you.
` MR. PETERS: Before I get started, would the board
` like hard copies?
` JUDGE CHANG: Sure.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`18
`
`
`
`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. PETERS: May I approach?
` JUDGE CHANG: Sure.
` Thank you.
` MR. PETERS: Thank you, Your Honors.
` My name is Nick Peters, and I represent Papst
` Licensing for this matter.
` I'm going to skip ahead to Slide 3 and give --
` JUDGE CHANG: Can I ask you a question before you
` begin.
` MR. PETERS: Yes.
` JUDGE CHANG: I forgot to ask your co-counsel
` regarding claim construction. I know -- it seems like Patent
` Owner is not challenging most of the claim construction that
` we set forth in the institution. I just want to verify with
` you that if we have to change our construction standard to
` District Court claim construction standard, would it
` materially affect those claim constructions?
` MR. PETERS: Are you asking with respect to the
` McNeill petitions?
` JUDGE CHANG: Yes, or both.
` MR. PETERS: Okay. With respect to the McNeill
` petitions, I don't think it would. On the Kawaguchi
` petitions, I would have to confer with --
` JUDGE CHANG: Sure.
` MR. PETERS: -- my co-counsel.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`19
`
`
`
`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)
`
`
` JUDGE CHANG: Okay.
` MR. PETERS: I'd have to work through that a little
` bit. I don't know that off the top of my head.
` JUDGE CHANG: Because we want to be consistent
` across all the cases, not just only these eight IPRs that --
` before us today and tomorrow. There's other related patents.
` They all goes back to the '399 patent. And the '399 patent
` will -- as Patent Owner indicate in the IPR 2016-01839, that
` will be expired March 3rd, 2018. So we would like to have
` the consistent claim construction.
` And also, I just want to point it out to make sure
` that, at least to us at this point, we don't seek to change
` our claim construction as to -- because of the difference in
` claim construction standards.
` MR. PETERS: Yes, duly noted. And for tomorrow,
` we'll be sure to be able to address that question with
` respect to the petitions we'll be discussing tomorrow.
` JUDGE CHANG: Okay. That sounds good.
` MR. PETERS: Thank you.
` Turning to the claims of the '144 patent,
` consistent with the Petitioners, there was no real discussion
` distinguishing among the independent claims that are at issue
` here, so I want to focus in on just a couple of claim
` elements that I think are critical here with respect to
` understanding what's missing from McNeill and what the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`20
`
`
`
`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)
`
`
` Petitioners are having to bridge with respect to a gap in
` McNeill's disclosure and the actual claim language.
` First, on Slide 3, we have a recitation about the
` processor being adapted to be involved in the data generation
` process. And the processed analog data is stored in the data
` storage memory -- and that's the data storage memory of the
` claimed analog data generation device -- as at least one file
` of digitized analog data.
` In turning to Slide 4, the processors further
` adapted to be involved in an automatic file transfer process.
` And in that situation, the processor executes a further
` instruction set that causes that file that was stored in the
` memory to be transferred to the computer.
` So what we have is a situation where there's almost
` a three-step process where the data is generated by the
` sensor, is processed, digitized, stored on the -- stored on
` the memory device. And then on that file transfer, take that
` file of data and move it to its computer.
` Turning to Slide 5, what McNeill is talking about
` is a SCSI initiator target system. McNeill's abstract gets
` right to the heart of the matter. A SCSI computer system is
` provided where a host computer gains access to targeted but
` nonlocal peripheral devices. It does this by sending SCSI
` commands via a SCSI bus to a connected SCSI target computer
` that emulates the target peripheral devices, and this causes
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`21
`
`
`
`Case IPR2016-01211 (Patent 8,504,746)
`Case IPR2016-01212 (Pate
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
