throbber
 
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`Trial Number:______________
`
`Oct. 14, 1997
`
`In re U.S. Patent No. 5,678,042
`
`Filed:
`
`Issued:
`
`Inventor:
`
`Assignee: Clouding IP, LLC
`
`Title:
`
`Jan. 24, 1996
`
`Thomas Pisello, et al.
`
`Network Management System Having Historical Virtual
`Catalog Snapshots For Overview of Historical Changes To
`Files Distributively Stored Across Network Domain
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,678,042
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`

`


`
`TABLE OF CONTENTS
`TABLE OF CONTENTS ......................................................................................... i
`
`EXHIBIT LIST ...................................................................................................... iii
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES ........................................................................... 2
`A. Real Party-In-Interest ................................................................................... 2
`B. Related Maters ............................................................................................... 2
`C. Lead and Back-Up Counsel .......................................................................... 3
`D. Service Information ....................................................................................... 3
`
`III. PAYMENT OF FEES ................................................................................... 3
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ................................ 4
`A. Grounds for Standing .................................................................................... 4
`B. Identification of Challenge ............................................................................ 4
`1. The Specific Art and Statutory Ground(s) on Which the Challenge Is
`Based ........................................................................................................ 4
`2. How the Construed Claims Are Unpatentable under the Statutory
`Grounds Identified in 37 C.F.R. § 42.204(B)(2) and Supporting
`Evidence Relied upon to Support the Challenge ................................. 6
`
`FACTUAL BACKGROUND ........................................................................ 7
`V.
`A. Declaration Evidence ..................................................................................... 7
`B. The State of the Art ....................................................................................... 8
`C. The ‘528 Patent Application ......................................................................... 9
`D. The Prosecution History ............................................................................. 11
`
`VI. BROADEST REASONABLE CONSTRUCTION ................................... 12
`A. Local Catalog ............................................................................................... 13
`B. Snapshot ........................................................................................................ 14
`C. Historical Database ...................................................................................... 15
`
`VII. REPRESENTATIVE PROPOSED REJECTIONS SHOWING
`THAT PETITIONER HAS A REASONABLE LIKELIHOOD
`OF PREVAILING ....................................................................................... 16
`
`i
`
`

`


`
`A. Claims 1-4 Are Rendered Obvious by Reference Model
`When Viewed in Combination with Floyd and Essential
`System Administration ................................................................................ 16
`B. Claims 1-4 Are Rendered Obvious by Caccavale When
`Viewed in Combination with Reference Model, Floyd, and
`Essential System Administration ............................................................... 29
`C. Claims 1-4 Are Rendered Obvious by Robins When Viewed
`in Combination with Reference Model and Floyd ................................... 42
`
`VIII. CONCLUSION ............................................................................................ 53
`
`CERTIFICATE OF SERVICE ............................................................................ 54
`
`
`
`ii
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`

`


`
`EXHIBIT LIST
`

`Oracle Ex. 1001 U.S. Patent No. 5,678,042 to Pisello et al.
`Oracle Ex. 1002
`IEEE Technical Committee on Mass Storage Systems and
`Technology, Mass Storage System Reference Model: Version 4
`(1990)
`Oracle Ex. 1003 Æleen Frisch, Essential System Administration (1991)
`(excerpts)
`Oracle Ex. 1004 Floyd, Transparency in Distributed File Systems, University of
`Rochester Technical Report 272 (Jan. 1989).
`Oracle Ex. 1005 Network utilities: building the LAN toolkit, 13 InfoWorld 59
`(1991) (excerpts)
`Oracle Ex. 1006 Declaration of Professor Todd C. Mowry
`Oracle Ex. 1007 U.S. Patent No. 5,664,106 to Caccavale
`Oracle Ex. 1008 U.S. Patent No. 5,049,873 to Robins et al.
`Oracle Ex. 1009 UNIX User’s Reference Manual (1986) (excerpts)
`Oracle Ex. 1010 Foglesong et al., The Livermore distributed storage system:
`implementation and experiences, Tenth IEEE Symposium on
`Mass Storage Systems (1990)
`Oracle Ex. 1011 Lee et al., RAID-II: A Scalable Storage Architecture for High-
`Bandwidth Network File Service, U.C. Berkeley Technical
`Report CSD-92-672 (Feb. 1992)
`Oracle Ex. 1012 Snodgrass, A Relational Approach to Monitoring Complex
`Systems, 6 ACM Transactions on Computer Systems 157
`(1988).
`
`iii
`
`

`


`
`I.
`
`INTRODUCTION
`
`Petitioner Oracle Corporation (“Oracle” or “Petitioner”) respectfully
`
`requests inter partes review for claims 1-4 of U.S. Patent No. 5,678,042 (“the ‘042
`
`patent,” attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319 and 37
`
`C.F.R. § 42.100 et seq.
`
`The ‘042 patent is generally directed to a system of network management
`
`and monitoring where the network includes file servers. More particularly, the
`
`‘042 patent is directed to a system in which snapshots of the contents of the file
`
`servers are taken and stored to create a historical database. (Ex. 1001 at Col. 13,
`
`lines 39-63.) Changes in the historical database can be tracked over time in
`
`various specific ways, such as by user or file location. (Id. at Col. 15, lines 3-14;
`
`Col. 16, lines 45-67.)
`
`The claims describe the method of carrying out this snapshot and tracking
`
`process. However, this technique was well-known years prior to the effective
`
`filing date of the ‘042 patent, as demonstrated by various references which were
`
`not before the Examiner. For example, Mass Storage System Reference Model:
`
`Version 4, IEEE Technical Committee on Mass Storage Systems and Technology
`
`(1990) (“Reference Model”) describes a distributed storage network in which a
`
`central server keeps track of the contents of the associated file servers and stores
`
`the information in a historical database. (Ex. 1002.) Similarly, Essential System
`
`1
`
`

`


`
`Administration (“ESA”) by Æleen Frisch (1991) includes a chapter on automating
`
`routine network administrative tasks and one of the examples describes running a
`
`script to automatically take snapshots of the directory contents of devices to
`
`monitor disk usage by comparing the snapshot with those taken previously. (Ex.
`
`1003.)
`
`The references, claim charts and declaration evidence presented herewith
`
`demonstrate that claims 1-4 of the ‘042 patent are rendered obvious by the various
`
`combinations of prior art discussed below.
`
`II. MANDATORY NOTICES
`Pursuant to 37 C.F.R. § 42.8(a)(1), Oracle provides the following mandatory
`
`disclosures.
`
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Oracle is the real
`
`party-in-interest.
`
`B. Related Maters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘042 Patent is
`
`asserted in co-pending litigation captioned Clouding IP, LLC v. Oracle Corp.,
`
`D.Del., Case No. 1:12-cv-00642. The case was originally captioned STEC IP LLC
`
`v. Oracle Corp., after which STEC IP, LLC changed its name to Clouding IP,
`
`LLC. This litigation remains pending. The patents-in-suit are U.S. Patents
`
`6,631,449; 6,918,014; 7,596,784; 7,065,637; 6,738,799; 5,944,839; 5,825,891;
`
`2
`
`

`


`
`5,678,042; 5,495,607; 7,254,621; and 6,925,481. This IPR petition is directed to
`
`U.S. Patent No. 5,678,042; however, petitions corresponding to the remaining
`
`patents will be filed in the forthcoming weeks.
`
`C. Lead and Back-Up Counsel
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Greg Gardella (Reg. No. 46,045) and
`
`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
`
`Service Information
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following.
`
`Address: Greg Gardella or Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketgardella@oblon.com and
`cpdocketmckeown@oblon.com
`Telephone: (703) 413-3000
`Fax:
`
`(703) 413-2220
`
`Email:
`
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $27,200 to Deposit Account
`
`No. 15-0030 as the fee required by 37 C.F.R. § 42.15(a) for this Petition for inter
`
`partes review. The undersigned further authorizes payment for any additional fees
`
`that might be due in connection with this Petition to be charged to the above
`
`referenced Deposit Account.
`
`3
`
`

`


`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘042 patent is satisfied.
`
`A. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘042
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘042
`
`patent on the grounds identified herein. The ‘042 patent has not been subject to a
`
`previous estoppel based proceeding of the AIA, and, the complaint served on
`
`Oracle referenced above in Section I(B) was served within the last 12 months.
`
`B. Identification of Challenge
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1-4 of the ‘042 patent, and that the Patent Trial and Appeal
`
`Board (“PTAB”) invalidate the same.
`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based
`
`
`
`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ‘042 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`‘042 patent under 35 U.S.C. § 102 (a), (b), and/or (e):
`
`(1) Mass Storage System Reference Model: Version 4 IEEE Technical
`
`Committee on Mass Storage Systems and Technology (“Reference Model,” Ex.
`
`4
`
`

`


`
`1002) was published in 1990. Reference Model is available as prior art against all
`
`claims of the ‘042 patent under 35 U.S.C. § 102(b).
`
`(2)
`
`“Transparency in Distributed File Systems” was the Ph.D thesis of
`
`Richard Allen Floyd (“Floyd”; Ex. 1004) and was published as University of
`
`Rochester Technical Report 272 in January, 1989. Floyd is available as prior art
`
`under 35 U.S.C. § 102(b).
`
`(3) Essential System Administration (“ESA,” Ex. 1003) was published in
`
`1991. ESA is available as prior art against all claims of the ‘042 patent under 35
`
`U.S.C. § 102(b).
`
`(4) U.S. Patent No. 5,664,106 to Caccavale (“Caccavale,” Ex. 1007) was
`
`filed February 9, 1995 as a divisional of Application No. 08/072,613 filed on June
`
`4, 1993. Caccavale is available as prior art against all claims of the ‘042 patent
`
`under 35 U.S.C. § 102(e).
`
`(5) U.S. Patent No. 5,079,873 to Robins (“Robins,” Ex. 1008) was filed
`
`May 4, 1990, and issued on Sept. 17, 1991. Robins is available as prior art against
`
`all claims of the ‘042 patent under 35 U.S.C. § 102(b).
`
`Claims 1-4 of the ‘042 patent are rendered obvious under 35 U.S.C. § 103 by
`
`Reference Model (Ex. 1002) in view of Floyd (Ex. 1004) and ESA (Ex. 1003).
`
`Caccavale (Ex. 1007) renders claims 1-4 obvious under 35 U.S.C. § 103 when
`
`considered in combination with Reference Model (Ex. 1002), Floyd (Ex. 1004) and
`
`5
`
`

`


`
`ESA (Ex. 1003). Claims 1-4 of the ‘042 patent are rendered obvious by Robins
`
`(Ex. 1008) in view of Reference Model (Ex. 1002) and Floyd (Ex. 1004) under 35
`
`U.S.C. § 103.
`
`2.
`
`How the Construed Claims Are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(B)(2)
`and Supporting Evidence Relied upon to Support the
`Challenge
`
`
` Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 1-4 of
`
`the ‘042 patent are unpatentable under the statutory grounds identified above,
`
`including the identification of where each element of the claim is found in the prior
`
`art, is provided in Section VII, below, in the form of claim charts. Pursuant to 37
`
`C.F.R. § 42.204(b)(5), the exhibit numbers of the supporting evidence relied upon
`
`to support the challenges and the relevance of the evidence to the challenges
`
`raised, including identifying specific portions of the evidence that support the
`
`challenges, are provided in Section VII below, in the form of claim charts.
`
`
`
`
`
`6
`
`

`


`
`V.
`
`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declaration of Professor Todd C. Mowry
`
`from Carnegie Mellon University. (Ex. 1006.) Professor Mowry offers his opinion
`
`with respect to the content and state of the prior art.
`
`Prof. Mowry is a Professor in Carnegie Mellon’s Department of Computer
`
`Science, has studied, taught, and practiced in the field of computer science for over
`
`20 years, and has been a professor of computer science since 1993. Prof. Mowry
`
`was an Assistant Professor in the ECE and CS departments at the University of
`
`Toronto prior to joining Carnegie Mellon University in July, 1997. Professor
`
`Mowry's research interests span the areas of computer architecture, compilers,
`
`operating systems, parallel processing, database performance, and modular
`
`robotics. He has supervised 11 Ph.D students and advised numerous other graduate
`
`students. (Ex. 1006 at ¶ 4.)
`
`Prof. Mowry has authored over 80 publications and technical reports in the
`
`field of computer science. (Id at ¶ 4.) He is an Associate Editor of ACM
`
`Transactions on Computer Systems (TOCS). Prof. Mowry has received a Sloan
`
`Research Fellowship and the TR35 Award from MIT's Technology Review
`
`magazine.
`
`7
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`

`


`
`B. The State of the Art
`
`In the late 1980s, the concept of capturing the state of a device or network
`
`and storing it in a historical database was well-known and used in practice. (See
`
`Ex. 1012 at abstract.) Soon after, various commercially available software
`
`products were specifically designed to periodically identify the contents of devices
`
`in a network environment. (Ex. 1005.) For example, LAN Automatic Inventory
`
`Version 2.0 was described as collecting “an extensive range of hardware data on
`
`workstations, including machine type, BIOS information, processors, bus type,
`
`CMOS data, video specifications, input/output ports, installed drives, and memory
`
`configuration.” (Id. at page 68.) Furthermore, this particular program “collects
`
`file server data and consolidates information from multiple servers.” (Id.)
`
`The software programs automatically tracked changes in the contents of the
`
`devices in the network, as the goal of these programs was “to spot network
`
`problems before they become critical rather than afterward.” (Id. at page 63.) The
`
`information gathered is compared to previously-obtained information to identify
`
`any changes. For example, LAN Automatic Inventory Version 2.0 is designed so
`
`that “scanned information is immediately compared to the ‘current’ database. If
`
`there are any changes, the current database is updated and the change is noted in
`
`the ‘Log’ list.” (Id. at page 68.) The timing of these scans can be selected by the
`
`administrator. In relation to LAN Automatic Inventory Version 2.0, “[t]he
`
`8
`
`

`


`
`administrator can also run hardware and software inventories at different times.
`
`For example, the application can scan for hardware every time a user logs in, but
`
`run a software scan once a week.” (Id.) In essence, these inventory software
`
`programs take snapshots of the status of various aspects of the system or network
`
`in order to help spot network problems.
`
`It was also well known that such snapshots could be stored in a central
`
`database. The LAN Automatic Inventory Version 2.0 program “collect[ed] file
`
`server data and consolidates information from multiple servers.” (Id.)
`
`Mechanisms of taking snapshots of information within a particular device
`
`without relying on a particular piece of commercial software were also well known
`
`as of the filing date of the ‘042 patent. Essential System Administration (Ex.
`
`1003) describes taking snapshots of disk use by device or of active processes (such
`
`as by running ckdsk with specific commands such as df or du) where the timing of
`
`taking the snapshot can be regulated by a cron script. (Ex. 1003 at page 179-80,
`
`184 et seq.) The ckdsk script was “designed to compare current disk use with what
`
`it was yesterday and to save today’s data for comparison tomorrow.” (Id. at 180.)
`
`In other words, the administrator takes snapshots and keeps them in a historical
`
`database to allow comparison with previous snapshots.
`
`C. The ‘528 Patent Application
`
`Application No. 08/590,528 (“the ‘528 application”) was filed on January
`
`9
`
`

`


`
`24, 1996, as a divisional of, and claiming priority to, Application No. 08/153,011
`
`(“the ‘011 application”), filed on Nov. 15, 1993. The ‘528 application describes
`
`a “network management system includes a domain administrating server (DAS)
`
`that stores a virtual catalog representing an overview of all files distributively
`
`stored across a network domain currently or in the past.” (Ex. 1001 at Abstract.)
`
`The Background section describes that the “evolutionary movement from local to
`
`centralized administration, and from task-segregated manual operation to task-
`
`segregated automated operation is disadvantageous when viewed from the vantage
`
`point of network-wide administration.” (Id. at Col. 3, lines 28-32.) In such
`
`centralized systems the administrator “has to become familiar with the local
`
`topology of each network site when searching for desired files” (id. at Col. 3, lines
`
`57-58) and if “a file cannot be found in the directory of a primary storage device
`
`located at a particular network site, the administrator has to switch from the
`
`primary storage viewing program to a separate, migration-tracking program to see
`
`if perhaps the missing file has been migrated to secondary or archive storage at that
`
`site” (id. at Col. 3, line 64 to Col. 4, line 2). The Summary of the Invention
`
`section explains that the “invention overcomes the above-mentioned problems by
`
`providing a network management system having virtual catalog overview function
`
`for viewing of files distributively stored across a network domain.” (Id. at Col. 4,
`
`lines 31-34.) The claims drafted in the ‘528 application describe the method of
`
`10
`
`

`


`
`creating the virtual catalog and how the catalog is used to manage the network.
`
`D. The Prosecution History
`
`In the September 9, 1996 office action, claims 16-17 (granted as claims 1
`
`and 2) were rejected under 35 U.S.C. § 103(a) as obvious over U.S. Patent
`
`5,537,585 to Blickenstaff et al. (“Blickenstaff’) in view of U.S. Patent 5,403,639 to
`
`Belsan et al. (“Belsan”). In response, the Patent Owner noted that Blickenstaff was
`
`not available as prior art, and explained that the “snapshot application data groups”
`
`feature of Belsan was substantially different from the “collecting snapshots” of the
`
`claimed invention. Specifically, the Patent Owner explained that, the “snapshot
`
`application data groups” feature of Belsan simply allows the user to define a series
`
`of data sets or databases to be synchronized in time.
`
`The Examiner then issued a notice of allowability which did not include a
`
`statement of reasons for allowance.
`
`
`
`
`
`11
`
`

`


`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes review
`
`shall receive the “broadest reasonable construction in light of the specification of
`
`the patent in which [they] appear[].” See also In re Swanson, No. 07-1534 (Fed.
`
`Cir. 2008); In re Trans Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007)
`
`(citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). As the Federal
`
`Circuit noted in Trans Texas, the Office has traditionally applied a broader
`
`standard than a Court does when interpreting claim scope. Moreover, the Office is
`
`not bound by any district court claim construction. Trans Texas, 498 F.3d at 1297-
`
`98, 1301. Rather,
`
`the PTO applies to verbiage of the proposed claims the
`broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of
`ordinary skill in the art, taking into account whatever
`enlightenment by way of definitions or otherwise that
`may be afforded by the written description contained in
`applicant’s specification. In re Morris, 127 F.3d 1048,
`1054-55, 44 U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997).
`
`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 claim
`
`examination proceedings (including inter partes review), any claim interpretations
`
`submitted herein for the purpose of demonstrating a Reasonable Likelihood of
`
`Prevailing are neither binding upon litigants in any litigation, nor do such claim
`
`12
`
`

`


`
`interpretations correspond to the construction of claims under the legal standards that
`
`are mandated to be used by the Courts in litigation.
`
`The interpretation of the claims presented either implicitly or explicitly
`
`herein should not be viewed as constituting, in whole or in part, Petitioner’s own
`
`interpretation and/or construction of such claims for the purposes of the underlying
`
`litigation. Instead, such constructions in this proceeding should be viewed only as
`
`constituting an interpretation of the claims under the “broadest reasonable
`
`construction” standard.
`
`All claim terms not specifically addressed below have been accorded their
`
`broadest reasonable interpretation in light of the patent specification including their
`
`plain and ordinary meaning to the extent such a meaning could be determined by a
`
`a skilled artisan.
`
`A. Local Catalog
`
`Under the broadest reasonable construction, the term “local catalog” should
`
`be interpreted as a listing of the contents of a storage device including at least the
`
`name and location of files stored on the data storage device in any suitable format.
`
`This definition is in accordance with the description of local catalog in the
`
`specification:
`
`Each of the primary (P), secondary (S), backup (B) and archive (A)
`storage means 111-114 has a local catalog defined within it for
`identifying the name, location and other attributes of each file stored
`therein. The local catalog will also typically store information
`
`13
`
`

`


`
`
`
`describing each directory full of files or full of subdirectories that is
`defined therein and each volume full of directories that is defined
`therein. (Ex. 1001 at Col. 9, lines 20-27.)
`
`The specification additionally states:
`
`
`Aside from storage location and FileName the other attributes
`indicated in the local catalog may include but are not limited to: (1)
`File Size (e.g. in number of bytes); (2) File Chronology in terms of
`Creation date and time, latest Modify or revision date and time, latest
`read-only Access date and time, and latest Archive date and time; (3)
`File User information in terms of who is the “Owner” or original
`creator of the file, who was the LastModifier of the file, who has
`read/write/execute permission for this file, and so forth. (Id. at Col.
`10, lines 10-19.)
`
`B. Snapshot
`
`The broadest reasonable interpretation of the term “snapshot” is the
`
`combined content of all the local catalogs in the system. This definition is based
`
`on the description of “snapshot” in the specification:
`
`A domain-wide status-monitor and control program 150.2 is installed
`in the domain administrating server 150. One of the domain-wide
`status monitoring functions of program 150.2 is to: (1) periodically
`scan the domain 190 and interrogate each DAS-managed file-server
`110, 120, ... , 140 regarding the contents of each local catalog 111.0,
`112.0... , 144.0 that is associated with each of data storage device 111,
`112, ... , 144 in the network domain 190…(Id. at col. 13, lines 23-31.)
`
`Furthermore, the specification specifically states “[t]he data of each DAS
`
`scan is referred to as a ‘snapshot.’” (Ex. 1001 at col. 13, line 51.)
`
`14
`
`

`


`
`C. Historical Database
`
`The broadest reasonable interpretation of the term “historical database” as
`
`used in claim 1 is a collection of historical information from the snapshots
`
`collected, with no particular limit on the manner in which the information is
`
`retained. The specification supports this interpretation by referring to a “historical
`
`collection” of data rather than a particular format of database or the like:
`
`Each time a new scan of the domain 190 is carried out and new
`information is collected, the older information which was collected by
`previous scans is preferably retained and re-labeled as belonging to
`the appropriately-dated previous scan rather than being discarded. A
`historical collection is thereby created. There will be some point, of
`course when it will be desirable or necessary to discard older data. An
`example is where the used-space of storage means 151 begins to reach
`maximum capacity. In such a case, nonessential older data should be
`archived or discarded to make room for more recent data. (Id. at col.
`13, lines 39-49.)
`
`The specification exemplifies a “historical database” of two previous
`
`snapshots, and explains that the number can be more as desired. (Id. at col.
`
`13, lines 55-56; Fig. 1.) Thus, any collection of information from snapshots
`
`including information from the current snapshot and information from at
`
`least one older snapshot is a “historical database” under the broadest
`
`reasonable interpretation.
`
`
`
`
`
`15
`
`

`


`
`VII. REPRESENTATIVE PROPOSED REJECTIONS SHOWING THAT
`PETITIONER HAS A REASONABLE LIKELIHOOD OF
`PREVAILING
`
`The references addressed below variously anticipate or render obvious the
`
`claimed subject matter. It should be understood that rejections may be premised
`
`on alternative combinations of these same references.
`
`A. Claims 1-4 Are Rendered Obvious by Reference Model When
`Viewed in Combination with Floyd and Essential System
`Administration
`
`Mass Storage System Reference Model: Version 4 IEEE Technical
`
`Committee on Mass Storage Systems and Technology (“Reference Model,” Ex.
`
`1002) was not considered during the original prosecution of the ‘042 patent, nor is
`
`it cumulative of any prior art considered by the Examiner. Reference Model was
`
`published in 1990. The earliest effective filing date of the ‘042 patent is November
`
`15, 1993. Therefore, Reference Model is available as prior art against all claims of
`
`the ‘042 patent under 35 U.S.C. § 102(b).
`
`Transparency in Distributed File Systems by Floyd (“Floyd,” Ex. 1004) was
`
`also not considered during the original prosecution of the ‘042 patent, nor is it
`
`cumulative of any prior art considered by the Examiner. Floyd was published in
`
`1989, and therefore is available as prior art against all claims of the ‘042 patent
`
`under 35 U.S.C. § 102(b).
`
`16
`
`

`


`
`Essential System Administration (“ESA,” Ex. 1003) was not considered
`
`during the original prosecution of the ‘042 patent, nor is it cumulative of any prior
`
`art considered by the Examiner. ESA was published in 1991. As explained above,
`
`the earliest effective filing date of the ‘042 patent is November 15, 1993.
`
`Therefore, ESA is available as prior art against all claims of the ‘042 patent under
`
`35 U.S.C. § 102(b).
`
`Reference Model teaches every element of the claimed invention, including
`
`collecting snapshots of the contents of file servers (the bit string descriptors, i.e.,
`
`the local catalog) and maintaining this information in a historical database (the
`
`descriptor table), as historical information on the contents of the file servers is
`
`available from the descriptor table. Although it is not explicit in Reference Model
`
`that the local catalogs are stored on the respective data storage devices, this feature
`
`is taught in Floyd. A skilled artisan would have understood that Floyd’s approach
`
`to storing file properties together with the file on a data storage device could be
`
`predictably and advantageously used with Reference Model’s system-wide bitfile
`
`server and virtual catalog to allow management and monitoring of different aspects
`
`of the file servers. (Ex. 1002 and 1004.) Prof. Mowry explains that those skilled
`
`in the art would have been motivated to include Floyd’s system of storage in
`
`Reference Model to improve management and monitoring capacity of the network
`
`system. (Ex. 1006 at ¶¶ 32-33.) Indeed, Reference Model was expressly intended
`
`17
`
`

`


`
`to be broadly applicable to then conventional hardware and software. (Ex. 1002 at
`
`page 3; Ex. 1006 at ¶ 33.)
`
`Reference Model inherently uses the contents of the descriptor table to track
`
`changes over time, as information on changes is available to the user upon
`
`accessing the table. However, Reference Model does not explicitly describe how
`
`the snapshots are collected over time or how the changes are automatically tracked.
`
`However, ESA provides this teaching and demonstrates that that suitable
`
`scripts and commands for carrying out precisely these tasks were well-known in
`
`the art and could easily be implemented in the system of Reference Model to carry
`
`out the tasks of “collecting snapshots over time” and “automatically tracking
`
`changes” in the information obtained. More specifically, ESA teaches that taking
`
`snapshots of a system of information akin to that of a local catalog was well known
`
`in the art, including using commands such as df (to show disk use by physical
`
`device) or ckdsk. (Ex. 1003 at pages 179-80.) ESA also teaches the cron script as
`
`a tool for running automated tasks (such as taking snapshots) at desired time
`
`intervals. (Id. at page 184 et seq.) Therefore, running the ESA commands in
`
`Reference Model would take snapshots of the local catalogs over time to create the
`
`descriptor table.
`
`In relation to “automatically tracking changes,” ESA teaches methods of
`
`programming commands to compare the current snapshot with the snapshot from
`
`18
`
`

`


`
`the previous day by running various automatic scripts with monitoring disk usage
`
`as a particular example. (Ex. 1003 at pages 179-84.) This information is
`
`compared with the data from the previous day and thus changes are tracked. ESA
`
`specifically describes using cmp_size command together with ckdsk to compute the
`
`size change from a previous snapshot. (Id. at page 181.) Furthermore, ESA
`
`teaches the cron script as a tool for automatically running tasks (such as tracking
`
`changes) at desired time intervals. (Id. at page 184 et seq.) Therefore, running the
`
`ESA commands in Reference Model would automatically track changes in the
`
`descriptor table over time.
`
`As explained in more detail in the declaration of Prof. Mowry, one skilled in
`
`the art could easily incorporate the scripts taught in ESA into the system described
`
`in Reference Model and expect success. (Ex. 1006 at ¶¶ 39-41.) As explained
`
`above, network administration servers were routinely run with a UNIX operating
`
`system, and Reference Model is written as a generic system architecture that would
`
`be applicable to any known hardware or software. (Id. at ¶ 42.)
`
`The following claim chart demonstrates, on a limitation-by-limitation basis,
`
`how claims 1-4 of the ‘042 patent are obvious over Reference Model in view of
`
`Floyd and

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