UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ORACLE CORPORATION,
`NETAPP INC. and
`HUAWEI TECHNOLOGIES CO., LTD.
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`Petitioners,
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`v.
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`CROSSROADS SYSTEMS, INC.
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`Patent Owner.
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`____________
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`Case IPR2014-01207
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`U.S. Patent No. 7,051,147
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`____________
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`PETITIONERS’ REPLY IN SUPPORT OF THE PETITION
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`

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`I.
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`A.
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`B.
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`C.
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`D.
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`Table of Contents
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`The CRD Combined System is Identical in Relevant Respect to Devices
`Patent Owner has Accused of Infringement and Various Embodiments
`Described in the ‘147 Specification................................................................. 1
`Patent Owner’s Argument is Belied by the Express Teachings of the CRD
`Manual, Patent Owner’s Infringement Contentions, the Preferred
`Embodiments Described in the Specification, and the Admissions of Dr.
`Levy .............................................................................................................. 3
`Patent Owner’s Argument Ignores the Express Argument in the Petition
`that the Tachyon Chip May Optionally Pass the Host Device Identity to
`the CRD Controller ...................................................................................... 6
`The Remainder of Patent Owner’s Arguments on the Independent Claims
`are Erroneously Premised on Bodily Incorporation of One Reference into
`Another ......................................................................................................... 7
`For Claims 17, 24 and 36, the Petition Explains that the FC Unique
`Identifier is the Recited Host Device ID ...................................................... 8
`The Kikuchi-Bergsten Combination Renders Obvious the Claims Because
`Patent Owner’s Attempt to Antedate Kikuchi Fails and Patent Owner’s
`Critique of the Combined System Ignores the Express Teachings of the
`References ........................................................................................................ 9
`Patent Owner’s Evidence of Diligence Fails ............................................. 10
`Patent Owner Fails to Overcome the Fact that the Kikuchi-Bergsten
`System Restricts Access to Specific Host Devices ................................... 15
`The Proposed Combination Does Not Change the References’ Principles
`of Operation ................................................................................................ 17
`III. The Combined System of Bergsten and Hirai Meets the Claims for Similar
`Reasons .......................................................................................................... 18
`Patent Owner’s Primary Argument – that Bergsten Does Not Identify a
`Particular Host – Fails because there is only a Single Host Device
`Attached to each Host Interface ................................................................. 18
`B. Hirai Does Not Teach that the Access Controls Are at the Network File
`System Level .............................................................................................. 19
`The Proposed Ground Applies Hirai’s Access Controls at the Block Level,
`not the File Level ........................................................................................ 20
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`A.
`B.
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`II.
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`C.
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`A.
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`C.
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`D.
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`Bergsten is Not Limited to Applications in which All Users are Given
`Access to All Data ...................................................................................... 21
`IV. Patent Owner Does Not Even Attempt to Establish any Nexus between the
`Alleged Secondary Considerations and the Claimed Invention .................... 22
`Conclusion ..................................................................................................... 25
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`V.
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`
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`ii
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`
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`I.
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`The CRD Combined System is Identical in Relevant Respect to Devices
`Patent Owner has Accused of Infringement and Various Embodiments
`Described in the ‘147 Specification
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`Crossroads Systems, Inc.’s (Patent Owner’s) primary argument with respect
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`to the CRD combination is that the Host LUN mapping table does not “map
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`between the [host] device and the remote storage device[s]” as recited in the claims
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`because, on the host side, the combined system uses host channel IDs instead of
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`host device IDs. Resp. at 41-49. Patent Owner illustrates this concept by positing
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`an example in which Bill takes his computer and substitutes it for Lisa’s by
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`plugging it into port or channel 0, in which case the storage router of the combined
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`system would presume (incorrectly) that it was communicating with Lisa’s
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`computer when it in fact was communicating with Bill’s. Id. at 48-49. Patent
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`Owner presents an ostensibly separate argument concerning the access control
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`limitations, but on close examination, it is premised on the same theory discussed
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`above, i.e., that because Bill & Lisa could in effect “hot swap” their workstations
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`the combined system does not meet the claims. Id. at 47-49.
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`Accepting Patent Owner’s argument would require, improperly, the Board to
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`ignore the CRD reference’s express teaching that “[b]y using the controller's Host
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`LUN Mapping feature, you can assign redundancy groups to a particular host.”
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`Patent Owner’s argument also ignores the unrebutted evidence cited in the petition
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`which shows that the Tachyon chip may optionally pass the host device identity to
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`1
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`the CRD-5500 controller processor. Pet. at 18-19, citing Ex. 1010 at ¶¶ 42, 45. In
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`that implementation of the combined system, Patent Owner’s primary argument is
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`moot. Ex. 1004 at 10 (emphasis added).
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`Patent Owner’s argument also is unavailing, because it is premised on
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`narrow interpretations of the “map” and “access control” claim terms, which are
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`unsupported. First, Patent Owner’s interpretation is unsupported by any intrinsic
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`evidence—indeed to the contrary, the specification describes various embodiments
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`in which computers may be “hot swapped” like in the Bill & Lisa example,
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`wherein there is no suggestion that such embodiments would fall outside the claim
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`scope. Second, Patent Owner’s “example” is belied by the fact that the Patent
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`Owner previously has accused of infringement systems which operate in the same
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`manner as the CRD combined system. Consistent with that infringement
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`allegation, Patent Owner’s expert Dr. Levy concedes that in systems where there is
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`a single host device attached to each channel (such as the CRD combined system)
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`the channel ID suffices to uniquely identify the host.
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`Patent Owner’s remaining argument is premised upon a bodily incorporation
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`of the secondary reference into the primary reference, which is plainly not
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`contemplated by the petition or the institution decision, nor legally required to
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`show nonobviousness.
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`2
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`A. Patent Owner’s Argument is Belied by the Express Teachings of
`the CRD Manual, Patent Owner’s Infringement Contentions, the
`Preferred Embodiments Described in the Specification, and the
`Admissions of Dr. Levy
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`Patent Owner’s assertion that a host channel identifier is insufficient to
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`identify a host device contradicts the explicit teachings of the CRD-5500 Manual.
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`In particular, the CRD-5500 Manual explains that, “[b]y using the controller's Host
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`LUN Mapping feature, you can assign redundancy groups to a particular host.”
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`Ex. 1003 at 10 (emphasis added). Patent Owner and its expert, Dr. Levy, do not
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`dispute that this is necessarily true where there is only one host device connected
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`to each channel; each channel is associated with only one host and thus the channel
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`ID uniquely identifies each host device. Ex. 1010 at ¶¶ 32, 42; Ex. 2055 at 392:20-
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`393:9, 414:19-25. The disclosure in a reference “speaks for itself,” and cannot be
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`contradicted by expert testimony. See Arthrocare Corp. v. Smith & Nephew, Inc.,
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`406 F.3d 1365, 1373-74 (Fed. Cir. 2005). An expert’s opinions are not a substitute
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`for the actual disclosure of the prior art. See Krippelz v. Ford Motor Co., 667 F.3d
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`1261, 1268-70 (Fed. Cir. 2012).
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`Nevertheless, Patent Owner’s expert Dr. Levy concedes that a host channel
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`ID (a Fibre Channel ID in the CRD combined system) is sufficient to identify the
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`host device within the meaning of the claims of the ‘147 patent where there is
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`only a single host on each host or fibre channel. Ex.1218 at 56:19-57:24.
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`3
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`Consistent with Dr. Levy’s testimony, Patent Owner has accused of
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`infringement systems which operate in the same manner, i.e., they identify the host
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`devices by port or channel because there is only a single host device connected to
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`each port or channel. Patent Owner previously asserted in district court that the
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`Overland 9500D “map[s] between devices connected to the first transport medium
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`and the storage devices” (the mapping recitation contained in the related ‘035
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`patent) because the system maps between a fibre channel port for a host and logical
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`unit number (LUN) for an array of storage devices (tape libraries in the appliance):
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`
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`Ex. 1225 at 2; see also Ex. 1224. As
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`shown in the figure at right, the “FC
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`ports” referenced in the infringement
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`contentions correspond to each FC
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`adapter card in the back of the
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`Overland appliance (ProtecTIER is
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`the name of the software which runs
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`on the Overland REO 9500D). Ex. 1226 at 19 (authenticated by Ms. Gregory in a
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`declaration attached as Ex. 1231), see also 7, 16, 47, 85, 106, 108. Accordingly,
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`the accused Overland system is identical to the proposed combination in that the
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`4
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`mapping is between remote storage devices and an FC adapter card port or
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`channel, which is in turn connected to a single host device. Pet. at 18; Ex. 1010 at
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`¶¶ 39-42. By making this allegation of infringement, Patent Owner has joined its
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`expert Dr. Levy in conceding that mapping to a fibre channel port or channel is
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`sufficient to meet the mapping limitation at least where each port or channel is
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`connected to a single host device.
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`
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`Moreover, the ’147 Patent does not expressly disavow systems which permit
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`hot swapping of devices on a given channel (as in the Bill & Lisa scenario).
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`“[C]laims will not be read restrictively unless the patentee has demonstrated a clear
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`intention to limit the claim scope.” Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., 381 F.3d 1111, 1117 (Fed. Cir. 2004). “Disavowal requires that the
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`specification or prosecution history make clear that the invention does not include
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`a particular feature, or is clearly limited to a particular form of the invention.”
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`Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal
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`quotation marks and citations omitted).
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`Here, the specification contains no express disclaimer of hot swapping. To
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`the contrary, the ’147 Patent specification explains that the mapping limitation may
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`be met even though devices might be hot swapped as in the Bill & Lisa scenario.
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`For instance, the specification explains that, on the storage side of the router, SCSI
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`devices may be “dynamically added” or “hot plugged” without modifying the
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`5
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`address map. Ex. 1001 at 8:52-60. In such a scenario the storage router would, of
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`course, grant hosts access to the newly substituted (hot swapped) storage device
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`according to the pre-existing map. Even Dr. Levy acknowledged that the claims
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`cover systems which can be “spoofed” or tricked into sending data to an
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`unintended source. Ex. 1232 at 112-117. Accordingly, under the broadest
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`reasonable interpretation the mapping limitations must be interpreted as covering
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`systems in which the devices may be swapped, thereby spoofing the storage router
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`such as in the Bill & Lisa example.
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`B. Patent Owner’s Argument Ignores the Express Argument in the
`Petition that the Tachyon Chip May Optionally Pass the Host
`Device Identity to the CRD Controller
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`Patent Owner’s primary argument also overlooks the petition’s specific
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`arguments and explanations that, in certain implementations, the host device ID is
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`passed directly to the CRD controller:
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`The host device’s identity can be derived from the incoming message
`(e.g., via FCP header or SCSI header) and/or from the channel of the
`host module slot receiving the communication, if such is recognized. (Id.)
`[citing Ex. 1010 at ¶¶ 42-43]. The Tachyon chip passes the host device
`identity, as well as the SCSI payload, 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 a redundancy
`group of the RAID array corresponding to the host device’s virtual storage
`address. (Id. at ¶¶ 42, 45)
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`6
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`Pet. at 18-19 (emphasis added). Dr. Chase’s testimony explained that the host may
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`be identified by the “FC unique identifier”. Ex. 1010 at ¶ 42.
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`Patent Owner’s expert, Dr. Levy, confirmed that every communication
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`transmitted on the Fibre Channel loop identifies the sender. Ex. 1232 at 119:17-
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`19, 91:5-14. He explained that, as a result, when the Tachyon chip in the CRD-
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`5500 receives a communication from a host, the sending host would be
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`identifiable. Id. at 119:4-25.Accordingly, in the implementation described at pages
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`18-19 of the petition, the combined system does not depend on the host channel ID
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`to identify a host device. Thus, Patent Owner’s primary argument is rendered
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`moot by this aspect of the proposed combination.
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`C. The Remainder of Patent Owner’s Arguments on the Independent
`Claims are Erroneously Premised on Bodily Incorporation of One
`Reference into Another
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`Patent Owner next asserts that there is “no evidence” that the Tachyon chip
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`could be “incorporate[d]” into a fibre channel adapter card without modifying the
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`CRD-5500 processing circuitry and interfaces. Resp. at 51-52. Patent Owner
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`points to several issues such as data rates and that a new interface module would
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`have to be created. Id.
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`However, a proper obviousness analysis does not require bodily
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`incorporation of one reference into another. In re Keller, 642 F.2d 413, 425
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`(CCPA 1981) (test for obviousness is “not whether the features of a secondary
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`7
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`reference may be bodily incorporated into the structure of the primary reference,”
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`rather, it is “what the combined teachings of the references would have suggested
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`to those of ordinary skill in the art”). For this reason, Patent Owner’s reliance on
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`the need for differences in data rates and the need to provide an appropriate
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`interface module to establish obviousness are of little consequence.
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`Turning to the dispositive issue, neither Patent Owner nor its expert Dr.
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`Levy asserts that the proposed combination would have been outside the ordinary
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`level of skill in the art at the time of filing. Resp. at 51-53; Ex. 2053 at ¶¶ 192-223.
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`Dr. Chase’s testimony that it would have been within the ordinary level of skill in
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`the art to adapt, as necessary, the teachings of the CRD-5500 Manual in view of
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`the teachings regarding Tachyon in Smith stands unrebutted. Ex. 1010 at ¶¶ 39-40.
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`D. For Claims 17, 24 and 36, the Petition Explains that the FC Unique
`Identifier is the Recited Host Device ID
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`Patent Owner incorrectly asserts that the petition does not identify anything
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`which meets the host device ID recited in claims 17, 24 and 36. As noted above,
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`the petition explains that, in the combined system, “[t]he host device’s identity can
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`be derived from the incoming message (e.g., via FCP header or SCSI header)
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`and/or from the channel of the host module slot receiving the communication.” Pet.
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`at 18-19, citing Ex. 1010 at ¶¶ 42-43. The cited portion of the Chase declaration
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`further explains that, in operation, the combined system relays to the controller
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`either the host channel or FC unique identifier. Ex. 1010 at ¶ 42. The claim
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`8
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`correspondence section of the petition states that the mapping limitation is met by
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`this combined system. Pet. at 21. Accordingly, the petition explains that the
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`combined system conveys the host device ID to the CRD controller in certain
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`implementations.
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`II. The Kikuchi-Bergsten Combination Renders Obvious the Claims
`Because Patent Owner’s Attempt to Antedate Kikuchi Fails and Patent
`Owner’s Critique of the Combined System Ignores the Express
`Teachings of the References
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`As a threshold matter, Patent Owner’s attempt to antedate Kikuchi fails
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`because, according to Patent Owner’s own purported timeline, about four months
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`of the diligence period was dedicated only to developing a product that, Patent
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`Owner also admits, was outside the scope of the claims. Patent Owner unduly
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`delayed and failed to diligently reduce the invention to practice because it could
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`have developed the claimed invention, but chose not to for reasons that the Federal
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`Circuit has held does not excuse delay. Patent Owner made a business decision—
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`unrelated and unnecessary to the testing of the invention—to prioritize the
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`development of that other product (and delay development of the claimed
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`invention) in order to provide the company with an earlier return of revenue.
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`On the merits of the combination, Patent Owner’s argument that the
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`combined system does not identify a particular storage device is contrary to the
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`express teachings of Kikuchi. Further, Patent Owner’s argument that the proposed
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`combination would change the principle of operation of the base references is
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`9
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`based on an unduly narrow view of the teaching and applicability of the references.
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`In fact, the proposed combination involves primarily modification of a simple
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`mapping table which—Patent Owner and its expert do not dispute—is well within
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`the level of ordinary skill in the art.
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`A. Patent Owner’s Evidence of Diligence Fails
`The only diligence chronology provided by the Patent Owner is set forth in
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`an exhibit prepared by Patent Owner’s counsel. Ex. 2311. This chronology spans
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`seven pages and is a prejudicial attempt to circumvent the 60 page limit for the
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`Patent Owner response. 37 C.F.R. § 42.6(a)(3); Fujian Newland Computer Co.,
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`Ltd. v. Hand Held Products, Inc. IPR2013-00595 (Paper 28, June 13, 2014) at 2.
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`Even if the Board considers the chronology, it fails to establish reasonable
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`diligence. Patent Owner’s position appears to be that from August 18, 1997 (the
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`beginning of the critical period) to November 25, 1997 the inventors were engaged
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`in a constructive reduction to practice of the Verrazano bridge product, which
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`Patent Owner claims had to be completed before the claimed subject matter of the
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`’147 Patent could be reduced to practice. Resp. at 23-25. The period from
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`November 25 to December 31, 1997 (the end of the critical period) was allegedly
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`spent making revisions to a patent application. Each of these two time periods are
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`addressed in turn below.
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`10
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`
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`As a threshold matter, Patent Owner freely acknowledges that the Verrazano
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`bridge does not embody the claimed invention because it lacks the recited access
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`controls. Resp. at 22; Ex. 2305 at ¶ 4. Rather, Patent Owner argues that it was not
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`able to begin work on the access controls until it had competed its work on the
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`Verrazano bridge and therefore, its work on that bridge should be credited as
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`diligence toward reducing the claimed invention to practice. Resp. at 24.
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`In Naber v. Cricchi, the Court found lack of diligence where both the
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`inventor and his supervisor “admitted that a simple transistor embodying the
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`structure [of the claimed invention] could have been built and tested”, yet the
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`inventor “chose not to proceed to a reduction to practice with a simple transistor,
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`but to wait until work on layer deposition techniques progressed.” 567 F.2d 382,
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`385 (Cust. & Pat. App. 1977). As noted in Thompson v. Dunn, it is not diligent to
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`“delay the reduction to practice of the invention . . . and devote time and energy to
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`the development of an auxiliary device which is not essential to the testing of the
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`invention at issue.” 166 F.2d 443, 447 (Cust. & Pat. App. 1948) overruled on other
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`grounds by Weil v. Fritz, 572 F.2d 856 (Cust. & Pat. App. 1978).
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`That is the case here. The proffered evidence demonstrates that the Patent
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`Owner made a conscious decision to prioritize development of the Verrazano
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`bridge and delay development of the claimed subject matter. Patent Owner’s
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`diligence declarant Mr. Middleton testified that he knew of no technical obstacle
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`11
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`
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`that would have prevented development and testing of the access control feature on
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`a testbed during the critical period. Ex. 1220 at 54, 58-59, 63-65. Moreover, Patent
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`Owner had five functioning Verrazano hardware prototypes during the critical
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`period on which the bridge software (which lacked access controls) was being
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`tested. Id. at 58-59; Ex. 2308 at 3. Mr. Middleton further testified that he was
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`aware of no reason that the software running on the hardware prototypes during the
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`critical period could not have been modified to include access controls. Ex. 1220
`
`at 63-65.
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`Indeed, the evidence suggests that Patent Owner opted to omit the access
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`controls from the Verrazano product to accelerate commercial introduction of that
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`product. The only evidence offered to demonstrate constructive reduction to
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`practice is a two-page declaration of Mr. Middleton, who later admitted on cross
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`examination that Crossroads’ management may have decided to omit the access
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`controls from the Verrazano product (which was ultimately released as the model
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`4100) because Crossroads, being a start-up, needed to generate revenue as quickly
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`as possible.
`
`Q. (BY MR. GARDELLA) To your knowledge, was the software
`team dedicated entirely to work on the 4100 [Verrazano]?
`A. Yes.
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`12
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`
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`Q. (BY MR. GARDELLA) And do you believe that that is because
`there was a desire to bring the 4100 product to market as quickly as
`possible?
`A. Yes.
`Q. (BY MR. GARDELLA) On what do you base that belief?
`A. As a startup, we were, you know, using investors’ funding. We
`were interested in becoming profitable as soon as possible and
`demonstrating that our product was viable.
`Q. So is it fair to say that was a priority for Crossroads at that time?
`A. Yes.
`Q. So given that, is it possible that the software team made the
`decision not to build the access controls into the software in 1997
`because that may have lengthened the time to market for the product?
`A. It’s possible. . . .
`Q. And in this specific circumstance, is it fair to infer that adding the
`access control functionality would have lengthened the development
`time for Verrazano?
`A. I believe that to be true.
`Q. (BY MR. GARDELLA) So it’s possible then, isn’t it, that a
`decision was made within Crossroads to delay development of the
`access controls for reasons relating primarily to early revenue
`generation?
`A. It’s possible.
`Id. at 70:16-72:22 (objections omitted).
`
`In the end, the evidence shows that Patent Owner could have built the access
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`controls into the Verrazano/4100 bridge but chose not to do so for business
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`13
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`
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`reasons, i.e., because incorporation of access controls would delay the commercial
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`launch of the product. Because access controls could have been built into the
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`bridge software or otherwise separately developed and tested on existing hardware
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`prototypes, but were not, Patent Owner’s work on the Verrazano product does not
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`establish reasonable diligence. See Oracle Corp. v. Click-to-Call Tech. L.P., No.
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`IPR2013-00312 (Paper 52, Oct. 28, 2014) at 25-26.
`
`Turning next to the work on the patent application, which is offered as
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`diligence evidence for the five weeks spanning November 25, 1997 to December
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`31, 1997, the evidence shows that Patent Owner received the draft from counsel in
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`July. Ex. 2303. Subsequent edits (shown in the redline submitted herewith as
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`Exhibit 1228) – mostly grammatical and comprising approximately a dozen
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`sentences worth of additions and three paragraphs of deletions – were so minimal
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`that they could not have accounted for the five week delay. Moreover, Patent
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`Owner offers no evidence regarding which, if any, of the revisions were made in
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`the five week window at the end of the critical period during which no other
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`evidence of diligence is offered. One could infer therefore that some of the
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`revisions were made during the “patent application review meeting” (Ex. 2311 at
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`6) but no evidence is offered in that regard.
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`A single patent application review meeting and the transmission of a draft
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`patent application with minimal revisions cannot have required more than a couple
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`14
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`
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`days of effort. Patent Owner offers no other evidence of diligence during the five
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`week period. Thus, Patent Owner fails to show diligence for the five week period.
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`See, e.g., Oracle Corp. v. Click-to-Call Tech, IPR2013-00312, at 16-17, 19
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`(finding no diligence where patent owner could only attest to making continued
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`progress on preparation of patent application over several weeks of time).
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`B. Patent Owner Fails to Overcome the Fact that the Kikuchi-
`Bergsten System Restricts Access to Specific
`Host Devices
`On the merits of the Kikuchi-Bergsten combination, Dr. Levy acknowledged
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`during his cross examination that the argument that Kikuchi does not perform
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`access controls is premised on his contention that Kikuchi’s use of the term “disk
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`partition” is a misnomer. Resp. at 27; Ex. 2053 at ¶148; Ex. 1218 at 61-63. Dr.
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`Levy reasons that, because Kikuchi is not “really” talking about disk partitions,
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`“the correlation chart provides only an integer value to add to a requested block
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`address” and that “offsets in the correlation chart do not prevent a host from
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`accessing storage not ‘allocated’ to that specific host.” Resp. at 27, paraphrasing
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`Ex. 2053 at ¶¶ 149-52, 156-57.
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`Even assuming, arguendo, that Dr. Levy’s understanding of the operation of
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`Kikuchi were correct (and it is not), that would not affect the manner in which the
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`combined system operates. The petition explained in detail that, in the combined
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`system (shown below), multi-protocol intercommunication capabilities of the
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`15
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`command and interpretation unit
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`described in Kikuchi are enhanced by
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`incorporating Bergsten’s emulation
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`drivers 21 and physical drivers 22. Pet.
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`at 30-31. The correlation chart and
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`address conversion units described in
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`Kikuchi are modified to include the
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`virtual mapping functionality of
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`Bergsten’s storage controller, as shown
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`in the figure at right (reproduced from
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`the petition). Id. at 31-32.
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`Accordingly, Dr. Levy’s criticism fails to address the combined system
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`depicted at right but rather attacks Kikuchi individually. It is axiomatic that one
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`cannot show nonobviousness by attacking references individually where the
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`rejections are based on combinations of references. In re Keller, 642 F.2d at 426;
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`In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). This is especially
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`true where, as here, the Patent Owner’s expert does not dispute that the asserted
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`combination was within the level of skill in the art. Ex. 1218 at 103:16-21; see also
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`Ex. 1010 at ¶¶ 142-147.
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`16
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`Moreover, Dr. Levy’s position is at odds with the express disclosure of
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`Kikuchi. Kikuchi states that its apparatus “enables access authorization to be
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`assigned solely to specific host devices.” Ex. 1006 at Abstract (emphasis added);
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`see also Ex. 1006 at 1:65-2:6. Kikuchi expressly states that “the disk apparatus is
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`able to allocate a different disk partition to each host device.”
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`Id. at 8:40-46 (emphasis added). The Kikuchi reference’s express teachings, that
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`access to each partition is assigned to a different host device, contradict Dr. Levy’s
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`interpretation and are controlling. See Section I.A supra; Krippelz, 667 F.3d at
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`1268-70; Arthrocare Corp., 406 F.3d at 1373-74.
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`C. The Proposed Combination Does Not Change the References’
`Principles of Operation
`Patent Owner argues that the Kikuchi-Bergsten combination “changes
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`Kikuchi’s fundamental principle of operation” because Patent Owner claims
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`Kikuchi’s integer offset approach would have to be modified in various ways.
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`Resp. at 31, citing Ex. 2053 at ¶¶ 169-70. Patent Owner also complains that the
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`combined system simplifies Bergsten’s two-stage mapping (since in the combined
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`system there is only a single storage controller). Id. at 32.
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`To the contrary, making modifications of the type described by Patent
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`Owner would have been rudimentary and well within the skill of an ordinary
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`artisan in this field. Both parties’ experts have acknowledged this. Ex. 1218 at
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`103; Ex. 1010 at ¶ 145; Ex. 2054 at 200, 214. Because alternating between a
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`17
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`mapping tree and a mapping chart was a routine design choice, it cannot constitute
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`a fundamental change in the principle of operation of a system. In re Mouttet, 686
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`F.3d 1322, 1332 (Fed. Cir. 2012) (sustaining “Board’s determination that the
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`difference in the circuitry—electrical versus optical—does not affect the overall
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`principle of operation of a programmable arithmetic processor”).
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`The only remaining and relevant question is whether a skilled artisan would
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`have seen an apparent reason to undertake these modifications. KSR International
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`Co. v. Teleflex Inc., 550 U.S. 398, 421-21 (2007). Professor Chase explained that a
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`skilled storage engineer would have been motivated to incorporate the virtual
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`storage emulation of Bergsten into the disk apparatus of Kikuchi to increase both
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`the number of storage devices accessible to hosts connecting to the disk apparatus
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`and the storage address range available within the combined system. Ex. 1010 at ¶
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`146. The combined system also benefits from increased restructuring capabilities
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`because an administrator could replace or update equipment and reassign host
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`storage regions without requiring host-side involvement. Id.
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`III. The Combined System of Bergsten and Hirai Meets the Claims for
`Similar Reasons
`A. Patent Owner’s Primary Argument – that Bergsten Does Not
`Identify a Particular Host – Fails because there is only a Single
`Host Device Attached to each Host Interface
`Just as the CRD system sufficiently identifies host devices because there is
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`only a single host device attached to each “host channel,” Bergsten too, sufficiently
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`18
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`identifies host devices because there is only a single host device attached to each
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`“host interface.” Dr. Levy conceded this point on cross examination. Ex. 1218 at
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`93:20-96:4. Dr. Chase similarly explains that in Bergsten and in the combined
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`Bergsten-Hirai system each host is identified because, among other things, each
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`host interface is coupled to a single host device. Ex. 1010 at ¶¶ 140-41, 247.
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`B. Hirai Does Not Teach that the Access Controls Are at the Network
`File System Level
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`Patent Owner argues at length that Hirai’s access controls are executed at
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`the network file system (NFS) level, not the block level. Resp. at 7-11. Patent
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`Owner alleges that “create” and “delete” commands would only make sense at the
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`NFS level but ignores the fact that an administrator could use the “create” and
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`“delete” commands to control the formation and removal of partitions. Ex. 1008 at
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`¶¶ 12-13. This is consistent with the view that the partition control table of Hirai
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`manages access rights at a block level. Pet. at 43. Moreover, “execute” would be
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`nonsensical in a remotely located storage NFS-level solution. Hirai’s sharing
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`device 3 would have no way of enforcing an execute permission because the
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`remote devices would of course execute the files locally, without the intervention
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`or cooperation of the sharing device 3. Accordingly, one skilled in the art would
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`understand that Hirai’s access controls are applied at the block or partition level, as
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`Professor Chase explained in his declaration. Ex. 1010 at ¶¶ 245-46.
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`C. The Proposed Ground Applies Hirai’s Access Controls at the Block
`Level, not the File Level
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`Patent Owner’s arguments as to the Bergsten-Hirai combination are similar
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`to those advanced against the Kikuchi-Bergsten combination as neither address the
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`combined system that is actually presented. Patent Owner’s argument that Hirai
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`discloses access controls at t