UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`____________
`
`Record of Oral Hearing
`Held: January 16, 2018
`____________
`
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L.
`QUINN, Administrative Patent Judges.
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`____________
`
`Record of Oral Hearing
`Held: January 16, 2018
`____________
`
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L.
`QUINN, Administrative Patent Judges.
`
`
`
`
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`LORI A. GORDON, ESQUIRE
`TYLER J. DUTTON, ESQUIRE
`Sterne, Kessler, Goldstein & Fox
`1100 New York Avenue, NW
`Washington, D.C. 20005
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`CHRISTOPHER V. GOODPASTOR, ESQUIRE
`GREGORY DONAHUE, ESQUIRE
`DiNovo Price, LLP
`7000 North Mopac Expressway
`Suite 350
`Austin, Texas 78731
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`January 16, 2018, commencing at 10:10 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE CHANG: Good morning. Welcome. I'm
`Administrative Patent Judge Joni Chang. Here with me joining
`with us remotely is Judges James Arpin and also Miriam Quinn.
`I just want to say hello to make sure the connection is correct and
`everything goes smoothly. Good morning, Judge Arpin.
`JUDGE ARPIN: Good morning, Judge Chang.
`JUDGE CHANG: Good morning, Judge Quinn.
`JUDGE QUINN: Good morning, Judge Chang.
`JUDGE CHANG: I'm not seeing you on the TV in the
`hearing room. I know you are remotely from Dallas. So will we
`will able to see you at all, Judge Quinn?
`JUDGE QUINN: I believe I was on the screen earlier.
`The technical support staff may be able to figure that out. I can
`see you and I can also see Judge Arpin from Denver.
`JUDGE CHANG: Okay. Ms. Cook? Let me wait a
`few minutes. I'm so sorry. In Dallas, actually, it was a two-hour
`delay today due to the weather. Ms. Cook, we still just have
`Judge Arpin on the TV. It will be better if we can see Judge
`Quinn on the TV. In the meantime, do you mind, Judge Quinn,
`that we go through with the introductions?
`JUDGE QUINN: Yes, go ahead. Let's proceed.
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`JUDGE CHANG: Thank you. So we are going to start
`with the petitioner and then the patent owner. Please introduce
`yourself and your colleagues.
`MS. GORDON: I'm Lori Gordon from the law firm of
`Sterne, Kessler, Goldstein & Fox, and I'll be arguing both cases
`today on behalf of the petitioner, Apple. With me at counsel's
`table is Tyler Dutton as well as Steve Peters also from Sterne
`Kessler.
`JUDGE CHANG: Welcome. Thank you.
`MR. GOODPASTOR: Good morning, Your Honor.
`Chris Goodpastor with DiNovo Price for the patent owner. I'm
`joined by my colleague, Greg Donahue as well with DiNovo
`Price. I'll be arguing the IPRs that rely on Pucci as a primary
`reference. Mr. Donahue will be arguing the IPRs that rely on
`Kawaguchi.
`JUDGE CHANG: Thank you. Yes, we can see you
`now, Judge Quinn. Thank you so much.
`This is a consolidated oral hearing for IPR2016-01839,
`01842, 01863 and 01864. It is open to the public and the
`transcript will be entered in each of the files.
`Before we begin, I have a few procedural issues to go
`over. Consistent with our prior order, we will start with the
`arguments for IPR2016-01842, 1863 and 1864. Those are the
`three cases that involve the prior art reference Pucci. Each party
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`has 45 minutes to present its argument for these three
`proceedings. The petitioner will go first, present its case as to the
`challenged claim. Thereafter, the patent owner will respond to
`petitioner's case as to those three cases. Petitioner may reserve a
`small portion of its time for rebuttal responding to the patent
`owner's specific argument expressly presented during the hearing.
`Thereafter, we will take a 15-minute break, okay, and after the
`break, we'll continue the argument for IPR2016-01839 involving
`the prior art reference Kawaguchi and using the same format.
`And each party has 30 minutes as to that particular case.
`Lastly, please note that the image projection will not be
`visible to Judge Arpin and Judge Quinn. So the presenter may
`speak only when standing at the podium, and please speak clearly
`and also identify the specific slide number or page number from
`the record. This way we will make sure that the record is clear.
`And before we begin, do you have a copy of your
`demonstratives for the court reporter? Thank you so much. And
`then counsel, you may begin any time.
`MS. GORDON: Thank you, Your Honor. Good
`morning, Your Honors.
`JUDGE CHANG: Good morning. And how much time
`do you want to reserve for rebuttal?
`MS. GORDON: I would like to reserve 15 minutes of
`our argument time for rebuttal.
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`Your Honors, because the three patents that we'll be
`discussing this morning share a common specification, we will
`refer to these patents generally as the Tasler patents for ease of
`discussion. But anywhere where we are citing to a specific
`portion of a patent, we will identify it by patent number as well as
`the column and line number.
`There are three primary disputes in the Pucci IPR
`proceedings. First, whether petitioner's proposed combination of
`Pucci, Schmidt and Kepley teaches or suggests the recited
`recognition limitations of each claim. Second, whether
`petitioner's proposed combination requires user-loaded software.
`And both of these issues and disputes apply to all three patents in
`this proceeding. The third dispute is whether petitioner's
`proposed combination teaches or suggests the storage of data as
`files or as files in a file system. And that dispute only relates to
`the '437 and the '746. So we'll discuss that dispute last.
`And each of patent owner's rebuttal arguments in this
`case ignores petitioner's actual combination and instead attacks
`the references in isolation. Therefore, before addressing directly
`patent owner's arguments in rebuttal, we will start with a
`high-level discussion of our combination so it's clear what the
`combination petitioner proposed in the petition.
`JUDGE ARPIN: Counselor, before you begin your
`discussion of the combinations, these patents are scheduled to
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`expire possibly before we issue a final written decision. In your
`reply you have said that the Phillips standard for claim
`construction would then apply. Does claim construction matter in
`these cases?
`MS. GORDON: Yes, Your Honor. There are some
`disputes that turn on the construction of several terms. So claim
`construction is an issue. However, I think both parties agreed to
`proceed under the Phillips standard. And I believe the patents
`expire at the beginning of March. So our understanding is the
`Phillips standard would apply.
`JUDGE ARPIN: But does that change the constructions
`that we have made in the DIs for these cases?
`MS. GORDON: Your Honor, we haven't briefed under
`the broadest reasonable interpretation, but we don't believe that it
`would be dispositive and any of the issues or the claim
`constructions would change.
`JUDGE ARPIN: Thank you, counsel. Please continue.
`MS. GORDON: So turning your attention to slide
`number 14, and starting with our base reference, which is the
`Pucci reference, slide 14 shows Figure 1 of Pucci. And what we
`see in this figure is that Pucci includes the centralized ION node
`which is connected to multiple workstations. And these
`workstations are just standard computers, off-the-shelf computers
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`like a laptop or a workstation that were available at the time of
`Pucci, which is before the 1997 priority date of the Tasler patents.
`And what do we know about ION? First we know that
`that ION node in the middle emulates a disk drive. That's its
`purpose. We see here on the quote on slide 14, Pucci tells us that
`each workstation uses its ION connection as though it were a
`large conventional disk drive. In other words, the host thinks it's
`connected to a disk drive. It doesn't know that it's connected to
`this ION node.
`Turning to our slide 15, we see more references in Pucci
`to the conventional disk drive and the emulation. You see Pucci
`saying that a workstation sees ION as though it were physically a
`local disk drive. In other words, that workstation thinks it's
`attached to a hard disk.
`Pucci continues telling us that software running within
`the ION system mimics the behavior of a conventional device
`providing the workstation with a peripheral that it knows how to
`deal with. In other words, the whole point of Pucci and its ION
`node is to pretend that it's a hard disk. So the workstation thinks
`I'm attached to the hard disk. I know how to talk to a hard disk,
`and I do that in a specific way. And Pucci tells us what that
`specific way is. He uses the standardized SCSI interface.
`And we need only look at the first page of Pucci, which
`I'm going to put up on the ELMO, which is Apple Exhibit 1041,
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`and it's Pucci page 217. And in the second sentence of Pucci, it
`says, explaining what the system is, it's a back-end system
`connecting to the workstation via the small computer system's
`interface, SCSI disk interface. In other words, I use the
`standardized SCSI interface. Pucci talks throughout about SCSI
`and how it uses SCSI. In fact, for the user it even provides an
`appendix giving you the basic understanding of SCSI.
`But what Pucci doesn't include because it references the
`standard, it doesn't tell you what individual SCSI commands and
`responses look like. That's why petitioner combined Pucci with
`Schmidt, to provide the details of the SCSI protocol.
`JUDGE QUINN: Counsel, I have a question on the first
`page of Pucci. Pucci describes on that page 217 that there is a
`mapping of the functionality of the simple disk read and write
`accesses in the applications functionality. So my question to you
`is, is it possible that Pucci, although it may be emulating a disk
`drive, that it is not actually using the SCSI driver to perform the
`reads and writes since those functions are mapped to the
`application?
`MS. GORDON: Your Honor, it's not possible. In fact,
`Pucci throughout says that it doesn't change any of the drivers on
`the host and it includes the corresponding driver. So it's not
`changing the host SCSI disk driver, and it's interfacing with a
`SCSI disk driver, meaning it's using it as it's been standardized.
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`Pucci is using the operating system and the SCSI interface just
`like any other high-level application running on any workstation
`would use it.
`The workstation -- an application that's running, if it
`wants to read or access files, says, I want to read a file. What
`happens? It accesses the operating system, says, I want to read
`file X. The operating system then uses the file access table which
`its acquired as part of its boot process, and this is something that
`every single computer standardized in the '90s and today does.
`And so then it uses its file access table, figures out the physical
`location of that file and uses SCSI to transfer that file.
`JUDGE QUINN: Let me interrupt you because the way
`Pucci explains it, the way it works in that A-to-D converter
`embodiment, the data is being read or accessed in blocks of data.
`It doesn't say anything about files. So when the application, I
`believe it's using Unix commands to seek and read a specific
`block of what it thinks is a hard drive, then that's at the
`application layer, right?
`MS. GORDON: That would be at the Unix operating
`system layer if it's using those Unix commands. So that would
`be, again, that same driver layer but using the Unix operating
`system.
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`JUDGE QUINN: So the kernel in the Unix system is
`issuing those commands. And then what happens at the layers
`below that such that the SCSI driver is involved?
`MS. GORDON: So operating systems would have calls
`to the interface drivers that they are using to connect to the
`peripherals. And I believe Unix was no different than the other
`operating systems at the time. So if the operating system needed
`to obtain a file, it would invoke the protocol that was being used
`at the hardware layer. So we are kind of way down in the
`protocol stack in where the Tasler patents operate. So you have
`the application up here and everything flows down. So even at
`Unix level, you know, the Unix operating system would invoke
`the protocol at the lower device hardware layer to, you know,
`effectuate the transfer that it needs.
`JUDGE QUINN: I'm assuming you made hand
`gestures. I didn't see you.
`MS. GORDON: I'm sorry. So I was illustrating the
`protocol stack with application at the top, and then as you go
`down, the application would invoke the operating system which
`invokes at the lower layer the device driver and the hardware
`layer, so until you eventually get to that physical wire that's
`interconnecting the devices.
`But Your Honor, I think we need to step back, because
`this is the fundamental issue with patent owner's arguments in
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`that they are focusing the Board's attention on Pucci's application
`unmodified. And that's not what our combination was. I think I
`would turn your attention to, let's say, page 14 of the '746
`petition. And I'm going to put that up on the ELMO right now.
`So it's page 14 of the petition in the '746 proceeding.
`So patent owner throughout their papers has tried to
`focus and make a distinction about how Pucci describes its voice
`messaging application as a buffering system that you access. And
`I think, Judge Quinn, you had described it through these Unix
`commands as what they described.
`But if you look at our petition, that's not the
`combination we were making. In fact, we were replacing how
`Pucci does its voice messaging application with Kepley's voice
`messaging application. I think when you step back and
`understand our combination, you can see why patent owner's
`arguments throughout their patent owner response have no merit.
`What petitioner was saying is we see that Pucci has
`these A-to-D converters at their ION node. We know that Pucci
`receives an analog voice message and digitizes it, but it stores it
`in a buffer for retrieval. And what we said in our petition was
`that didn't address permanent storage. And we all have used
`voice mail for a long time, and you know that you want your
`voice mail to be there more than the time it takes to fill up a
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`buffer and overwrite it. You want that voice mail stored
`permanently.
`And because Pucci doesn't talk about how to use stored
`data more than temporarily, we brought in the Kepley reference.
`And what does Kepley teach us? Well, Kepley teaches us that
`when you receive an analog voice message, you convert it to
`digital, you compress it and you store it as a file in a file system
`like the file system of Pucci.
`So our combination was not relying on Pucci's buffering
`and access in this manner. It was relying on Pucci's storage of the
`voice message as a file in a file system. And that way it's no
`different than Tasler, which has a user application that the user
`directs that accesses a file after the connection and the
`recognition process is completed.
`JUDGE QUINN: But there is a limit to that
`combination because the understanding that Pucci works at the
`level it works is precisely to separate from the application in the
`workstation the interface or what it does with regards to the
`accessing of the data at the ION node. So you cannot just say,
`well, let's put Kepley in there and forget about how the
`application at the controller or the workstation issues commands
`to get the data or the file, whichever one we are going to go with
`here. But that part of it is not affected, right? You are only
`changing how—once Pucci retrieves the A-to-D conversion file
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`or data—that it is stored in ION in a manner which Kepley
`describes; is that right?
`MS. GORDON: Right. So I think -- and patent owner
`has created a lot of confusion that is not necessary by focusing on
`the wrong part of the combination and actually focusing on things
`that don't matter in their claims. So there's nothing in their claims
`that discusses how read and write access happens. Their claims
`are focused on this automatic recognition process where a host
`recognizes a device that's emulating another device. So that's
`kind of the context of their claim.
`But stepping back into Pucci, I think again patent owner
`focuses you on one example application ignoring Pucci as a
`whole. Pucci is more than just its exemplary voice mail
`application. Pucci is a node. It's a system. It's designed to
`emulate a hard disk. It has a file system.
`JUDGE QUINN: You didn't answer my question. My
`question was that when you look at Pucci, how it describes the
`workstation and how it accesses data from the A-to-D converters,
`that is separate from what is happening in the ION node as to how
`the buffering and how that data is converted into a file and stored
`there. So my question earlier to you was about the file structure
`stack or how the accessing occurs, because that helps me
`understand Pucci at the level of that there are multiple things
`happening at different layers versus my question really was
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`Kepley is being used for the ION node aspect of the file, as to the
`file, right?
`MS. GORDON: Right. Well, Kepley is being used to
`replace Pucci's voice mail application to show that the voice
`messages are being stored in a file in a file system. Now, nothing
`in the claims addressed access to the files after they have been
`stored. But I can step back. And I was trying, actually, Judge
`Quinn to answer your question and maybe I was doing it in too
`long of a form. So let me try and answer a little more directly.
`So Pucci doesn't require an application running on the
`host to operate. Pucci explains that if you are doing end-to-end
`voice mail application, of course much like if you had your cell
`phone and you wanted to look at your photos, you would still
`need an application running on your phone to run on your phone
`to then access your images that are stored on your disk. But
`Pucci doesn't need an application running on its host to access
`these files. It can do it in the way that any other computer or host
`would do it.
`So for example, Pucci has a number of different
`applications that are running on it that don't have the same kind of
`description as a voice messaging system. So if you wanted to
`access a file on Pucci, you would first go through the operating
`system boot-up sequence. Pucci's host would say I know that I'm
`attached to a hard disk, I know that the hard disk has this file
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`system, I have retrieved its file access table, I know what files are
`there, I know where they physically are.
`Then on the host workstation, if a user wanted to
`transfer a voice mail file, it can actually just go into the DOS
`commands and say read file X. And then the operating system
`would take that without any modification and access this from the
`ION node just in in the same way that any other computer system
`probably from, you know, the late '80s, early '90s would work.
`So Pucci doesn't require an application to work with its file
`system embodiments on the ION node. And that's what we are
`talking about, is using the ION node to store analog-to-digital
`converted data as a file in a file system that then can be
`transferred using normal SCSI commands.
`JUDGE QUINN: Okay. So let's say I disagree with
`you and that the Pucci reference expressly requires an application
`for voice mail in that the application at the workstation is the one
`that is telling the A-to-D converters when to start working and
`when to get the file, okay. Your proposed combination with
`Kepley does not replace what's happening at the workstation,
`only replaces or substitutes the processing of the file or the data,
`rather, as a file in the ION node.
`MS. GORDON: Right. So I think maybe stepping back
`to Pucci's application, because even in its application, the start
`and stop doesn't start and stop acquisition. That's only related to
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`the compression piece. So what Pucci was doing was it was
`actually obtaining the voice message over the A-to-D converter
`and digitizing it at some time that was unrelated to the host, right.
`So in Pucci, it obtained the voice message. It digitized it, stores it
`in a buffer.
`What the start and stop was, was really related to
`compression if you needed compression. I mean, there's no
`requirement that you have compression. You could have sent that
`uncompressed. But what Pucci was saying is if you were using
`compression, that start and stop would start the compression
`process so that you could send data when it was requested in a
`compressed format.
`So what Kepley is really saying is Pucci teaches us that
`you acquire the voice messaging, store it in a digital format.
`Instead of storing it in a buffer, you store it in a file. So I think,
`you know, with that understanding, when it's stored in a file and
`it's compressed, you no longer need the start and stop aspect of
`the Pucci application where we are replacing that. And now what
`you have is access to the Pucci voice mail in the way that you
`would access a normal file. And that's our combination.
`But again, none of the claims go to how you address
`and retrieve a file. That's beyond the scope of what was claimed.
`JUDGE QUINN: Where in your petition do you make
`the argument that you are replacing this both the workstation
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`application plus the hardware-specific application that resides in
`ION, both?
`MS. GORDON: So in our petition we addressed
`actually what was in the claims. And the claims only address this
`recognition process. So they never go to the process of reading
`and writing data after the node recognizes itself. So there was
`nothing in the claims that talked about kind of the process of
`reading or writing.
`But in our petition, as I'm putting up or I have up on the
`ELMO, page 14 of the '746 petition where we explain what we
`are doing is we are substituting Kepley's analog voice processing
`which includes the storage of the digitized voice message as a file
`with Pucci's analog voice message processing which includes the
`digital conversion but lacks file storage. So throughout our
`petition in our supporting declaration, as further explained in our
`reply, our combination is taking that buffering and compression,
`realtime compression piece of Pucci and replacing it with
`Kepley's file system.
`Now, if the claims had talked about later retrieval of a
`file, we would have explained how you'd done that. But the
`record has considerable evidence from Mr. Gafford, their own
`expert, as well as Dr. Zadok that file access and file transfer using
`SCSI and operating systems was well known. It was handled by
`the operating system, the commercial conventionally available
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`application or driver software. So that was all done within kind
`of the software that was on the computer that the user bought.
`There was no need for a user to intervene. So that's the
`combination that was presented.
`Judge Quinn, if you have no further questions about our
`combination, I would like to quickly jump to the three disputes.
`JUDGE QUINN: Yeah, you can go ahead. I'm still
`thinking about it.
`MS. GORDON: Okay. Thank you. So I would like to
`focus on, start with the '399 recognition limitation. And I will
`turn your attention to our slide number 11. And this shows the
`language from the '399 patent related to recognition. And the
`claim language recites that you have a file -- first command
`interpreter that when receiving an inquiry from the host device as
`to the type of device attached to the multipurpose interface of the
`host, signals to the host device, that is it is an input/output device
`customary in a host device.
`Now, as we discussed today, at this level Pucci tells us
`that the ION node is mimicking a hard disk to the workstation to
`the ION to the host workstation. And so it's mimicking. It's
`telling the host I'm a disk drive. The host believes it. It interacts
`with it like it's a disk drive. And there is no dispute between the
`parties, at least it appears between the experts, that a hard disk
`was an input/output device customary in the 1997 timeframe.
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`So what you have is petitioners attacking each reference
`in isolation. First they say if you look at Pucci alone, it doesn't
`show a response to an inquiry command. If you look at Schmidt
`alone, it doesn't say anything about emulation. But again,
`petitioner is ignoring the combination. And we say what a person
`of skill in the art would have recognized when you put them
`together, because Pucci says I emulate a hard disk and I use
`SCSI, you would understand that in Pucci the inquiry command
`results in the ION device saying that I am a device class equal to
`a hard disk. And patent owner never addresses whether the
`combination teaches our -- teaches that limitation. And in fact, it
`does. For that reason alone, patent owner's argument in all three
`cases must fail.
`And patent owner's expert, as I put up on our slide 23,
`conceded in deposition that, in fact, there was nothing that
`precludes the ION node from identifying itself as a hard disk.
`Their own expert acknowledged that the ION node, in fact, could
`use SCSI to identify itself as a hard disk.
`JUDGE QUINN: What do you say about patent
`owner's argument that even though the inquiry command is
`mandatory, the response to that command is not necessarily the
`device type identification because there are other responses such
`as, I believe, “check condition” that does not perform the same
`effect on the workstation?
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`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
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`MS. GORDON: And again, patent owner, it's a
`misunderstanding of the SCSI standard, and our expert has
`explained it. So Pucci very clearly says I emulate a hard disk.
`And our expert has explained if you are emulating a hard disk so
`that the workstation thinks you are a hard disk, you would
`respond with that 00f, I think it is, saying I'm a hard disk.
`Now, the check condition response is only used in SCSI
`in a very narrow situation where the target device doesn't know or
`can't execute the command. We know that Pucci is specifically
`designed so it knows how to respond to an inquiry command and
`it does it to emulate a hard disk. So they are bringing in the
`check condition and saying that Pucci would do that. It's contrary
`to what Pucci teaches. It teaches that I use SCSI and I pretend to
`be a hard disk. So it would never all the time send check
`condition because it wouldn't operate in this way. And we know
`that Pucci operates in this way because it was an experimental
`system that they explained they actually had up and running in
`their lab. So that argument just is fundamentally flawed as a
`technical matter and Pucci, in fact, teaches against it.
`Patent owner also makes this argument that Pucci, if it
`was emulating a hard drive and a workstation attempted to act
`and int
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