IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re patent of Jacobs:
`
`Petition for Inter Partes Review
`
`U.S. Patent No. 6,618,788
`
`Issued: September 9, 2003
`
`Title: ATA DEVICE CONTROL VIA
`PACKET-BASED INTERFACE
`
`Attorney Docket No.:
`351912-22.788
`
`Customer No.: 26379
`
`Petitioner: Toshiba Corporation
`
`Real Parties in Interest: Toshiba
`Corporation; Toshiba America,
`Inc.; Toshiba America
`Electronic Components, Inc.;
`Toshiba America Information
`Systems, Inc.
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,618,788
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`Pursuant to the provisions of 35 U.S.C. §§ 311-319, Toshiba Corporation
`
`(hereinafter “Petitioner”) hereby petition the Patent Trial and Appeal Board to
`
`institute an inter partes review of claims 1-27 of United States Patent
`
`No. 6,618,788.
`
`
`
`
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`TABLE OF CONTENTS
`
`
`
`I. MANDATORY NOTICES ............................................................................ 1
`
`Page
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-in-Interest ........................................................................... 1
`
`Related Matters ..................................................................................... 1
`
`Lead and Back-up Counsel .................................................................. 1
`
`Service Information .............................................................................. 2
`
`II. GROUNDS FOR STANDING ....................................................................... 2
`
`III. RELIEF REQUESTED .................................................................................. 2
`
`IV. THE REASONS FOR THE REQUESTED RELIEF ..................................... 2
`
`A.
`
`B.
`
`Summary of Reasons ............................................................................ 3
`
`The ’788 Patent .................................................................................... 4
`
`1.
`
`2.
`
`Overview of the Patent and ATA Technology .......................... 4
`
`Prosecution History .................................................................... 6
`
`C.
`
`Identification of Challenges ................................................................. 6
`
`1.
`
`2.
`
`3.
`
`Challenged Claims ..................................................................... 6
`
`Statutory Grounds for Challenges (Pre-AIA) ............................ 6
`
`Claim Construction .................................................................... 7
`
`a.
`
`b.
`
`“ATA device”: A data device that complies with
`an ANSI (American National Standards Institute)
`ATA standard, for instance the standard “AT
`Attachment with Packet Interface Extension—
`(ATA/ATAPI-4)” or one of its predecessors................... 8
`
`“packet-to-ATA bridge”: a device that connects
`and converts between a remote host that sends and
`receives packets and an ATA device that sends and
`receives ATA signals ....................................................... 9
`
`
`
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`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`c.
`
`d.
`
`“packet-to-ATA bridging device”: a device that
`connects and converts between a remote host that
`sends and receives packets and an ATA device that
`sends and receives ATA signals ...................................... 9
`
`“ATA interface”: a connector providing signals
`specified by ATA/ATAPI-4 or one of its
`predecessors that can be attached to an ATA
`device ............................................................................. 10
`
`4.
`
`5.
`
`Level of Ordinary Skill in the Art ............................................ 11
`
`Identification of How the Construed Claims Are
`Unpatentable ............................................................................ 12
`
`a.
`
`b.
`
`c.
`
`d.
`
`Challenge #1: Claims 1, 9-10, 17-20, 22, and 24
`are anticipated by Bastiani ............................................. 12
`
`Challenge #2: Claims 1-27 are obvious through
`the modification of Bastiani using known
`techniques in the prior art .............................................. 36
`
`Challenge #3: Claims 7, 16, and 21 are rendered
`obvious by Bastiani in view of McDonald .................... 49
`
`Challenge #4: Claims 23 is rendered obvious by
`Bastiani in view of Clay ................................................ 54
`
`V.
`
`CONCLUSION ............................................................................................. 56
`
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`EXHIBIT LIST
`
`
`
`
`Exhibit Number
`
`Description
`
`TOSH-1001
`
`U.S. Patent 6,618,788
`
`TOSH-1002
`
`File History for U.S. Patent 6,618,788
`
`TOSH-1003
`
`U.S. Patent 6,609,167
`
`TOSH-1004
`
`Excerpt from Microsoft Computer Dictionary, 4th
`
`Edition (1999)
`
`TOSH-1005
`
`U.S. Patent 6,421,760
`
`TOSH-1006
`
`U.S. Patent 5,465,338
`
`TOSH-1007
`
`Declaration of Thomas Gardner
`
`TOSH-1008
`
`CV of Thomas Gardner
`
`TOSH-1009
`
`1999 Disk/Trend Report – Rigid Disk Drives
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`I. Mandatory Notices
`
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), the real parties-in-interest are Toshiba
`
`Corporation; Toshiba America, Inc.; Toshiba America Electronic Components,
`
`Inc.; and Toshiba America Information Systems, Inc. (collectively “Real Parties-
`
`In-Interest”).
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that Intellectual
`
`Ventures I LLC and Intellectual Ventures II LLC (“Intellectual Ventures”) are
`
`asserting U.S. Patent 6,618,788 (the “’788 patent”) against the Real Parties-In-
`
`Interest in a suit filed March 20, 2013, styled Intellectual Ventures I LLC and
`
`Intellectual Ventures II LLC v. Toshiba Corporation, Toshiba America, Inc.,
`
`Toshiba America Electronic Components, Inc., and Toshiba America Information
`
`Systems, Inc., pending in the U.S. District Court for the District of Delaware. As
`
`of the filing of this petition, no other judicial or administrative matters are known
`
`to Petitioner that would affect, or be affected by, a decision in an inter partes
`
`review of the ‘788 Patent.
`
`C. Lead and Back-up Counsel
`
`Lead Counsel
`Brent Yamashita
`DLA PIPER LLP (US)
`2000 University Avenue
`
`Back-up Counsel
`Gerald T. Sekimura
`DLA PIPER LLP (US)
`555 Mission Street, Suite 2400
`
`
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`East Palo Alto, California 94303
`
`Phone: (650) 833-2348
`Fax: (650) 687-1206
`brent.yamashita @dlapiper.com
`USPTO Customer No. 26379
`USPTO Reg. No. 53,808
`
`San Francisco, CA 94105
`
`Phone: (415) 836-2576
`Fax: (415) 659-7476
`gerald.sekimura@dlapiper.com
`USPTO Customer No. 26379
`USPTO Reg. No. 30,103
`
`
`
`
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following email address: IV-Toshiba-DLA-Team@dlapiper.com.
`
`II. Grounds for Standing
`
`Pursuant to 37 CFR § 42.104(a), Petitioner certifies that the ’788 Patent is
`
`available for inter partes review, and Petitioner is not estopped or barred from
`
`requesting inter partes review challenging the ’788 Patent on the grounds
`
`identified in this petition.
`
`III. Relief Requested
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-27 of the ’788 patent,
`
`and cancel claims 1-27 as invalid for the reasons set forth below.
`
`IV. The Reasons for the Requested Relief
`
`The full statement of the reasons for relief requested is as follows:
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`A.
`
`Summary of Reasons
`
`The ’788 patent relates to a packet-based bridge between a host computer
`
`and an ATA device, such as an ATA hard disk drive. (TOSH-1001, Abstract.)
`
`The embodiments enable a host computer to communicate with an ATA device
`
`using a packet-based interface, such as a USB interface. (TOSH-1001, Abstract.)
`
`The host computer generates an ATA Command Block, places it in a packet, and
`
`transmits the packet to a bridge connected to the ATA device. (TOSH-1001, 4:9-
`
`15). The bridge receives the packet, parses the ATA Command Block from the
`
`packet, and delivers the ATA Command Block to the ATA device in a series of
`
`register-based transactions. (TOSH-1001, 4:15-23). Claims 1-27 are directed to
`
`these concepts. Figure 5 illustrates an embodiment:
`
`
`
`(TOSH-1001, Figure 5.)
`
`However, the purported inventions of claims 1, 9-10, 17-20, 22, and 24 were
`
`disclosed earlier in U.S. Patent 6,609,167 (“Bastiani”), and claims 1-27 also are
`
`3
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`rendered obvious in light of Bastiani. (TOSH-1003). This petition demonstrates
`
`that Bastiani anticipates claims 1, 9-10, 17-20, 22, and 24 of the ’788 Patent. In
`
`addition, claims 2-8, 11-16, 21, 23, and 25-27, as well as claims 1, 9-10, 17-20, 22,
`
`and 24 to the extent not anticipated, are rendered obvious through the modification
`
`of Bastiani based on known techniques in the art. Furthermore, the following
`
`combinations of prior art render certain claims invalid: (1) Bastiani and U.S.
`
`Patent No. 6,421,760 (“McDonald”) render claims 7, 16, and 21 obvious; and (2)
`
`Bastiani and U.S. Patent 5,465,338 (“Clay”) render claim 23 obvious.
`
`B.
`
`The ’788 Patent
`
`1. Overview of the Patent and ATA Technology
`
`ATA technology is based on the ATA standards promulgated by the
`
`American National Standards Institute (ANSI). (TOSH-1001, 1:10-13; TOSH-
`
`1007, ¶11). At the time the ’788 patent was filed, the most recent version was
`
`ATA-4. (TOSH-1001, 1:10-15; TOSH-1007, ¶11). ATA-1, ATA-2, and ATA-3
`
`were predecessors to the ATA-4 standard. (TOSH-1007, ¶11). The ATA
`
`standards specified the connectors, cables, electrical and logical characteristics,
`
`and operational registers for an interface between a host computer and an ATA
`
`device, such as an ATA hard disk drive. (TOSH-1001, 1:20-30; TOSH-1007, ¶12).
`
`The host and the ATA device each utilized registers called “ATA Command
`
`Block” registers that were used to specify the location of the disk drive for a read
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`or write operation and for other functions. (TOSH-1001, 6:7-24; TOSH-1007,
`
`¶12). All read operations from the ATA device and all write operations to the
`
`ATA device were set up by or occurred through the ATA Command Block
`
`registers. (TOSH-1001, 2:1-3; TOSH-1007, ¶12). The ATA Command Block
`
`registers could hold values that would identify a specific location on an ATA
`
`device where the read or write operation would occur. (TOSH-1001, 2:1-9;
`
`TOSH-1007, ¶12). Among the registers in the ATA Command Block registers are
`
`the Command register for receiving the command to be executed and Data register
`
`for accessing data that was the subject of the read or write operation in the
`
`Programmed Input/Output (PIO) mode. (TOSH-1001, 2:1-9; TOSH-1007, ¶12).
`
`For example, the READ MULTIPLE command causes multiple sectors to be
`
`read from the ATA device. (TOSH-1001, 2:9-14). “To perform a READ
`
`MULTIPLE command, the host places the number of data sectors to be transferred
`
`in the Sector Count register, the starting sector number in the Sector Number
`
`register, the starting cylinder number in the Cylinder High/Cylinder Low registers,
`
`and the device number and starting head number in the Device/Head register.”
`
`(TOSH-1001, 2:14-19).
`
`The ’788 patent contains 27 claims. Claims 1 and 10 are independent
`
`method claims, and claims 18 and 24 are independent apparatus claims. Claim 1
`
`recites steps taken at the host and steps taken at the packet-to-ATA bridge to
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`enable register based ATA transactions to occur through packet-based
`
`communications between the host and packet-to-ATA bridge. Claim 10 is similar
`
`to claim 1 and focuses on steps taken at the packet-to-ATA bridge. Claim 18
`
`recites components provided in the packet-to-ATA bridge to enable register based
`
`ATA transactions to occur through packet-based communications between the
`
`remote host and packet-to-ATA bridge. Claim 24 is similar to claim 10 but is in
`
`apparatus form.
`
`2.
`
`Prosecution History
`
`The application that resulted in the ’788 patent was filed on September 27,
`
`2000. On April 15, 2003, the Examiner issued a Notice of Allowability that
`
`allowed claims 1-27. Notably, none of the prior art relied upon in this Petition—
`
`Bastiani, McDonald, and Clay—are listed in the references cited and considered by
`
`the Examiner during the prosecution of the ‘788 patent. (TOSH-1001, Cover
`
`Page).
`
`C.
`
`Identification of Challenges
`
`1.
`
`Challenged Claims
`
`Claims 1-27 of the ’788 patent are challenged in this petition.
`
`2.
`
`Statutory Grounds for Challenges (Pre-AIA)
`
`
`
`Challenge #1: Bastiani anticipates claims 1, 9-10, 17-20, 22, and 24 under
`
`35 U.S.C §102(e).
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`
`
`Challenge # 2: Bastiani, when modified based on known techniques in the
`
`prior art, render claims 2-8, 11-16, 21, 23, and 25-27 (as well as claims 1, 9-
`
`10, 17-20, 22, and 24 if not anticipated) obvious under 35 U.S.C. § 103.
`
`Challenge # 3: Bastiani and McDonald render claims 7, 16, and 21 obvious
`
`35 U.S.C. § 103.
`
`Challenge #4: Bastiani and Clay render claim 23 obvious under 35 U.S.C.
`
`
`
`
`
`§ 103.
`
`3.
`
`Claim Construction
`
`Pursuant to 37 C.F.R. § 42.100(b) and 42.204(b)(3), this petition presents
`
`claim analysis in a manner that is consistent with the broadest reasonable
`
`interpretation in light of the specification. Claim terms are given their ordinary
`
`and accustomed meaning as would be understood by one of ordinary skill in the
`
`art, unless the inventor, as a lexicographer, has set forth a special meaning for a
`
`term. Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998).
`
`In the ’788 patent, the inventor did not act as a lexicographer and did not
`
`provide a special meaning for any of the claim terms. Accordingly, using the
`
`broadest reasonable interpretation standard, the terms should be given their
`
`ordinary and custom meaning as understood by a person of ordinary skill in the art
`
`and consistent with the disclosure.
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`The proposed claim constructions contained below are presented using the
`
`broadest reasonable interpretation standard, which is applied solely for the
`
`purposes of inter partes review. Because the standards of claim interpretation used
`
`by the Courts in patent litigation are different from the claim interpretation
`
`standards used by the Office in inter partes review proceedings, Petitioner reserves
`
`the right to advocate a different claim interpretation in any other forum in
`
`accordance with the claim construction standards applied in such forum.
`
`Petitioner’s proposed constructions are the following:
`
`a.
`
`“ATA device”: A data device that complies with an
`ANSI (American National Standards Institute) ATA
`standard, for instance the standard “AT Attachment with
`Packet Interface Extension—(ATA/ATAPI-4)” or one of
`its predecessors.
`
`This construction is taken verbatim from the specification:
`
`An "ATA" device is a data device that complies with an
`
`ANSI (American National Standards Institute) ATA
`
`standard, for instance the standard "AT Attachment with
`
`Packet Interface Extension--(ATA/ATAPI-4)" or one of
`
`its predecessors. Future ATA standards are also
`
`currently contemplated; devices compliant with these
`
`standards will also be "ATA devices".
`
`(TOSH-1001, 1:11-17; TOSH-1007, ¶15).
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`
`
`The specification’s reference to subsequent ATA standards adds a layer of
`
`ambiguity to this term, and including any reference to subsequent standards in the
`
`construction would render this term indefinite under 35 U.S.C. § 112.
`
`b.
`
`“packet-to-ATA bridge”: a device that connects and
`converts between a remote host that sends and receives
`packets and an ATA device that sends and receives ATA
`signals.
`
`Petitioner’s proposed construction is supported by the specification. For
`
`example, the specification states:
`
`In yet another aspect of the invention, an apparatus
`
`comprising a packet-to-ATA bridge is disclosed. The
`
`bridge comprises a packet data interface to receive ATA
`
`register-delivered-command packets and data packets
`
`from a remote host, and to transmit data and status
`
`packets to the remote host. The bridge also comprises an
`
`ATA interface to transmit ATA bus host signals to an
`
`ATA device and receive ATA device signals from the
`
`device. (TOSH-1001, 4:28-36) (emphasis added).
`
`The specification further states: “Smart cable 150 provides a bridging
`
`function between the USB and ATA formats.” (TOSH-1001, 5:34-35; TOSH-
`
`1007, ¶16).
`
`c.
`
`“packet-to-ATA bridging device”: a device that
`connects and converts between a remote host that sends
`and receives packets and an ATA device that sends and
`receives ATA signals.
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`Petitioner’s proposed construction is supported by the same portions of the
`
`specification discussed previously for “packet-to-ATA bridge.” (TOSH-1001,
`
`4:28-36; TOSH-1007, ¶17).
`
`d.
`
`“ATA interface”: a connector providing signals
`specified by ATA/ATAPI-4 or one of its predecessors
`that can be attached to an ATA device.
`
`The term “ATA interface” refers to a physical connector that interfaces with
`
`the physical layer (PHY) specified by ATA/ATAPI-4 or one of its predecessors.
`
`(TOSH-1007, ¶18). In the prior art, the ATA interface would connect a computer
`
`thru a cable to a hard disk drive or other device. In the claims of the ’788 patent,
`
`an ATA interface connects a bridge to an ATA device. (TOSH-1007, ¶19). This is
`
`shown graphically in Figures 3 and 7:
`
`Figure 3 (TOSH-1001):
`
`Figure 7 (TOSH-1001):
`
`
`
`
`
`
`
`
`
`The ATA Interface is the connector at the bridge that connects directly to the
`
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
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`physical ATA cable and provides signaling appropriate to an ATA Device or an
`
`ATAPI Device. To put it another way, the physical ATA cable plugs into an
`
`“ATA interface.” The specification further supports Petitioner’s position:
`
`Returning to FIG. 3, two additional blocks, ATA host 97
`
`and ATA interface 98, complete the communication path
`
`to ATAPI device 100. ATA host 97 issues ATA
`
`PACKET commands to ATAPI device 100, and then
`
`controls transfer of ATAPI command packets and data
`
`between ATAPI logical host 96 and ATAPI device 100.
`
`ATA interface 98 provides the low-level timing,
`
`handshaking, and signal-driving necessary to
`
`communicate with ATAPI device 100 over ATA PHY
`
`101. (TOSH-1001, 3:29-37 (emphasis added)).
`
`
`
`The specification further states: “ATA interface 182 provides drivers and
`
`buffers to generate and read ATA-level signals on ATA PHY 184.” (TOSH-1001,
`
`6:23-25) (emphasis added).
`
`The above constructions are applied in the prior art analysis that follows.
`
`4.
`
`Level of Ordinary Skill in the Art
`
`One of ordinary skill in the relevant art at the time of the filing of the ’788
`
`patent would have had a Bachelor’s degree in electrical engineering and two years
`
`of industry experience working with IDE, ATA, ATAPI, or SCSI interfaces.
`
`(TOSH-1007, ¶14).
`
`
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`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`5.
`
`Identification of How the Construed Claims Are
`Unpatentable
`
`a.
`
`Challenge #1: Claims 1, 9-10, 17-20, 22, and 24 are
`anticipated by Bastiani
`
`Claims 1, 9-10, 17-20, 22, and 24 of the ’788 patent are anticipated by
`
`Bastiani under 35 U.S.C 102(e) (pre-AIA). Like the ’788 patent, Bastiani relates to
`
`a packet-based interface between a host computer and an IDE device, such as an
`
`IDE hard disk drive. (TOSH-1003, Abstract; 6:40-51). In the context of this
`
`matter, the terms “ATA” and “IDE” are synonymous and refer to the same
`
`technology. (TOSH-1004, TOSH-1007, ¶21). The host computer generates an
`
`ATA Command, places the ATA Command in a packet format, and transmits the
`
`packets to an ASP Adapter connected to the ATA (IDE) device. (TOSH-1003,
`
`Figure 3, 50:24-49). The ASP Adapter is a bridge that receives the packets, parses
`
`the ATA Command from a packet, and delivers the ATA Command to the ATA
`
`device in a series of register-based transactions. (Id., 50:24-49). These
`
`components are shown in Figure 3 of Bastiani, contained below next to Figure 5 of
`
`the ’788 patent for comparison’s sake:
`
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`Figure 3 from Bastiani:
`
`Figure 5 from ’788 patent:
`
`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`
`
`(TOSH-1001, Figure 5)
`
`
`
`(TOSH-1003, Figure 3)
`
`
`
`
`The following claim chart demonstrates, on a limitation-by-limitation basis,
`
`how claims 1, 9-10, 17-20, 22, and 24 of the ’788 patent are anticipated by
`
`Bastiani.
`
`Claim Element
`
`Disclosure in Bastiani
`
`1. A method of
`controlling an ATA
`device using packet-
`based communication
`between a host and a
`packet-to-ATA bridge,
`the method comprising
`
`Bastiani anticipates claim 1.
`
`In one embodiment, the main components of Bastiani
`are shown in Figure 3:
`
`
`
`13
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`Claim Element
`
`Disclosure in Bastiani
`
`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`Bastiani discloses the use of an “advanced serial
`protocol (ASP)” for packet communication between the
`host and a device. (TOSH-1003, 2:20-39)(packet-based
`communication). In the embodiment of Fig. 3, the host
`communicates over SERIAL BUS 110 with an ASP
`ADAPTER 118 (which is a packet-to-ATA bridge), and
`the ASP ADAPTER interacts with an IDE device (ATA
`device) over a standard IDE cable. (Id., 6:40-52). (A
`method of controlling an ATA device using packet-
`based communication between a host and a packet-to-
`ATA bridge)
`
`The IDE device of Bastiani is an “ATA device” under
`Petitioner’s construction because it is “a data device that
`complies with an ANSI (American National Standards
`Institute) ATA standard, for instance the standard ‘AT
`Attachment with Packet Interface Extension—
`(ATA/ATAPI-4)’ or one of its predecessors.”
`Specifically, the IDE device of Bastiani complies with
`the ATA/ATAPI-3 specification, as follows.
`
`Bastiani discloses: “The ASP protocol implements a
`serial transport mechanism and the commands and
`status that are passed are the normal ATA/ATAPI
`commands that are currently used with the parallel
`version of ATA/ATAPI. ATA/ATAPI commands are
`sent across the ASP bus by the transport mechanism and
`it is up to the device to execute these commands in a
`similar manner to what is done today. The code used to
`execute these commands should remain identical for all
`devices. The user should consult the current version of
`the X3T10 document on AT Attachement-3 [sic]
`Interface for a complete listing of the commands and
`responses that the device uses.” (TOSH-1003, 42:6-16).
`
`Furthermore, a person of ordinary skill in the art would
`understand that the IDE device of Bastiani is an ATA
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`Claim Element
`
`Disclosure in Bastiani
`
`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`device. (TOSH-1007, ¶21). For example, the Microsoft
`Computer Dictionary, 4th Ed. (1999), provides the
`following definition: “ATA/IDE hard disk drive n.
`ATA (Advanced Technology Attachment) and IDE
`(Integrated Drive Electronics—or numerous other
`interpretations) are one and the same thing…” (TOSH-
`1004).
`
`The ASP ADAPTER is a “packet-to-ATA bridge”
`under Petitioner’s construction because it is “a device
`that connects and converts between a remote host that
`sends and receives packets and an ATA device that
`sends and receives ATA signals.” The ASP ADAPTER
`connects and coverts between a host adapter (host) that
`uses ASP protocol (packet-based communication) and
`an IDE device (ATA device) that uses the ATA format.
`(TOSH-1003, Figure 3).
`
`Bastiani utilizes the ATA registers. The host sets up a
`command descriptor which is comprised of an ATA
`Command conforming to the ATA register format in the
`Host Command Descriptor Block (CDB) (formatting the
`ATA register accesses into a command block) for
`executing a data transfer defined by ATA registers, such
`as reading or writing (necessary to execute a given ATA
`register-delivered transaction).
`
`For example, Bastiani discloses: “An 8-byte ATA
`Command is prepared by the host in this field, and sent
`to the addressed device by the Host Controller using an
`OUTDATA0/1 packet. At command completion, an 8-
`byte ATA Status is returned by the device, and placed
`into this field by the DMA controller. Each byte in this
`field corresponds to the same byte in the ATA
`registers.” (TOSH-1003, 50:24-29).
`
`Bastiani also discloses: “1. The CPU 402 sets up a
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`at the host: formatting
`the ATA register
`accesses necessary to
`execute a given ATA
`register-delivered
`transaction into a
`command block; and
`
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`

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`Claim Element
`
`Disclosure in Bastiani
`
`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`Command Descriptor Block (CDB) 404 with an
`ATA/ATAPI command and a scatter/gather list in
`system memory.” (TOSH-1003, 49:13-15). “The HCI
`data structures include a command descriptor, a data
`transfer descriptor, and a scatter/gather list. The
`command descriptor consists of an ATA and ATAPI
`command.” (TOSH-1003, 49:31-33).
`
`The host sends an ATA Command specified by the
`command descriptor, as an OUTDATA0/1 packet
`(transmitting the command block in a packet format).
`Such an OUTDATA0/1 packet is received at an ASP
`ADAPTER 118 (a packet-to-ATA bridge) of the IDE
`(ATA) device, in the embodiment of Fig. 3.
`
`For example, Bastiani discloses: “The host issues, in
`one embodiment, commands identical to ATA or
`ATAPI commands which are encapsulated into a packet
`and transferred to the device as an OUTDATA0/1
`packet with the DataType field set equal to 1.” (TOSH-
`1003, 41:23-28).
`
`Specifically, Bastiani discloses: “The command
`descriptor consists of an ATA command and an ATAPI
`command if the attached device is an ATA device, and
`an ATA status returned by the device when the
`command is completed.” (TOSH-1003, 50:19-23). “An
`8-byte ATA Command is prepared by the host in this
`field, and sent to the addressed device by the Host
`Controller using an OUTDATA0/1 packet.” (TOSH-
`1003, 50:24-26).
`
`The ASP ADAPTER is a packet-to-ATA bridge. It
`parses or breaks down the ATA Command specified by
`the command descriptor which is sent from the host by
`using OUTDATA0/1 packet, into standard sequence of
`ATA operations to interact with the IDE (ATA) device
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`transmitting the
`command block to the
`packet-to-ATA bridge
`in a packet format, and
`
`at the packet-to-ATA
`bridge: parsing the
`command block into a
`sequence of ATA
`operations necessary to
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`Claim Element
`
`Disclosure in Bastiani
`
`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`execute the given ATA
`register-delivered
`transaction;
`
`communicating with an
`ATA device attached to
`the bridge via an ATA
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`(parsing the command block into a sequence of ATA
`operations) for executing the data transfer defined by
`ATA registers, such as reading or writing (necessary to
`execute the given ATA register-delivered transaction).
`
`The ASP ADAPTER connects to the IDE device (the
`ATA device) by a standard IDE cable, which means that
`it sends standard ATA commands to the IDE device so
`that the IDE device can perform data transfer defined by
`ATA registers (ATA register-delivered transactions).
`The ASP ADAPTER receives OUTDATA0/1 packets
`containing the ATA Command from the host over the
`ASP cable. Therefore, the ASP ADAPTER must parse
`or break down the ATA Command contained in the
`OUTDATA0/1 packets into standard sequence of ATA
`operations, and the ASP ADAPTER then causes those
`operations to occur by accessing ATA registers on the
`IDE device. See TOSH-1007, ¶¶23-25.
`
`For example, Bastiani discloses: “The ASP protocol
`implements a serial transport mechanism and the
`commands and status that are passed are the normal
`ATA/ATAPI commands that are currently used with the
`parallel version of ATA/ATAPI. ATA/ATAPI
`commands are sent across the ASP bus by the transport
`mechanism and it is up to the device to execute these
`commands in a similar manner to what is done today.
`The code used to execute these commands should
`remain identical for all devices. The user should consult
`the current version of the X3T10 document on AT
`Attachement-3 Interface for a complete listing of the
`commands and responses that the device uses.”
`(TOSH-1003, 42:6-16).
`
`Bastiani discloses an “ATA interface” as defined by
`Petitioner because it discloses “a connector providing
`signals specified by ATA/ATAPI-4 or one of its
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`Claim Element
`
`Disclosure in Bastiani
`
`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`interface to execute the
`sequence of ATA
`operations on the ATA
`device; and
`
`when the given ATA
`register-delivered
`transaction requests the
`values for one or more
`
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`predecessors that can be attached to an ATA device.” (¶
`IV.C.3.d, above)
`
`Specifically, Bastiani discloses an ATA interface
`between the bridge and ATA device at the connection of
`the parallel cable 120 to the IDE device 122 (an ATA
`device) in Figure 3 (excerpted above). Bastiani
`discloses: “In this implementation, it is possible to use
`existing IDE devices 122 that connect by way of a
`standard IDE parallel cable 120 to the ASP adapter
`118.” (TOSH-1003, 6:40-46).
`
`Bastiani also discloses that the ASP ADAPTER 118 (a
`bridge) provides signals specified by the ATA standard
`to the IDE device (an ATA device) via the standard IDE
`parallel cable 120. In response to such signals, the ASP
`ADAPTER 118 (a bridge) accesses ATA registers on
`the IDE device (an ATA device) to execute standard
`sequence of ATA operations (communicating with an
`ATA device attached to the bridge to execute the
`sequence of ATA operations on the ATA device).
`(TOSH-1007, ¶¶26-28). For example, Bastiani
`discloses, “The ASP protocol implements a serial
`transport mechanism and the commands and status that
`are passed are the normal ATA/ATAPI commands that
`are currently used with the parallel version of
`ATA/ATAPI. ATA/ATAPI commands are sent across
`the ASP bus by the transport mechanism and it is up to
`the device to execute these commands in a similar
`manner to what is done today. The code used to execute
`these commands should remain identical for all
`devices.” (TOSH-1003, 42:6-16).
`
`Bastiani discloses the ASP ADAPTER (packet-to-ATA
`bridge) returning as status the values for the registers on
`the ATA device using DATA0/1 packets (returning the
`register values to host in packet format) in response to a
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`

`Claim Element
`
`Disclosure in Bastiani
`
`U.S. Patent No. 6,618,788
`Petition For Inter Partes Review
`
`registers on the ATA
`device, returning the
`register values to the
`host in packet format.
`
`9. The method of claim
`1, further comprising,
`at the host, setting a
`group of action
`selection flags in the
`command block, the
`action selection flags
`further refining the
`mode in which the
`bridge is to
`communicate with the
`ATA device.
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`previously asked ATA command for executing data
`transfer defined by ATA registers (when the given ATA
`register-delivered transaction requests the values for one
`or more registers on the ATA device). For example,
`Bastiani discloses: “Device status is returned from the
`device by the host end polling with an INSTART poll
`with DataType set equal to 1. The device returns status
`based on the command it was previously asked to
`execute using DATA0/1 packets.” (TOSH-1003, 41:27-
`31, see also Table 46).
`
`Bastiani also discloses: “An 8-byte ATA Command