CROSSROADS EXHIBIT 2012
`Oracle Corp. et al v Crossroads Systems, Inc.
` IPR2014-01207
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`1 of 177
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`PTO/SE/57 (04-04)
`Approved for use thmugh 04/30/2007. OMB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paerwork Reduction Act of 1995. no ersons are reguired to respond to a collection of information unless it disla
`a valid OMB control number.
`
`12.
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`The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question ofpatentability based on prior patents and printed
`publications. 37 CFR 1.510(b)(1)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the perlinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.510(b)(2)
`
`13. 1:] A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.51 O(e)
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`14. [El
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`a. It is certified that a copy of this request (if filed by other than the patent owner) has been served in its entirety on
`the patent owner as provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`
`,
`
`—
`
`_Gray Cary Ware & Freidenrich, LLP, Atn: Tracy McCreight, Esq.,
`_1221 S. MoPac Expressway, Suite 400
` _Austin, TX 78746-6875
`
`Date of Service: _July 19, 2004
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`
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`; or
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`El
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`b. A duplicate copy is enclosed since service on patent owner was not possible.
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`"’ 15. Correspondence Address: Direct all communication about the reexamination to:
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`IE CustomerNumber:
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`37819
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`V
`OR
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`
`
`Firm or
`Individual Name
`ddress
`(line 1)
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`' 16. IE . The patent is currently the subject of the following concurrent proceeding(s):
`I: a. Copending reissue Application No.
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`E! b. Copending reexamination Control No.
`
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`l:l c. Copending Interference No.
`[X] d. Copending litigation styled:
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`
`
`
` _ Case Number A-O3-CV-754(SS)
`nn may become public. Credit card Infonnatlon should not be
`redit card infonnation and authorization on PTO-2038.
`
`
`Date
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`_Crossroads Systems, Inc. v. Dot Hill Systems Corporation, U.S.D.C. for Western District of Texas,_
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`Authorized Signature
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`__Natu J. Patel
`Typed/Printed Name
`
`July 19, 2004
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`_39559
`Registration No., if applicable
`
`For Patent Owner Requester
`l:l
`@ For Third Party Requester
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`[Page 2 of 2]
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Inventor:
`
`Hoese, et al.
`
`Title of Invention:
`
`REQUEST FOR EX PARTE
`
`REEXAMINATION
`
`6,425,035
`
`Storage router and method for
`
`providing virtual local storage
`
`Issued:
`
`Patent No.:
`
`July 23, 2002
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`REQUEST FOR EX PARTE REEXAMINATION
`
`Dear Sir:
`
`This is a Request for Ex Parte Reexamination of Claims 1 through 14 of the above
`
`identified United States Patent.
`
`It is believed that newly discovered prior art submitted
`
`herewith, which was not considered by the Patent Office during the prosecution of the
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`above Patent, raises a substantial new question of Patentability with respect to Claims 1
`
`through 14. Accordingly, reexamination under 35 U.S.C. §§ 302-307 ‘pursuant to 37
`
`C.F.R. § 1.510, et seq. is hereby respectfully requested.
`
`In accordance with 37 C.F.R. § 1.510, the following is provided herein:
`
`37 C.F.R. § 1.510(a)
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`Prior art cited under 37 C.F.R. §' 1.501, infra.
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`Fee for ex paite reexamination as per 37 C.F.R.
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`1‘.20(c)(1), $2,520.00, included with petition.
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`37 C.F.R. § l.5l0(b)(l)
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`A statement
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`indicating each substantial new
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`question of Patentability based on prior Patents and
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`printed publications, infra.
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`V
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`37 CFR. § l.5l0(b)(2)
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`An identification of every claim for which
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`reexamination
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`is
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`requested,
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`and
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`a
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`detailed
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`explanation of the pertinency and manner of
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`applying the cited prior art to every claim for which
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`reexamination is requested, infra.
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`37 C.F.R. § 1.51 0(b)(3)
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`A copy of every Patent or printed publication relied
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`upon or referred to in paragraph (b)(1) and (2) of
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`this section, with listing (Exhibit 1).
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`37 C.F.R. § l.5lO(b)(4)
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`A copy of the entire Patent including the front face,
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`drawings,
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`and
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`specification/clairns
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`(in double
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`column
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`format)
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`for which reexamination is
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`requested, and a copy of any disclaimer, certificate
`of correction, or reexamination certificate issued in
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`the Patent. (Exhibit 2).
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`37 CFR. § 1.510(b)(4)
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`A certification that a copy of the request filed by a
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`person other than the Patent owner has been served
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`in its entirety on the Patent owner at the addressvas
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`provided for in § 1.33(c). The name and address of
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`the party served must be indicated. (Exhibit 3).
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`I. INTRODUCTION
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`This request is based upon numerous prior patents and printed publications,
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`including 77 U.S. Patents and 6 printed articles, most of which were not previously
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`considered by the Patent Office in granting the above-referenced patent.
`
`It is believed
`
`that Claims 1 through 14 of U.S. Patent No. 6,425,035 (the ‘035 Patent) are invalid:
`
`1) pursuant to 35 U.S.C. {$102 as being anticipated by the Maxstrat GEN5,
`
`StorageTek Iceberg, CMD CRD-5500 and Infortrend 3000 controller
`
`products;
`
`I
`
`2) under 35 U.S.C. §103 as being obvious;
`
`i)
`
`in light of the patentees’ deposition and trial testimony that the
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`invention amounts to nothing more than simply adding “access
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`controls” to a prior art
`
`storage router and such a simple
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`modification was obvious in light of a number of patents, products
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`and motivations to make such a combination; and
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`ii)
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`because motivations to combine the prior art inevitably would lead
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`one skilled in the art to arrive at the alleged invention embodied in
`
`the ‘035 Patent.
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`This request is served concurrently with a request for reexamination of US.‘
`
`Patent Nos. 5,941,972 (the ‘972 Patent), 6,421,753 (the ‘753 Patent), 6,425,036 (the ‘036
`
`Patent), and 6,738,854 (the ‘854 Patent), collectively referred to as the “Related Patents.”
`
`The ‘972 Patent was the parent of the Related Patents.
`
`II. BACKGROUND
`
`The invention described and claimed in the ‘035 Patent is currently assigned to
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`Crossroads Systems (Texas), Inc. (“Crossroads”).
`
`The ‘972 Patent was the parent of the Related Patents, and all five Patent
`
`specifications have identical figures and nearly identical written descriptions — the only
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`differences can be found in the claims, and even those differences are minimal. The
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`differenceslbetween the claims of the ‘972 and ‘O35 Patents concern the way in which the
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`claimed router device is connected to devices. The ‘972 Patent specifies that the router
`
`connects to hosts using the Fibre Channel transport medium, and connects to storage
`
`devices using the SCSI transport medium. The ‘O35 Patent specifies that the router
`
`connects to hosts using any first transport medium, and connects to storage devices using
`
`any second transport medium. Otherwise, the patent claim language is identical or nearly
`
`identical. A chart depicting the differences in the claims of the ‘972, ‘O36, ‘O35 and ‘854
`
`Patents is included herein (Exhibit 4).
`
`The ‘972 and ‘O35 Patents are currently being litigated in the case of Crossroads
`
`Systems, Inc. v. Dot Hill Systems Corporation, Western District of Texas, Case Number
`
`A-03-CV-754(SS) (“Crossroads v. Dot Hill”). On June 26, 2004, Dot Hill submitted a
`
`Motion for Summary Judgment (“MSJ”) to the Court, a copy of which is included herein.
`
`(Exhibit 5). The Motion requests a finding of invalidity based upon: 1) the ‘035 Patent
`
`being anticipated by, or rendered obvious in light of, prior art; and 2) the ‘972 Patent
`
`being obvious in light of prior art.
`
`Specifically, the MS] argument is based partially upon undisputed prior art in the
`
`form of the HSZ70 array controller designed and manufactured by Digital Equipment
`
`Corporation (“DEC”) and related, published product manuals. Further, the MS] contains
`
`three declarations from former DEC employees who were involved in the design and
`
`manufacture of the HSZ70 that clearly establish the date of conception, use, and
`
`publication of the manuals of the DEC HSZ70 as long before the earliest alleged
`
`conception dates for the ‘035 and ‘972 Patents. (See Exhibit 5).
`
`The HSZ70 product was on sale before the issuance of the ‘972, ‘O35 and Related
`
`Patents, yet the Patentees did not disclose this relevant prior art to the USPTO during the
`
`examination of the Patents.
`(See Exhibit 5). Even worse, Dot Hill’s previous counsel
`gave to Crossroads’ patent counsel copies of the HSZ70 manuals prior to the issuance of
`
`the ‘854 Patent, and yet the Patentees still did not disclose this relevant prior art to the
`
`USPTO during the examination of that patent. Dot Hill earnestly encourages the
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`examiner to review the attached copy of the MS] and corresponding declarations, which
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`have been filed with the Court, to evaluate the impact of the DEC HSZ70 product
`
`literature on the portfolio of Related Patents. (See Exhibit 5).
`
`Further, inventors Hoese and Russell have at least six (6) pending applications
`
`that are continuations claiming priority based upon the ‘972 patent application filing date.
`The Application Numbers of the pending applications are 10/023786, 10/081082,
`10/081110, 10/081114, 10/361283 and 10/658163. As each of these applications depends
`
`upon the ‘972 patent application, Dot Hill contends that each application suffers from the ,
`
`same critical
`
`infirmity as
`
`the ‘972 and ‘035 Patents.
`
`Dot Hill cannot pursue
`
`reexamination of the pending applications; nevertheless, Dot Hill respectfully requests
`that these applications and any other pending applications depending on the ‘972 Patent
`
`or any Related Patent be examined in light of this reexamination petition and the petitions
`for the Related Patents.
`
`art.
`
`III. PRIOR LITIGATION INVOLVING THE ‘972 PATENT
`
`This is a unique case that presents the examiner with a wealth of information to
`
`assist in the reexamination as to motivation to combine, claim interpretation, and prior
`
`The ‘972 Patent was litigated on two separate occasions and the Court has defined
`
`terms in the ‘972 Patent that apply equally to the ‘035 Patent. Biovail Corp. Int'l v.
`
`Andrx Pharrns., Inc., 239 F.3d 1297, 1301 (Fed.Cir.2001) ("When multiple Patents derive
`
`from the same initial application, the prosecution history regarding a claim limitation in
`
`any Patent that has issued applies with equal force to subsequently issued Patents that
`
`contain the same claim limitation."). The claim limitation in the ‘035 Patent are either
`
`broader or equal to the limitations of the corresponding ‘972 Patent claims. Thus the
`
`‘972 Patent claim limitations are within the bounds of the ‘035 Patent claims.
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`The _ Court’s Markman Order for the ‘972 Patent
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`in the case of Crossroads
`
`Systems, Inc. V. Chaparral Network Storage, Inc., Western District of Texas, CivilAction
`
`Number A 00 CA 217 SS (“Chaparral”) is critical to the examiner’s review of the ‘035
`
`Pa.tent. A copy of the Court’s Markman Order appears in Exhibit 6. Pursuant to MPEP
`
`§2207, Court documents related to a Patent are to be admitted at any time and from
`anyone into the Patent file. A district court's finding is binding upon the Patent examiner
`
`in a reexamination. Marlow Industries, Inc. v. Igloo Products Corp., 2002 WL 485698,
`
`*4 -5, G\l.D.Tex.2002) referring to In Re Freeman, 30 F.3d 1459, 1468 (Fed.Cir.l994)
`
`see also MPEP §2286.
`
`(Exhibit 7).
`
`
`
`During the course of the ‘972 Patent
`
`litigation in the Chaparral ease,
`
`the
`
`Patentees made a number of admissions under oath at deposition and at trial that have a
`
`direct bearing on the current reexamination and the scope of the patents at
`
`issue.
`
`Pursuant to MPEP §22l7, Patentee admissions may be used in combination with Patents
`
`and printed publications to establish a substantial new question of Patentability.
`
`Admissions are not restricted to just a determination of a substantial new question
`
`of Patentability. Under section 305,
`
`reexamination proceeds "...according to the
`
`procedures established for initial examination." 35 U.S.C.A. § 305, see also In re Portola
`
`Packaging Inc., l22 F.3d 1473, 1475 (C.A.Fed.,1997) see also 37 C.F.R. 1.104 (c)(3).
`
`“Facts, including admissions which have already been established in the record, have
`
`been authorized for use in reexamination proceedings. See 37 CFR l.lO6(c) and M.P.E.P.
`
`§ 2258.” Ex Parte the Successor in Interest of Robert S. McGaughey 1988 WL 252480,
`
`*4.
`
`(Exhibit 8).
`
`“In the initial examination of Patent applications, admissions by the
`
`applicant are considered for any purpose including evidence of obviousness under section
`
`103.”
`
`Id.
`
`”An admission is defined as an acknowledged, declared, conceded or
`
`recognized fact or truth. Thus, admissions are simply facts.” Id at *5.
`
`IV. THE SCOPE OF THE INVENTION AS ADMITTED BY AN INVENTOR
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`During trial and deposition testimony in the Chaparral case, one of the two
`inventors of the ‘972, ‘035 and other Related Patents stated that the only invention
`
`claimed was the movement of access controls from a network server into the router
`
`device. Every other limitation in the claims of the ‘972 and ‘035 Patents, including the
`
`router device itself, was admitted to be prior art. See trial transcript of inventor Geoffrey
`Hoese, Exhibit 9, pages 70 to 72.4 According to the inventor, the novel feature of the
`
`claims is that the storage router, rather than a network server, performs access control
`
`such that each workstation may have controlled access to a specific partition of the
`
`storage device which forms the virtual local storage for that workstation (‘O35 Patent,
`
`column 4, lines 28-31). All other aspects of the alleged invention as set foith in figure 2
`
`of the ‘972 and ‘035 Patents and the corresponding written description of the ‘972 and
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`‘O35 Patents were acknowledged by the inventor Geoffrey Hoese, in his trial testimony in
`
`the Chaparral case, to be part of the prior art and not the invention.
`
`Figure — well, figure 2 is not your invention, right, sir?
`Q.
`Figure 2 is not my invention.
`A.
`And this description is in reference to figure 2, and this
`Q.
`description mentions native low-level block protocols
`and
`mentions mapping, and you say figure 2 is not your invention?
`A.
`That’s correct.
`a
`
`(Trial transcript of Hoese, page 81, starting at line 3, emphasis
`added)
`
`=1<'*
`
`*
`
`
`
`See, In re Nomzya, 509 F.2d 566, 570-71, 571 n.5, 184 USPQ 607, 611, 611 n.4
`(CCPA 1975) (“We see no reason why appellants‘ representations in their application
`
`should not be accepted at face value as admissions that Figs.
`
`1 and 2 may be considered
`
`“prior art” for any purpose, including use as evidence of obviousness under § 103.
`[Citations omitted.] By filing an application containing Figs.
`1 and 2, labeled prior art,
`ipsissimis verbis, and statements explanatory thereof, appellants have conceded what is to
`
`be considered as prior art in determining obviousness of their improvement”)
`
`V. THE ‘035 PATENT IS INVALID AS IT IS ANTICIPATED BY THE
`
`MAXSTRAT GEN 5 PRODUCT
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`MaxStrat (previously known as Maximum Strategy) was a company that designed '
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`and manufactured RAID (redundant array of independent devices) controllers as well as
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`entire storage systems, beginning in the early 1990s.
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`In 1996, MaxStrat began shipping
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`the GEN5 RAID controller, which was a router that performed the fimction of access
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`controls and met each and every claim of the ‘972 and ‘O35 Patents.
`
`(It should be noted
`
`that in the Chaparral case, the Court determined that the ‘972 Patent covered RAID
`
`controller devices, as they met the definition of “routers.” Further, the devices accused by
`
`Crossroads in Crossroads v. Dot Hill are RAID controllers, like the GEN5.)
`
`A chart is included in Exhibit 10 comparing elements described in the GEN5
`
`I System Guide and GUI User’s Guide with each limitation in all claims of the ‘035 Patent.
`
`A copy of the Gen5 S-SERIES XL System Guide Revision 1.01, published June 11, 1996 *
`(“System Guide”), is included as Exhibit 11, and a copy of the Graphical User Interface
`
`for MAXSTRAT Gen5/Gen—S Servers User ’s Guide 1.], published January 6, 1997 (“GUI
`
`Guide”), is included as Exhibit 12. Both manuals were published before the alleged
`
`invention of the ‘035 Patent.
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`The GUI Guide describes the operation of the Gen5 S—Series Storage Server,
`
`which is documented in the System Guide.
`
`“l . l .2 System Requirements
`The GUI will function on all models of the Gen5 Storage Servers,
`at Gen5 software revision 1.60 or higher, and all models of the Profile
`NFS File Server at ProOS revision 0.82 and higher, and all models of the
`S—Series at software revision 1.00 or higher.” [GUI Guide, page 1]
`
`The GUI Guide expressly references the System Guide, which is incorporated by
`
`reference:
`
`“l.l.3 Related Reference Material
`
`iS.—.Scrics System Manual” [GUI Guide, page 2]
`
`The GUI Guide and System Guide are a two-volume set that make a single
`publication. This printed publication describes each and every limitation of the Claims of
`
`-
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`the ‘035 Patent. The pertinency and manner of applying this printed publication to the
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`
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`
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`‘O35 Patent is explained in the chart included in Exhibit 10, which compares elements of
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`the Gen5 with each limitation in each of the claims of the ‘035 Patent.
`
`The GEN5 provides a number of devices such as Cray computers on one side of
`
`the GEN5 with access to storage devices such as hard disk drives on the other side of the
`
`GEN5. An outline of this configuration is shown below.
`
`E1
`
`l\«‘['1xst1'"nt
`g
`(
`U'=11-
`Posts
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`13 TC 2
`
`3
`
`As to the “access control” limitation of the ‘972 and ‘O35 Patents, the Gen5 is
`
`able to assign a specific storage area to a specific device.
`
`.The GEN5 includes the “ifp”
`
`command, which includes the “luns bitmask enable” field. This field is used to specify
`
`the enabling of LUNs on interface ports to provide access to “facilities” (storage units).
`
`[See Exhibit 10, Claim chart, pages 5 and 6; see Exhibit 11, Gen5 System Guide, pages
`
`'4-42 to 4-43]. For example, each device attached to a GEN5 can be assigned a subset of
`
`a disk drive as shown below.
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`
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`Dcfiuc Ccmy
`computci S}
`
`l\iIax:x‘t1‘at
`
`Genj
`
`Stoxnge (Hard
`Dfiksl
`
`
`
`Alternatively, the GEN5 allows for a configuration where all the devices can
`
`access a global disk storage, as identified below.
`
`I\=I21.\;st1':1t
`
`
`
`Dcnvcw (CHE.
`cou1puter.<:)
`'
`
`(jg-nfs
`
`Ports
`
`Stoi‘:1ge~ (Hard
`Imks)
`
`Finally, the GEN5 can assign a device to a particular drive, again as displayed
`
`below.
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`
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`s:omplII’e1's) ’
`
`
` l\»Iz~ix.<:t1‘at
`(}en§
`
`
`
`Storage (Hard
`
`Disks} Ilexices (Cray
`
`
`
`Notably, this last configuration of the GEN5 was quite common and not an
`
`unreasonable extension of the product.
`
`(See Hillgrave Corp. v. Symantec Corp., 265
`
`F.3d 1336, 1343 (Fed.Cir. 2001) for a discussion of the reasonable use of a product
`
`involved in an infiingement analysis). Review of the GEN5 documentation attached
`
`herein indicates that such a configuration was available. (Exhibit 13),
`
`While GEN5 connected to storage devices using only the SCSI transport medium,
`
`Gen5 could be configured to use combinations SCSI, Fibre Channel and/or HlPPl
`
`transport media to connect to hosts.
`
`In sum, the GEN5 allows access to a global data storage device, subsets of a
`
`single storage device, and access to a single storage device. This allocation of storage is
`
`what the Court in Chaparral identified as access control.
`
`(Exhibit 6). The GEN5 meets
`
`every element of the alleged invention of the’035 Patent.
`
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`In comparing the last configuration of the Gen5 (shown on the previous page) to
`
`an embodiment of the invention of the ‘035 Patent as shown in Fig. 3 of the ‘035 Patent
`
`specification above, it is clear that the GEN5 anticipates every element of the ‘035 Patent.
`
`The only difference between Fig. 3 and the last configuration of the GEN5 is that the
`
`workstations in Fig 3. are attached to a single Fibre Channel transport medium, while the
`
`However, it is important to note that Claim 1 of the ‘O35 Patent does require every
`
`“device” (referred to as Fibre Channel devices in the specification) to be connected to a
`
`single transport medium. This is done in the GEN5 through the use of port 4 connecting
`
`to each of the devices on the left side of the GEN5. The chart below identifies an excerpt
`
` workstations of the GEN5 are attached to separate Fibre Channel transport mediums.
`
`of Claim 1 that addresses this issue and a full detailed analysis appears in Appendix A.
`
`Further analysis in relation to the ‘Q35 Patent is presented in AppendixAB and C.
`
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`‘O35 Patent claim 1
`
`I I
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`1. A storage router for providing
`local storage on remote storage
`to
`devices,
`comprising:
`
`virtual
`devices
`
`the supervisor unit operable to map
`between devices connected to the first
`
`storage
`the
`transport medium and
`devices, to implement access controls for
`storage space on the storage devices and
`to process data in the buffer to interface
`between the first controller and the
`
`second controller to allow access from
`devices connected to the first
`transport
`medium to the storage devices .., . ..
`
`l
`
`This claim element specifies that there is
`cooperation between the devices and the
`first transport medium. However, there is
`no limitation in the claim that access
`control must be performed exclusively in
`relation to the first transport medium. The
`GEN5 allows each device on the left side
`to be connected to a single transport
`medium via port 4. The GEN5 allows
`access control, mapping, and maintaining a
`configuration by configuring a port for
`each device. Therefore the GEN5 meets
`every limitation of the ‘035 Patent claims.
`
` ‘O35 Patent and renders the ‘035 invalid.
`
`Using a number of ports to connect individual devices to GEN5 would be covered
`
`by Claim 1. As a result, GEN5 completely anticipates the subject matter claimed in the
`
`
`
`
`VI. THERE WERE OTHER CONTROLLERS ON THE MARKET PRIOR
`
`TO THE INVENTION OF THE ‘035 PATENT THAT ANTICIPATE THE
`
`‘035 PATENT AND PERFORMED ACCESS CONTROLS
`
`In addition to the Maxstrat Gen5,
`
`there were other RAID controllers that
`
`performed access controls, were commercially available at
`
`the time of the alleged
`
`invention of the ‘035 Patent, and completely anticipate the subject matter claimed in the
`‘O3 5 Patent.
`
`Storage Technologies, Inc. (known as “StorageTek”) designed and manufactured
`
`the Iceberg RAID controller before 1997.
`
`Iceberg performed access control; Iceberg
`
`madeselected hosts blind to selected storage based on the permission granted to those
`
`selected hosts. Iceberg connected a plurality of IBM mainframe host computers to
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`partitions and subsets of multiple SCSI storage devices. As described in the ‘035 Patent,
`
`Iccbcrg contained a supervisor unit, which was coupled to a buffer, a host controller and
`
`a storage controller. The host and storage controllers included protocol units, FIFO
`
`buffers and DMA.
`
`Iceberg performed mapping to present a virtual Count-Key-Data disk
`
`interface to the hosts for the fixed-block allocation SCSI disk drives.
`
`Similarly, CMD Technology, Inc. made the CRD—5500 SCSI RAID Controller
`
`before 1997. The CRD—5500 includes every element described in the ‘035 Patent.
`
`Features for access controls to partitions of disks and subsets of disks
`
`(called
`
`“redundancy groups”) are explained in the CRD—5500 SCSI RAID Controller User ’s
`Manual, Rev. 1.3, published I\Iovember 21, 1996, which is included as Exhibit 15.
`
`
`
`“The controller’s Host LUN Mapping feature makes it possible to
`map RAID sets differently to each host. You make the same redundancy
`group show up on different LUNs to different hosts, or make a redundancy
`group visible to one host but not to another.” (CRD—5500 User’s Guide,
`page 1-1, Section 1.2).
`
`.
`“4.3.3 Host LUN Mapping
`This screen may be used to map LUNs on each host channel to a
`particular redundancy group. Or you may prevent a redundancy group
`from appearing on a host channel. Thus, for example, you may map
`redundancy group 1 to LUN 5 on host channel 0 and the same redundancy
`group to LUN 12 on host channel 1. Or you may make redundancy group
`8 available on LUN 4 on host channel0 and block access to it on host
`channel I.’’ (CRD—5500 User’s Guide, page 4-5, Section 4.3.3).
`
`Finally, Infortrcnd Technologies, Inc. made the IFT-3000 before 1997. The IFT-
`
`3000 is also a SCSI RAID controller, and includes all the elements described in the ‘035
`
`Patent. A chart is included in Exhibit 15 comparing elements described in the IFT-3000
`
`Instruction Manual with each limitation in Claim 1 of the ‘O35 Patent. A copy of the
`
`IFT-3000 SCSI to SCSI Disk Array Controller Instruction Manual Revision 2.0,
`
`published in 1995, is included as Exhibit 16.
`
`
`
`
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`The manuals indicate that these controllers could be configured in much the same
`
`way as the GEN5, as shown above, which performs “access controls” as that term is used
`
`in the ‘035 Patent, and was defined by the Court in the Chaparral litigation
`
`VII. THE ‘035 PATENT IS INVALID AS IT IS ANTICIPATED BY U.S.
`
`PATENT NO. 6,073,209 TO BERGSTEN
`
`The ‘035 Patent is also anticipated by U.S. Patent No. 6,073,209 (the ‘209 Patent)
`
`titled “Data storage controller providing multiple hosts with access to multiple storage
`
`subsystems,” to Bergsten, filed March 31, 1997, which was prior art as of the ‘035
`
`Patent’s effective filing date. A copy of the ‘209 Patent is included in Exhibit 1, and the
`
`claim chart comparing elements of this Patcnt to limitations in the claims of the ‘035
`
`Patent is included in Exhibit 22. The ‘209 Patent describes a form of access controls
`
`using low level, block protocols. For example, the ‘209 Patent states in the ABSTRACT,
`section:
`
`least one host
`“Each storage controller may be coupled to at
`processing system and to at least one other storage controller to control
`access of the host processing systems to the mass storage devices.”
`
`The ‘209 Further states, in column 15, lines 39 to 47:
`
`, “A storage controller of the present invention further allows data
`blocks to be write protected, so that a block cannot be modified from any
`host computer. Write protection may be desirable for purposes such as
`virus protection or implementation of security firewalls. Write protection
`can be achieved by configuring the storage controller appropriately at set-
`up time or by inputting a write protect command to the storage controller
`from a host computer.”
`
`The ‘209 Patent thus describes how to control access of hosts to storage devices
`
`by allowing data blocks to be write protected from host computers. Since data blocks can
`
`be write protected, the ‘209 Patent describes a storage controller that limits a computer’s
`
`access to subsets of storage devices or sections of a single storage devices, which is what
`
`the Court in Chaparral identified as access control (Exhibit 6).
`
`In addition, this explicit
`
`reference to security-oriented data protection provides strong motivation to a person of
`
`
`
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`ordinary skill in the art to combine the ‘209 Patent and other prior art storage routers with
`
`enhanced security features.
`
`The ‘209 Patent also includes all the remaining elements of the claims of the ‘035
`
`Patent: a RAM buffer (column 6, line 26); a first (Fibre Channel) controller (column 4,
`line 28); a second (SCSI) controller (column 4, line 21); a CPU supervisor unit (column
`
`6, line 26); and mapping (column 3, line 18). See Figure 3 from the ‘209 Patent, included
`
`below, depicting a STORAGE CONTROLLER with CPU, RAM, HOST DEVICE I/F
`
`(interface) with arrows
`
`leading TO/FROM HOST (first
`
`transport medium), and
`
`STORAGE DEVICE I/F with arrows
`
`leading TO/FROM LOCAL EXTERNAL
`
`STORAGE DEVICES (second transport medium).
`
`
`
`
`
` CONTROLLER
`STORAGE
`DEVICE I/F
`DEVICE m=
`
`1 5
`
`TO/FROM
`HOST
`
`TO/FROM
`LOCAL. EXTERNAL
`STORAGE DEVICES
`
`TO/FROM
`OTHER STORAGE
`CONTROLLERS
`
`FIG. 3
`
`Thus, the ‘209 Patent anticipates the ‘035 Patent, or in the alternative, provides
`
`strong intrinsic motivation to combine a storage router with access control.
`
`VIII. THE ALLEGED INVENTION OF THE ‘035 WAS OBVIOUS IN LIGHT OF
`
`THE PRIOR ART AND NUMEROUS MOTIVATIONS TO COMBINE
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`The Obviousness Standard.
`
`“... [T]he standard under 35 U.S.C. § 103 [for obviousness] is what would have
`
`been obvious to one of ordinary skill in the art, and the level of the skilled artisan should
`
`not be underestimated. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed.
`
`Cir. 1985).” Ex Parte Richard A. Flasck, 2000 WL 33520310, *3. (Exhibit 17). Factors
`
`that may be considered in determining level of ordinary skill in the art include: ( 1) the
`
`education level of the inventor; (2) type of problems encountered in the art; (3) prior art
`
`solutions to those problems;
`
`(4)
`
`rapidity with which innovations are made;
`
`(5)
`
`sophistication of the technology; and (6) education level of active workers in the field.
`
`Enviromnental Designs V. Union Oil Co. of Cal., 713 F.2d 693, 696-697 (Fed.Cir.1983),
`
`cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984) see also Orthopedic
`
`Equipment Ca, Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376 at 1381-1382
`
`(Fed.Cir.1983). The level of one of ordinary skill is evaluated at the time the invention
`
`was made.
`
`Id at 1382.
`
`The Ficld of Endeavor.
`
`The first question in an obviousness argument is whether the references are in the
`
`field of the inventor’s endeavor.
`
`In re Deminski, 796 F.2d 436, 230 U.S.P.Q. 313,
`
`(Fed.Cir., Jul 08, 1986). The field of art that encompasses the ‘035 Patent, as well as the
`
`Related Patents,
`
`is that of computer science and electronics. Some of the hardware
`
`identified in the ‘035 Patent includes routers, networks, bridges, servers, controllers,
`
`storage devices,
`
`storage disks, microprocessors, buffers,
`
`storage controllers, and
`
`workstations. The prior art would encompass, at least, the fields of computer science and
`
`electronics as it relates to the hardware discussed above.
`
`It is common knowledge that the computer science and electronics field is one
`
`that has experienced, and continues to experience, rapid development and complexity in
`
`hardware and software. As a result, a person skilled in the an would be someone with a
`
`degree in Computer Science, Electrical Engineering or an equivalent, with perhaps seven
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`or more years of professional experience, and with knowledge of at least computer
`
`hardware, systems, electronics, and software in such an area of rapid innovation.
`
`The Motivation to Combine
`
`Identification in the prior art of each individual part claimed is insufficient to
`
`defeat patentability of the whole claimed invention. Rather,
`
`to establish obviousness
`
`based on a combination of the elements disclosed in the prior art, there must be some
`
`motivation, suggestion, or teaching of the desirability of making the specific combination
`
`that was made by the applicant.
`
`In re Kotzab, 217 F.3d 1365, 1369-1370 ‘(C.A.Fed.,
`
`2000).
`
`I
`
`
`
`Obviousness and Motivation to Combine in Li gl_1t of the 1984 Bfie Magazine Article
`
`As has already been discussed, one of the two inventors of the ‘972 and ‘O35
`
`Patents admitted under oath that the only limitation of the ‘972 (and ‘035) Patents that is
`not taught by prior art is the movement of access controls from the network server to the
`
`router. This petition has identified no less than four RAID controllers w or “routers” —
`
`(five if one includes the DEC HSZ7O RAID controller) that performed access controls.
`
`However, even if one were to ignore those prior art RAID controllers, the movement of
`
`access controls from the network server into the router would have been obvious in light
`of an article published in Byte Magazine in 1984.
`
`“Local-Area Networks for the IBM PC” was written by J. Scott Haugdahl
`
`(“Haugdahl”) and published in the December 1984 edition of Byte Magazine. Byte
`
`Magazine is a widely-read computer magazine and publicly available.
`
`(Exhibit 18). The
`
`Haugdahl