Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 78
` Entered: January 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION and NETAPP INC.,
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01207
`Patent 7,051,147 B2
`____________
`
`
`
`
`
`
`
`Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
` Paper 78
` Entered: January 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION and NETAPP INC.,
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01207
`Patent 7,051,147 B2
`____________
`
`
`
`
`
`
`
`Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2014-01207
`Patent 7,051,147 B2
`
`
`I. INTRODUCTION
`
`Oracle Corporation and NetApp Inc. (collectively, “Petitioner”)1
`
`filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of
`
`claims 14–39 of U.S. Patent No. 7,051,147 B2 (Ex. 1001, “the ’147
`
`patent”) pursuant to 35 U.S.C. §§ 311–319. Crossroads Systems, Inc.
`
`(“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim.
`
`Resp.”).
`
`On February 2, 2015, we instituted trial as to claims 14–39 of the
`
`’084 patent. Paper 12 (“Dec.”). During trial, Patent Owner filed a Patent
`
`Owner Response (Paper 29, “PO Resp.”), which was accompanied by a
`
`Declaration from John Levy, Ph.D. (Ex. 2053). Petitioner filed a Reply to
`
`the Patent Owner Response. Paper 45 (“Reply”). An oral hearing was
`
`held on October 30, 2015. A transcript of the consolidated hearing has
`
`been entered into the record. Paper 77 (“Tr.”).
`
`Petitioner filed a Motion to Exclude (Paper 59) and Reply in support
`
`of the Motion to Exclude (Paper 71). Patent Owner filed an opposition to
`
`Petitioner’s Motion to Exclude (Paper 64).
`
`Patent Owner also filed a Motion to Exclude (Paper 61) and Reply
`
`in support of the Motion to Exclude (Paper 70). Petitioner filed an
`
`opposition to Patent Owner’s Motion to Exclude (Paper 66).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`
`1 Huawei Technologies Co. Ltd. was a Petitioner in the original Petition.
`Pet. 1. On October 8, 2015, we granted a joint motion to terminate
`Petitioner Huawei Technologies Co. Ltd. Paper 69.
`
`2
`
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`IPR2014-01207
`Patent 7,051,147 B2
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`We determine that Petitioner has shown by a preponderance of the
`
`evidence that claims 14–39 of the ’147 patent are unpatentable.
`
`II. BACKGROUND
`
`A. Related Matters
`
`The parties indicate that the ’147 patent is asserted in co-pending
`
`matters captioned Crossroads Systems, Inc. v. Oracle Corp., Case No. 1-
`
`13-cv-00895-SS (W.D. Tex.) and Crossroads Systems, Inc. v. NetApp, Inc.,
`
`Case No. 1-14-cv-00149-SS (W.D. Tex.). Pet. 2–3; Paper 9, 3. The ’147
`
`Patent is also involved in IPR2014-01209 and IPR2014-01544.
`
`B. The ’147 Patent (Ex. 1001)
`
`The ’147 patent, titled “Storage Router and Method for Providing
`
`Virtual Local Storage,” issued on May 23, 2006. The ’147 patent relates to
`
`a storage router and storage network where devices (e.g., workstations)
`
`connected to a Fibre Channel (“FC”) transport medium are provided access
`
`to storage devices connected to a second FC transport medium. Ex. 1001,
`
`Abstract. The storage router interfaces with both FC media, mapping
`
`workstations on the first FC transport medium, for example, to the storage
`
`devices on the second FC transport medium. Id. The storage router of the
`
`’147 patent allows access from the workstations to the storage devices
`
`using “native low level, block protocol.” Id. One advantage of using such
`
`native low level block protocols is greater access speed when compared to
`
`network protocols that must first be translated to low level requests, and
`
`vice versa, which reduces access speed. Id. at 1:58–67.
`
`C. Illustrative Claim
`
`Claim 14 of the ’147 patent is reproduced below:
`
`
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`3
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`IPR2014-01207
`Patent 7,051,147 B2
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`
`14. An apparatus for providing virtual local storage on a remote
`storage device to a device operating according to a Fibre Channel
`protocol, comprising:
`
`a first controller operable to connect to and interface with a first
`transport medium, wherein the first transport medium is operable
`according to the Fibre Channel protocol;
`
`a second controller operable to connect to and interface with a
`second transport medium, wherein the second transport medium is
`operable according to the Fibre Channel protocol; and
`
`a supervisor unit coupled to the first controller and the second
`controller, the supervisor unit operable to control access from the
`device connected to the first transport medium to the remote storage
`device connected to the second transport medium using native low
`level, block protocols according to a map between the device and the
`remote storage device.
`
`Ex. 1001, 11:5–22.
`
`D. Prior Art Supporting Instituted Unpatentability Grounds
`
`1. CRD-5500 SCSI RAID Controller User’s Manual (1996) (“CRD
`Manual”) (Ex. 1003);
`
`2. CRD-5500 SCSI RAID Controller Data Sheet (Dec. 4, 1996)
`(“CRD-5500 Data Sheet”) (Ex. 1004);
`
`3. Judith A. Smith & Meryem Primmer, Tachyon: A Gigabit Fibre
`Channel Protocol Chip, HEWLETT-PACKARD J. 1, 1–17 (1996)
`(“Smith”) (Ex. 1005);
`
`4. U.S. Patent No. 6,219,771 B1, issued Apr. 17, 2001 (“Kikuchi”)
`(Ex. 1006);
`
`5. U.S. Patent No. 6,073,209, issued June 6, 2000 (“Bergsten”) (Ex.
`1007); and
`
`6. JP Patent Application Pub. No. Hei 5[1993]-181609, published
`July 23, 1993 (“Hirai”) (Ex. 1008).
`
`Petitioner also relies on the Declaration of Professor Jeffrey S.
`
`Chase, Ph.D. (Ex. 1010, “Chase Declaration”).
`
`
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`Patent 7,051,147 B2
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`E. Instituted Unpatentability Grounds
`
`We instituted an inter partes review of claims 14–39 of the ’147
`
`patent on the following grounds:
`
`References
`
`CRD Manual, CRD-5500 Data
`Sheet, and Smith
`Kikuchi and Bergsten
`
`Basis
`
`§ 103
`
`Claims Instituted
`
`14–39
`
`§ 103
`
`14–39
`
`Bergsten and Hirai
`
`§ 103
`
`14–39
`
`
`
`III. ANALYSIS
`
`For the challenged claims, Petitioner must prove unpatentability by a
`
`preponderance of the evidence. 35 U.S.C. § 316(e). We begin with a
`
`claim construction analysis, and then follow with specific analysis of the
`
`prior art.
`
`A. Claim Interpretation
`
`
`
`The Board interprets claim terms in an unexpired patent using the
`
`“broadest reasonable construction in light of the specification of the patent
`
`in which [they] appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the
`
`broadest reasonable interpretation standard, claim terms are given their
`
`ordinary and customary meaning in view of the specification, as would be
`
`understood by one of ordinary skill in the art at the time of the invention.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only
`
`those terms which are in controversy need be construed, and only to the
`
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
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`IPR2014-01207
`Patent 7,051,147 B2
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`
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`During trial, the parties disputed the claim construction of the term
`
`“map between the device and the remote storage device,” which we
`
`address below. No other claim terms require express construction to
`
`resolve the issues raised in this inter partes review.
`
`Claim 14 recites “a supervisor unit . . . operable to control access . . .
`
`according to a map between the device and the remote storage device.”
`
`(emphasis added). Each challenged independent claim recites a similar
`
`limitation. This term was not construed expressly in the Decision on
`
`Institution.
`
`Patent Owner argues that the term “requires that the map specifically
`
`identify the host (through some representation of that host) and its
`
`associated storage (through some representation of that storage) in order to
`
`allocate storage to particular hosts.” PO Resp. 3. Further, Patent Owner
`
`makes clear its position that the recited mapping requires the storage
`
`devices to be mapped directly to a particular device, such as a host
`
`computer. Id. at 2–3, 36. According to Patent Owner, it is not enough to
`
`map between a storage device and an intermediate identifier associated
`
`with a particular device because the identifier is not directly and
`
`immutably associated with the device itself—in other words, mapping to
`
`an identifier is insufficient unless the identifier is associated with a
`
`particular device and cannot be associated with any other device. See id. at
`
`41–47 (arguing that mapping to a channel identifier does not suffice, even
`
`if the channel is connected to only one host device, because the channel
`
`identifier could be associated with another device if another device were
`
`connected to that channel).
`
`
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`6
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`IPR2014-01207
`Patent 7,051,147 B2
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`The construction proposed by Patent Owner is overly narrow.
`
`Although Patent Owner emphasizes that the map must identify specific
`
`host devices, it does not explain persuasively why the claim language
`
`should be construed to exclude doing so via intermediate identifiers. See
`
`PO Resp. 2–3. Patent Owner does not identify any disclosure in the ’147
`
`patent’s specification that clearly disavows mapping to a device indirectly,
`
`or mapping to a device via an intermediate identifier that could identify a
`
`different host if the system were configured differently. See Gillette Co. v.
`
`Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding
`
`that “words or expressions of manifest exclusion or explicit disclaimers in
`
`the specification are necessary to disavow claim scope” (internal
`
`quotations omitted)). Its discussion of Figure 3, for example, is
`
`insufficient to compel a narrow construction of the term because it
`
`analyzes only a preferred embodiment of the invention. PO Resp. 45–46;
`
`see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir.
`
`2004) (holding that limitations should not be imported from preferred
`
`embodiments into the claims absent a clear disclaimer of claim scope in the
`
`specification).
`
`Moreover, the ’147 patent specifically discusses mapping with
`
`identifiers that are not immutable. For example, the specification discusses
`
`addressing devices on an FC loop using an AL_PA (arbitrated loop
`
`physical address), and the possibility of “FC devices changing their AL-PA
`
`due to device insertion or other loop initialization.” Ex. 1001, 8:40–46;
`
`Reply 3–6 (discussing evidence supporting the use of intermediate
`
`identifiers, including testimony by Patent Owner’s proffered expert).
`
`
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`7
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`Patent 7,051,147 B2
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`Further, the challenged claims of the ’147 patent indicate the
`
`mapping may use mere representations of a device rather than requiring
`
`direct mapping to the device itself. Claim 15, for example, recites
`
`mapping including “virtual LUNs that provide a representation of the
`
`storage device,” and claim 17 recites “mapping from a host device ID to a
`
`virtual LUN representation of the remote storage device.” Although these
`
`claims refer to “virtual” representations of storage devices rather than host
`
`devices, the “maps between” term of the independent claims uses the same
`
`language when referring to both the devices and storage devices—for
`
`example, claim 14 merely recites a “map between the device and the
`
`remote storage device.” The claim language does not indicate that the
`
`mapping may address storage devices one way, but that devices must be
`
`addressed in a different, more specific or direct way.
`
`For the reasons above, we are not persuaded that the broadest
`
`reasonable interpretation of “map between the device and the remote
`
`storage device” mandates mapping directly or immutably to a host device
`
`itself, or excludes mapping to devices using intermediate identifiers.
`
`The parties note that a district court in a related case construed the
`
`term as follows, and the Special Master in the co-pending litigation
`
`between the parties recommended adoption of this construction:
`
`To create a path from a device on one side of the storage router
`to a device on the other side of the router. A “map” contains a
`representation of devices on each side of the storage router, so
`that when a device on one side of the storage router wants to
`communicate with a device on the other side of the storage
`router, the storage router can connect the devices.
`
`Ex. 2034, 4; see also PO Resp. 2. Although we are not bound by the
`
`construction or reasoning of the district court, we do not disregard the
`
`
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`IPR2014-01207
`Patent 7,051,147 B2
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`analysis and conclusions of a court construing the same claim term in a
`
`concurrent proceeding concerning the same patent. Power Integrations,
`
`Inc. v. Lee, 797 F.3d 1318, 1326–1327 (Fed. Cir. 2015) (discussing the
`
`Board’s error in declining to address or acknowledge the district court’s
`
`claim construction). After considering the construction of the district
`
`court, we determine this construction corresponds to the broadest
`
`reasonable interpretation and adopt it for purposes of this Decision.
`
`B. Asserted Ground Based on CRD Manual, CRD-5500 Data Sheet,
`and Smith
`
`
`
`Petitioner challenges claims 14–39 as obvious under 35 U.S.C.
`
`§ 103 over CRD Manual, CRD-5500 Data Sheet, and Smith. Pet. 12–27.
`
`As discussed below, Petitioner has demonstrated by a preponderance of the
`
`evidence that all challenged claims are unpatentable on this ground.
`
`1. The CRD Manual
`
`The CRD Manual describes the CRD-5500 RAID controller, a
`
`device that enables access to an array of disk drives on a SCSI bus.
`
`Ex. 1003, 9.2 This controller has a modular design that permits
`
`customization of its I/O channels using different I/O hardware modules,
`
`which allow support of multiple hosts and multiple drives. Id. at 9–11.
`
`2. The CRD-5500 Data Sheet
`
`The CRD-5500 Data Sheet discusses the benefits and features of the
`
`CRD-5500 RAID controller. Ex. 1004. Specifically, it provides that
`
`“CMD’s advanced ‘Viper’ RAID architecture and ASICs were designed to
`
`
`2 For clarity, we refer to the pagination of Exhibit 1004 provided by
`Petitioners and not its native pagination.
`
`
`
`9
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`IPR2014-01207
`Patent 7,051,147 B2
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`support tomorrow’s high speed serial interfaces, such as Fiberchannel
`
`(FCAL) and Serial Storage Architecture (SSA).” Id. at 1.
`
`3. Smith
`
`Petitioner relies on an article titled “Tachyon: A Gigabit Fibre
`
`Channel Protocol Chip.” Ex. 1005. This article discusses the Tachyon
`
`chip, an FC interface controller that “enables a seamless interface to the
`
`physical FC-0 layer and low-cost [FC] attachments for hosts, systems, and
`
`peripherals on both industry-standard and proprietary buses through the
`
`Tachyon system interface.” Id. at 1.
`
`4. Analysis
`
`Petitioner asserts, in a section of the Petition titled “The Combined
`
`System of CRD-5500 User Manual, CRD-5500 Data Sheet and Smith,”
`
`that the references, in combination, disclose the claimed subject matter.
`
`Pet. 16–19 (including a figure representing the hypothetical combined
`
`system on page 18). In the “Correspondence between Claims 14–39 and
`
`the Combined System of CRD-5500 and Smith” section, Petitioner
`
`alternately refers to the references and to paragraphs in the Chase
`
`Declaration in support of its arguments. Id. at 19–27. Petitioner presents
`
`specific arguments with respect to claims 14–20, and then, for claims 21–
`
`39, relies on its arguments for claims 14–20 and the Chase Declaration. Id.
`
`at 24–27.
`
`Petitioner argues that the disclosures of the CRD Manual and CRD-
`
`5500 Data Sheet disclose substantially all the limitations of claims 14–20,
`
`apart from the “first controller” and “second controller,” which Petitioner
`
`argues are disclosed by the incorporation of Smith’s Tachyon chip into an
`
`FC host interface module and into a FC storage interface module,
`
`
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`10
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`IPR2014-01207
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`respectively. Id. at 19–22. Petitioner further argues that it would have
`
`been obvious to one of ordinary skill in the art to combine the CRD-5500
`
`references and Smith “to enhance the communication and storage options
`
`of a host device on a FC transport medium, benefit from the ‘Host LUN
`
`Mapping’ feature of the CRD-5500 controller, and avail the host
`
`computing device of ubiquitous mass storage applications (e.g., RAID).”
`
`Id. at 16 (citing Ex. 1010 ¶¶ 39–43). We adopt Petitioner’s reasoning for
`
`combining the references as supported by the record, including Dr. Chase’s
`
`Declaration. Patent Owner includes a section in its Patent Owner
`
`Response titled “Petitioner’s Reasons for Combining Do Not Lead to the
`
`Claimed Invention,” but this short section focuses primarily on Patent
`
`Owner’s allegation that the recited combination would still lack the
`
`features of the claimed invention. PO Resp. 53–54. Thus, Patent Owner
`
`has not persuasively presented arguments to counter Petitioner’s position
`
`that a person of ordinary skill would have had reason to combine the
`
`teachings of these references.
`
`The Petition identifies the “first controller” and the “second
`
`controller” as being created “through the incorporation of the Tachyon
`
`chip” into a FC host interface module and into a FC storage interface
`
`module, respectively. Pet. 20. The Petition identifies the CPU disclosed in
`
`the CRD Manual as teaching the recited “supervisor unit.” Id. at 21. The
`
`CRD Manual describes a feature of its Monitor Utility used to “map LUNs
`
`on each host channel to a particular redundancy group.” Ex. 1003, 44.
`
`Petitioner argues that the CRD-5500 controls access by using this “Host
`
`LUN Mapping,” which accepts only host LUN addresses for which a
`
`redundancy group mapping associated with the requesting host exists.
`
`
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`IPR2014-01207
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`Pet. 21. The map limitation, according to Petitioner, is evidenced by the
`
`“Host LUN Mapping” used to map between LUNs assigned to the host
`
`device and RAID redundancy groups each representing a physical storage
`
`drive. Id. The hosts in the proposed combination communicate the LUN
`
`to the CRD-5500 in SCSI commands; the ’147 patent discloses that SCSI
`
`is an example of a “native low level, block protocol” within the meaning of
`
`the claims. Id.; Ex. 1001, 5:13–17, 5:46–50. Based on the full record after
`
`trial, we find that the combination of the CRD Manual and the HP Journal
`
`teaches or suggests each limitation of the challenged claims of the ’147
`
`patent. Patent Owner’s counterarguments are unpersuasive.
`
`
`
`Patent Owner argues the asserted combination does not teach the
`
`“Fibre Channel transport medium,” “mapping,” and “access
`
`controls/controlling access” functions of the patent. PO Resp. 36–51.
`
`
`
`First, Patent Owner challenges Petitioner’s assertion that the
`
`Tachyon chip passes the host device identity to the CRD-5500 controller
`
`processor, where the host device information is cross-referenced with the
`
`“Host LUN Mapping” maintained by the CRD-5500 controller to identify
`
`storage. Id. at 38. Patent Owner faults Dr. Chase for failing to cite to
`
`evidence supporting that the CRD-5500 matches the combination of LUN
`
`and host identification in the SCSI command with a RAID redundancy
`
`group, providing testimony from Dr. Levy that the CRD-5500 would not
`
`operate in this manner. Id. at 39 (citing Ex. 1010 ¶ 42; Ex. 2053 ¶¶ 200–
`
`201). Petitioner relies on its arguments in the Petition and on Dr. Chase’s
`
`testimony to respond that, in certain implementations, host device identity
`
`is passed directly to the CRD controller. Reply 6–7 (citing Pet. 18–19; Ex.
`
`1010 ¶ 42 (discussing identification of the host by the “FC unique
`
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`identifier”)), 8–9 (discussing this limitation in relation to claims 17, 24,
`
`and 36). Patent Owner does not explain persuasively why this disclosure
`
`or implementation should be overlooked. Based on Petitioner’s evidence
`
`regarding the passing of host device identity to the CRD controller,
`
`including Dr. Chase’s credible testimony, we are persuaded that the
`
`sending host would be identifiable in this implementation.
`
`
`
`Patent Owner next alleges that the CRD Manual fails to teach the
`
`recited mapping because the host LUN mapping feature only maps storage
`
`devices to host channels, not the specific hosts themselves. PO Resp. 41–
`
`47 (citing Ex. 2053 ¶¶ 203, 205, 212–13, 218–19, 221, 223, 229–31, 233),
`
`50 (discussing the limitation in relation to claims 15 and 22). This
`
`argument, however, relies on the overly narrow claim construction rejected
`
`above, and is unpersuasive as a result. For example, Patent Owner
`
`addresses Figure 1-2 of the CRD Manual, which is reproduced below:
`
`
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`13
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`Figure 1-2 of the CRD Manual depicts a configuration of the CRD-5500
`
`controller where each of four different hosts are assigned to a different
`
`channel, i.e., channel 0 through channel 3. Ex. 1003, 10. These hosts may
`
`then access redundancy groups via the CRD-5500 controller. Id.
`
`
`
`The specific configuration depicted in Figure 1-2 meets the mapping
`
`limitation because each host channel is dedicated to a single host—thus, in
`
`effect, mapping to a host channel is tantamount to mapping to a particular
`
`host. See Reply 3–5. In recognition of this fact, the CRD Manual
`
`explicitly refers to mapping to hosts and host channels interchangeably,
`
`which Patent Owner acknowledges at least with respect to Figure 1-2. See
`
`Ex. 1003, 9; PO Resp. 44; Reply 4–5. The analysis presented by Patent
`
`Owner regarding other configurations different from that in Figure 1-2—
`
`i.e., configurations where two hosts are connected to the same host channel
`
`(PO Resp. 45)—does not cancel or negate the configuration disclosed by
`
`Figure 1-2. As discussed above, the broadest reasonable interpretation of
`
`the mapping limitation is not limited only to mapping directly and
`
`immutably to a specific host device, and does not exclude categorically the
`
`use of intermediate identifiers. Consequently, Patent Owner has not shown
`
`persuasively why the configuration disclosed in the CRD Manual falls
`
`outside the scope of the claim language.
`
`
`
`Patent Owner additionally contends that the CRD Manual fails to
`
`teach the access controls limitations of the challenged claims. Id. at 47–50.
`
`Similar to its arguments relating to the mapping limitation, Patent Owner
`
`purports to show how the redundancy group access controls of the CRD
`
`Manual can be defeated by changing the disclosed configuration in Figure
`
`1-2, i.e., by rewiring the hosts such that multiple hosts are connected to the
`
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`same host channel. Id. at 48–49. Patent Owner has not persuasively
`
`demonstrated, however, that the purported inadequacy of the access control
`
`method disclosed for the Figure 1-2 configuration, when directly applied to
`
`a different configuration, shows that the CRD Manual fails to teach
`
`implementing access controls at least for the configuration of Figure 1-2.
`
`
`
`Lastly, Patent Owner argues that no evidence exists that the CRD-
`
`5500 could accommodate Smith’s Tachyon chip FC host interface. PO
`
`Resp. 51–53. Patent Owner critiques the statement in Exhibit 1004 stating
`
`that the architecture of the technology supports FC as “forward-looking
`
`and speculative.” Id. at 51. Petitioner counters that a proper obviousness
`
`analysis does not require bodily incorporation. Reply 7–8; see also In re
`
`Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
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`whether the features of a secondary reference may be bodily incorporated
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`into the structure of the primary reference; nor is it that the claimed
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`invention must be expressly suggested in any one or all of the references.
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`Rather, the test is what the combined teachings of the references would
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`have suggested to those of ordinary skill in the art.”). Moreover, Petitioner
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`states that neither Patent Owner nor Dr. Levy asserts that the proposed
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`combination would have been outside the level of ordinary skill in the art
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`to adapt. Id. at 8 (citing Ex. 2053 ¶¶ 192–223; Ex. 1010 ¶¶ 39–40).
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`Regarding this issue, the record as a whole supports Petitioner’s contention
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`that a person of ordinary skill would have been able to combine the
`
`teachings of the CRD Manual, CRD-5500 Data Sheet, and Smith to arrive
`
`at a system in which the CRD-5500 could accommodate the Tachyon chip
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`FC host interface. Ex. 1010 ¶¶ 39–41.
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`
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`15
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`IPR2014-01207
`Patent 7,051,147 B2
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`
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`Claims 15–20 depend, directly or indirectly, from claim 14 and recite
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`limitations similar to those recited in claim 1 and its dependent claims. Both
`
`parties rely on essentially the same arguments as those discussed above for
`
`the previous claims. See Pet. 22–24; PO Resp. 36, 50–51. For reasons
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`similar to those discussed above for the previous claims, we find the full
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`record after trial supports Petitioners’ contention that the asserted prior art
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`teaches each limitation of claims 15–20.
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`
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`Each of the remaining independent claims (claims 21, 28, and 34), as
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`well as their dependent claims (claims 22–27, 29–33, and 35–39) recite
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`limitations similar to those recited in previous claims discussed above. The
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`parties advance similar arguments and evidence with respect to these claims
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`as for those previous claims. See Pet. 24–27; PO Resp. 36, 50–51. For
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`similar reasons as discussed above, we find the full record after trial supports
`
`Petitioners’ contention that the asserted prior art teaches each limitation of
`
`claims 21–39.
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`
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`In sum, based on the full record after trial, we find that a
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`preponderance of the evidence supports Petitioner’s contention that the
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`combination of CRD Manual, CRD-5500 Data Sheet, and Smith teaches or
`
`suggests each limitation of claims 14–39. As discussed below, we are not
`
`persuaded that Patent Owner has established secondary considerations of
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`non-obviousness. Thus, Petitioner has shown by a preponderance of the
`
`evidence that claims 14–39 are unpatentable under 35 U.S.C. § 103(a).
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`C. Asserted Ground Based on Kikuchi and Bergsten
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`Petitioner challenges claims 14–39 as obvious under 35 U.S.C.
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`§ 103 over Kikuchi and Bergsten. Pet. 27–42.
`
`
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`16
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`IPR2014-01207
`Patent 7,051,147 B2
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`1. Kikuchi
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`Kikuchi is titled “Data Storage Apparatus with Improved Security
`
`Process and Partition Allocation Functions,” and discloses an apparatus
`
`that enables access authorization to be assigned solely to specific host
`
`devices. Ex. 1006, Abstract. In one embodiment, Kikuchi discloses
`
`address offset information conversion unit 121 and actual partition address
`
`conversion unit 122, as shown in Figure 5:
`
`
`
`Figure 5 is a diagram showing the configuration of an embodiment of the
`
`claimed invention of Kikuchi, in which offset information indicating a disk
`
`partition corresponding to each host device has been stored in advance in
`
`the address offset information conversion unit 121, and the host address
`
`input from command interpretation and execution unit 120 is converted to
`
`this offset information. Id. at 3:48–49, 7:55–63. In this embodiment,
`
`actual partition address conversion unit 122 combines the disk partition
`
`address output from command interpretation and execution unit 120 with
`
`
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`17
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`IPR2014-01207
`Patent 7,051,147 B2
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`the offset information output from address offset information conversion
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`unit 121 to generate an actual disk partition address. Id. at 7:64–8:3.
`
`2. Bergsten
`
`Bergsten is titled “Data Storage Controller Providing Multiple Hosts
`
`with Access to Multiple Storage Subsystems,” and describes a storage
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`controller that allows multiple host computer systems at different locations
`
`to access any of multiple copies of stored data. Ex. 1007, 3:1–4. The
`
`storage controller emulates a local storage array for the host computer
`
`system that it services, and emulates a host computer system for the local
`
`storage array that it accesses. Id. at 3:14–17. The host computer systems
`
`access stored data using virtual device addresses, which are mapped to real
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`device addresses by the storage controller. Id. at 3:17–19. Figure 1 of
`
`Bergsten is reproduced below.
`
`
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`18
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`IPR2014-01207
`Patent 7,051,147 B2
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`
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`Figure 1 of Bergsten is a block diagram illustrating a computing
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`system in which a number of Bergsten’s storage controllers provide a
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`number of host computer systems with access to a number of storage
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`arrays. Id. at 3:20–23. Figure 1 shows a computing system with M storage
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`controllers, 3-1 through 3-M; M host computers, 2-1 through 2-M, which
`
`are coupled to storage controllers 3-1 through 3-M, respectively; and M
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`storage arrays 4-1 through 4-M, which are coupled to storage controllers 3-
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`1 through 3-M respectively. Id. at 3:23–28. Each of the storage arrays
`
`includes a number of mass storage devices (“MSDs”). Id. at 3:28–34.
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`Storage controllers 3-1 through 3-M function cooperatively to provide any
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`of host computer systems 2-1 through 2-M with access to any of storage
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`
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`19
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`IPR2014-01207
`Patent 7,051,147 B2
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`arrays 4-2 through 4-M. Id. at 4:7–9. Storage controller 3-1 is coupled
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`directly to host computer system 2-1 using data communication path 7 and
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`to local data storage array 4-1 via another communication path 8. Id.
`
`at 4:13–17. Data communication paths 7 and 8 may conform to a variety
`
`of protocols, including SCSI, serial SCSI, Fiber Channel, or ESCON. Id.
`
`at 4:19–28.
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`A local host computer accesses data by transmitting a (virtual) host
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`address to its local storage controller. Id. at 6:10–11. The host address is
`
`then mapped to a real address representing a location on one or more
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`physical MSDs. Id. at 6:11–14. The mapping is completely transparent to
`
`all of the host computers. Id. at 6:14–16. A single host address may map
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`to multiple physical addresses, which may be distributed among multiple
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`MSDs, and such MSDs may further be located in different storage arrays.
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`Id. at 6:16–21. The storage controller maintains and uses a tree structure to
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`map the host interface ID and block number to a logical device. Id. at
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`9:21–24, Fig. 8.
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`3. Kikuchi as Prior Art
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`Patent Owner argues that Kikuchi, which was filed on August 18,
`
`1997, is not prior art. PO Resp. 20. Patent Owner argues that the
`
`invention of the ’147 patent was conceived as early as March 22, 1997, and
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`that the ‘147 patent claims priority to U.S. Patent No. 5,941,972, which
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`was filed on December 31, 1997.3 Id. More particularly, Patent Owner
`
`
`3 The ’147 patent sets forth its parentage as follows: “Continuation of
`application No. 10/081,110, filed on Feb. 22, 2002, now Pat. No. 6,789,152,
`which is a continuation of application No. 09/354,682, filed on Jul. 15, 1999,
`now Pat. No. 6,421,753, which is a continuation of application No.
`
`
`
`20
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`IPR2014-01207
`Patent 7,051,147 B2
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`alleges that the invention of the ’972 patent, representing the earliest filing
`
`in the ’147 patent’s chain of title, was conceived as early as March 1997.
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`Id. at 21. According to Patent Owner: “Only two dates are important for
`
`the prior invention analysis. Crossroads must have a complete conception
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`just before Kikuchi’s filing date (Aug. 17, 1997) and diligence in reduction
`
`to practice (here, constructive reduction to practice on Dec. 31, 1997) (‘the
`
`critical period’).” Id. at 23.
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`During the period in which reasonable diligence must be shown,
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`there must be continuous exercise of reasonable diligence. In re McIntosh,
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`230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588,
`
`591 (CCPA 1949) (referring to “reasonably continuous activity”). A party
`
`alleging diligence must account for the entire critical period. Griffith v.
`
`Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363
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`F.2d 908, 919 (CCPA 1966).
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`Even a short period of unexplained inactivity is sufficient to defeat a
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`claim of diligence. Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953);
`
`Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716
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`F.2d 1542, 1542–46 (Fed. Cir. 1983), the Federal Circuit affi
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