Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 77
` 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 IPR2014-01209
`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 77
` 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 IPR2014-01209
`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
`
`
`
`
`IPR2014-01209
`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 1–13
`
`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 January 30, 2015, we instituted trial as to claims 1, 2, 4, 5, 10, 11,
`
`and 13 of the ’147 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 44 (“Reply”). An oral
`
`hearing was held on October 30, 2015. A transcript of the consolidated
`
`hearing has been entered into the record. Paper 76 (“Tr.”).
`
`Petitioner filed a Motion to Exclude (Paper 58) and Reply in support
`
`of the Motion to Exclude (Paper 69). Patent Owner filed an opposition to
`
`Petitioner’s Motion to Exclude (Paper 63).
`
`Patent Owner also filed a Motion to Exclude (Paper 60) and Reply in
`
`support of the Motion to Exclude (Paper 70). Petitioner filed an opposition
`
`to Patent Owner’s Motion to Exclude (Paper 65).
`
`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.
`
`We determine that Petitioner has shown by a preponderance of the evidence
`
`that claims 1, 2, 4, 5, 10, 11, and 13 of the ’147 patent are unpatentable.
`
`
`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 68.
`
`2
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`IPR2014-01209
`Patent 7,051,147 B2
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`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 IPR2014-01207 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 1 of the ’147 patent is reproduced below:
`
`1.
`A storage router for providing virtual local storage on remote
`storage devices to a device, comprising:
`a buffer providing memory work space for the storage router;
`
`
`
`3
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`Patent 7,051,147 B2
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`a first Fibre Channel controller operable to connect to and interface with
`a first Fibre Channel transport medium;
`a second Fibre Channel controller operable to connect to and interface
`with a second Fibre Channel transport medium; and
`a supervisor unit coupled to the first and second Fibre Channel
`controllers and the buffer, the supervisor unit operable:
`to maintain a configuration for remote storage devices connected
`to the second Fibre Channel transport medium that maps between the
`device and the remote storage devices and that implements access
`controls for storage space on the remote storage devices; and
`to process data in the buffer to interface between the first Fibre
`Channel controller and the second Fibre Channel controller to allow
`access from Fibre Channel initiator devices to the remote storage
`devices using native low level, block protocol in accordance with the
`configuration.
`
`Ex. 1001, 9:24–47.
`
`D. Prior Art Supporting Instituted Unpatentability Grounds
`
`1. Judith A. Smith & Meryem Primmer, Tachyon: A Gigabit Fibre
`Channel Protocol Chip, HEWLETT-PACKARD J. 1, 1–17 (1996)
`(“Smith”) (Ex. 1005);
`
`2. U.S. Patent No. 6,219,771 B1, issued Apr. 17, 2001 (“Kikuchi”)
`(Ex. 1006);
`
`3. U.S. Patent No. 6,073,209, issued June 6, 2000 (“Bergsten”)
`(Ex. 1007); and
`
`4. 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”).
`
`E. Instituted Unpatentability Grounds
`
`We instituted an inter partes review of claims 1, 2, 4, 5, 10, 11, and
`
`13 of the ’147 patent on the following grounds:
`
`
`
`
`
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`References
`
`Kikuchi and Bergsten
`
`Kikuchi, Bergsten, and Smith
`
`Bergsten and Hirai
`
`Bergsten, Hirai, and Smith
`
`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claim(s)
`Instituted
`1, 2, 4, 10, 11, and
`13
`5
`
`1, 2, 4, 10, 11, and
`13
`5
`
`
`
`III. ANALYSIS
`
`For the challenged claims, Petitioner must prove unpatentability by a
`
`preponderance of the evidence. 35 U.S.C. § 316(e).
`
`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).
`
`In our Decision to Institute, we determined that no claim terms
`
`required construction. Based on our review of the complete record, we
`
`maintain our determination that no constructions are necessary.
`
`
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`B. Asserted Ground Based on Kikuchi and Bergsten
`
`Petitioner challenges claims 1–4 and 6–13 as obvious under 35 U.S.C.
`
`§ 103 over Kikuchi and Bergsten. Pet. 29–43. We instituted inter partes
`
`review of claims 1, 2, 4, 10, 11, and 13 on this ground. Dec. 8–10.
`
`1. Kikuchi
`
`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
`
`
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`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 the offset
`
`information output from address offset information conversion 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
`
`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
`
`device addresses by the storage controller. Id. at 3:17–19. Figure 1 of
`
`Bergsten is reproduced below.
`
`
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`7
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`Figure 1 of Bergsten is a block diagram illustrating a computing
`
`system in which a number of Bergsten’s storage controllers provide a
`
`number of host computer systems with access to a number of storage arrays.
`
`Id. at 3:20–23. Figure 1 shows a computing system with M storage
`
`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 storage
`
`arrays 4-1 through 4-M, which are coupled to storage controllers 3-1 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. Storage
`
`controllers 3-1 through 3-M function cooperatively to provide any of host
`
`computer systems 2-1 through 2-M with access to any of storage arrays 4-2
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`
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`through 4-M. Id. at 4:7–9. Storage controller 3-1 is coupled directly to host
`
`computer system 2-1 using data communication path 7 and 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.
`
`A local host computer accesses data by transmitting a (virtual) host
`
`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
`
`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 to
`
`multiple physical addresses, which may be distributed among multiple
`
`MSDs, and such MSDs may further be located in different storage arrays.
`
`Id. at 6:16–21. The storage controller maintains and uses a tree structure to
`
`map the host interface ID and block number to a logical device. Id. at 9:21–
`
`24; Fig. 8.
`
`3. Kikuchi as Prior Art
`
`Patent Owner argues that Kikuchi, which was filed on August 18,
`
`1997, is not prior art. PO Resp. 26. Patent Owner argues that the invention
`
`of the ’147 patent was conceived as early as March 22, 1997, and that the
`
`‘147 patent claims priority to U.S. Patent No. 5,941,972, which was filed on
`
`December 31, 1997.2 Id. More particularly, Patent Owner alleges that the
`
`
`2 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.
`09/001,799, filed on Dec. 31, 1997, now Pat. No. 5,941,972.” Ex. 1001 at
`[63].
`
`
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`invention of the ’972 patent, representing the earliest filing in the ’147
`
`patent’s chain of title, was conceived as early as March 1997. Id. at 21.
`
`According to Patent Owner: “Only two dates are important for the prior
`
`invention analysis. Crossroads must have a complete conception 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 30.
`
`During the period in which reasonable diligence must be shown, there
`
`must be continuous exercise of reasonable diligence. In re McIntosh, 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
`
`F.2d 908, 919 (CCPA 1966).
`
`Even a short period of unexplained inactivity is sufficient to defeat a
`
`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
`
`F.2d 1542, 1542–46 (Fed. Cir. 1983), the Federal Circuit affirmed a
`
`determination of lack of reasonable diligence, where the evidence of record
`
`was lacking for a two-day critical period. Likewise, in Rieser v. Williams,
`
`255 F.2d 419, 424 (CCPA 1958), there was insufficient diligence where no
`
`activity was shown during the first 13 days of the critical period.
`
`To support its conception date, Patent Owner relies, inter alia, on an
`
`abstract and drawing sent from the inventor to outside counsel on May 28,
`
`1997, and a draft patent application returned by outside counsel on July 11,
`
`1997, as evidence. PO Resp. 28 (citing Exs. 2300–2303). To support its
`
`
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`10
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`allegations of reduction to practice, Patent Owner argues that the “precursor
`
`to the invention claimed in the ’972 patent was the ‘Verrazano’ project.” Id.
`
`at 29. According to Patent Owner, “Verrazano was a bridge for linking FC
`
`and SCSI devices and contained all elements of the ’972 invention except
`
`for access controls and virtual local storage.” Id. During the critical period,
`
`according to Patent Owner, all of its employees were working to create a
`
`viable Verrazano product. Id. at 30. “Verrazano would eventually become
`
`Crossroads’ CP4100 product,” according to Patent Owner, and because
`
`“Verrazano was the basic hardware platform that would be used to support
`
`access controls, its development was required before that feature could be
`
`added and the entire invention could actually be reduced to practice.” Id. at
`
`30–31 (citing Thompson v. Dunn, 166 F.2d 443, 447 (CCPA 1948); Keizer
`
`v. Bradley, 270 F.2d 396, 398–99 (CCPA 1959)). Patent Owner also points
`
`to “revising multiple draft patent applications prior to constructive reduction
`
`to practice on December 31, 1997” as evidence of diligence. Id. at 32.
`
`Petitioner’s arguments address two time periods: the “first time
`
`period” from August 18, 1997, to November 25, 1997, during which
`
`inventors were engaged in constructive reduction to practice of the
`
`Verrazano bridge product, and the “second time period” from November 25,
`
`1997, to December 31, 1997, during which Petitioner was allegedly revising
`
`the patent application. Reply 2–3. Petitioner does not provide arguments
`
`specifically directed to Patent Owner’s allegations regarding conception.
`
`Regarding the “first time period,” Petitioner argues that Patent
`
`Owner’s attempt to antedate Kikuchi fails because “about four months of the
`
`diligence period was dedicated only to developing a product that, Patent
`
`Owner also admits, was outside the scope of the claims.” Id. at 1. During
`
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`this “first time period” in which inventors were working on the Verrazano
`
`bridge product, Petitioner argues that Patent Owner “made a conscious
`
`decision to prioritize development of the Verrazano bridge and delay
`
`development of the claimed subject matter.” Id. at 4. Petitioner disagrees
`
`with Patent Owner’s contention that the completion of the Verrazano
`
`product was necessary for commencement of work on the access controls.
`
`Id. Instead, Petitioner argues, “Patent Owner opted to omit the access
`
`controls from the Verrazano product to accelerate commercial introduction
`
`of that product.” Id. at 5.
`
`Regarding the “second time period” from November 25, 1997, to
`
`December 31, 1997, Petitioner argues that, although a draft of the patent
`
`application from counsel was received by Patent Owner in July 1997,
`
`subsequent edits were “so minimal that they could not have accounted for
`
`the five week delay.” Id. at 7 (citing Ex. 1228). Petitioner summarizes: “A
`
`single patent application review meeting and the transmission of a draft
`
`patent application with minimal revisions cannot have required more than a
`
`couple days of effort. Patent Owner offers no other evidence of diligence
`
`during the five week period.” Id. at 7–8.
`
`We do not agree with Patent Owner’s assertions that developing the
`
`Verrazano product was a necessary precursor to developing access controls.
`
`Petitioner’s evidence, including deposition testimony of diligence declarant
`
`John Middleton, indicates that Patent Owner could have tested access
`
`controls during the “first time period,” but decided not to. Reply 4 (citing
`
`Ex. 1220, 54, 58–59, 63–65). Patent Owner relies on Mr. Middleton’s
`
`declaration statement that “until the Verrazano bridge could be completed,
`
`Crossroads had no working device which could implement access controls.”
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`Ex. 2305, 3. However, during his deposition, Mr. Middleton stated that
`
`Crossroads was interested in “becoming profitable as soon as possible” and
`
`agreed that the exclusion of access controls from the Verrazano bridge
`
`possibly had to do with reasons relating to interest in early revenue
`
`generation and delay of the commercial launch. Ex. 1220, 71:4, 71:10–
`
`72:22. Mr. Middleton also stated that, during testing, the functionality of the
`
`Verrazano hardware prototypes could have included access control
`
`functionality. Id. at 63:21–64:4. Petitioner’s evidence, in total, indicates
`
`Patent Owner made a business decision to develop and launch the Verrazano
`
`product, without access controls, because development of access controls
`
`would have lengthened the time to market for the Verrazano product.
`
`Reply 5–6 (citing Ex. 1220, 70:16–72:22). Thus, Patent Owner cannot rely
`
`on Thompson v. Dunn to excuse its inactivity in developing access controls.
`
`As discussed above, even a short period of unexplained inactivity is
`
`sufficient to defeat a claim of diligence, and Patent Owner’s four-month gap
`
`of activity exceeds the short periods found to prevent an earlier priority date
`
`by the courts. Morway, 203 F.2d at 749. Patent Owner’s additional
`
`evidence of reasonable diligence during the “second time period” also is
`
`insufficient. The minor changes to the patent application during this time
`
`period do not represent reasonably continuous activity. Because Patent
`
`Owner had a draft application since July 1997, it is unclear if those changes
`
`were even made during this “second time period,” or if they were made at
`
`some other point between drafting and filing the application. Thus, based on
`
`the totality of the evidence before us, we are persuaded that Kikuchi is prior
`
`art.
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`4. Arguments
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`Petitioner asserts, in a section titled “The Combined System of
`
`Kikuchi and Bergsten,” that the references, in combination, disclose the
`
`claimed subject matter. Pet. 32–35. Petitioner argues that “[i]n the
`
`combined system of Kikuchi and Bergsten, multi-protocol
`
`intercommunication capabilities of the command and interpretation unit
`
`described in Kikuchi are enhanced by incorporating Bergsten’s emulation
`
`drivers 21 and physical drivers 22, which are detailed in Bergsten with a
`
`greater degree of specificity.” Id. at 32. Petitioner emphasizes that “[t]o the
`
`extent that Kikuchi fails to explicitly detail every nuance of FCP-based
`
`encapsulation and de-encapsulation, the details of Bergsten’s emulation
`
`drivers 21 and physical drivers 22 more than sufficiently provide specific
`
`details.” Id. at 32–33. Based on the full record after trial, we find that the
`
`combination of Kikuchi and Bergsten teaches all of the limitations of the
`
`instituted claims. Id. at 35–43 (explaining how each limitation is taught by
`
`the asserted prior art).
`
`Patent Owner argues that Bergsten does not teach the claimed access
`
`controls, and Kikuchi does not teach the claimed map or access controls. PO
`
`Resp. 32. Instead, Patent Owner argues, Kikuchi’s simple address offset is
`
`designed to create different “partitions of a physical storage device,” and
`
`thus does not provide the claimed map or access controls. Id. at 33–34.
`
`Patent Owner relies on the testimony of Dr. Levy to support its assertions
`
`that the “simple address offset mechanism of Kikuchi is designed to create
`
`different ‘partitions’ of a physical storage device.” Id. at 34 (citing Ex. 2053
`
`¶¶ 149–151). Patent Owner also argues that access controls are not present
`
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`in the asserted combination, because Bergsten’s emulation driver prevents
`
`host identity from reaching any map. Id. at 47–48.
`
`Petitioner replies that the combination of Kikuchi and Bergsten does
`
`in fact restrict access to specific host devices, in that the “correlation chart
`
`and address conversion units described in Kikuchi are modified to include
`
`the virtual mapping functionality of Bergsten’s storage controller.” Reply 9.
`
`Regarding Dr. Levy’s testimony that Kikuchi does not “really” talk about
`
`disk partitions, Petitioner argues that Dr. Levy fails to understand properly
`
`the operation of Kikuchi, and furthermore attacks Kikuchi individually. Id.
`
`at 9–10 (citing In re Keller, 642 F.2d 413, 426 (CCPA 1981)). Petitioner
`
`supports its argument by citing to portions of Kikuchi stating that Kikuchi’s
`
`apparatus “enables access authorization to be assigned solely to specific host
`
`devices.” Id. at 10–11 (citing Ex. 1006, Abstract, 1:65–2:6, 8:40–46).
`
`Petitioner also states that Kikuchi, as a form of access control, evaluates the
`
`host address to determine whether a host has any rights to access the storage
`
`device. Pet. 29–30 (citing Ex. 1006, 4:35–44); Tr. 20:22–25. According to
`
`Petitioner, there is no express support for Patent Owner’s contention that the
`
`Kikuchi host ID would be stripped from the combination. Tr. 23:11–15.
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`Petitioner argues that, based on the asserted combination set forth in the
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`Petition, Kikuchi has the ability to extract the host device ID and
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`communicate it on, even in an FC embodiment such as that in Bergsten.
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`Pet. 29; Tr. 23:17–24:2. As disclosed in Bergsten and discussed by Dr.
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`Chase, Bergsten’s host ID identifies the particular host, and is received by
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`the storage controller in Bergsten. Ex. 1007, 9:8–20, Fig. 7; Tr. 63:9–17;
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`Ex. 1010 ¶¶ 299, 313.
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`We agree with Petitioner that Kikuchi’s disclosure of access
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`authorization assigned to specific host devices meets the “access control”
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`limitation of the claims. In the sections of Kikuchi cited by Petitioner,
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`Kikuchi expressly states that host addresses that match those in an address
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`registration are given access authorization, and certain hosts receive access
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`to certain portions of the disk based on their access authorization, which
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`demonstrates the presence of “access control.” Ex. 1006, Abstract, 1:65–
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`2:6, 4:35–44, 8:37–46. We agree that the express disclosures of Kikuchi
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`should be given substantial weight in our consideration of whether Kikuchi
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`discloses access controls. Additionally, based on the evidence presented,
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`including the disclosures of Bergsten itself and the testimony of Dr. Chase,
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`we are not persuaded that Bergsten prevents host identity from reaching any
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`map. Petitioner’s citations to Bergsten and to Kikuchi support the position
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`that the host ID in each system, or the combined system, is used for mapping
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`purposes rather than being stripped or discarded.
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`Patent Owner also argues that the asserted combination impermissibly
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`enhances both Kikuchi and Bergsten by ignoring their purposes and
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`modifying their principles of operation. PO Resp. 36. Specifically, Patent
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`Owner argues that one of ordinary skill in the art would not modify the
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`references as proposed by Petitioner, as the combination is highly complex
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`and destroys the intended purposes of both references by modifying their
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`principles of operation. Id. at 36–42.
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`Petitioner responds by arguing that the proposed combination does not
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`change the principles of operation, stating that both parties’ experts agree
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`that “making modifications of the type described by Patent Owner would
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`have been rudimentary and well within the skill of an ordinary artisan in this
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`field,” such as changing between a mapping tree (as in Bergsten) and a
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`mapping chart (as in Kikuchi). Reply 12 (citing Ex. 1218, 103; Ex. 1010
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`¶ 145, Ex. 2054, 200, 214).
`
`We credit the testimony of Dr. Chase that one of ordinary skill in the
`
`art would have been motivated and able to combine Kikuchi and Bergsten in
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`the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147; Ex. 2054, 180–
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`213. Patent Owner’s arguments to the contrary address the purported
`
`complexity of the combination, but do not establish that a person of ordinary
`
`skill would not have had a reasonable expectation of success. Obviousness
`
`does not require absolute predictability. In re Kronig, 539 F.2d 1300, 1304
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`(CCPA 1976). Both experts agree that the modifications were within the
`
`level of ordinary skill in this field (Ex. 1010 ¶ 145; Ex. 1218, 103:16–21).
`
`Dr. Chase’s Declaration states that tables and trees are interchangeable data
`
`lookup constructs for address translations, and that the “tree mapping” of
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`Bergsten may be collapsed into a simple mapping table construct such as
`
`that of Kikuchi in a single-controller implementation; his deposition
`
`testimony provides greater detail in response to Patent Owner’s questions on
`
`how the collapsing would occur in different circumstances. Ex. 1010 ¶ 145;
`
`2054, 180–219. Thus, we are persuaded by Petitioner’s testimony and
`
`evidence that the combination of Kikuchi and Bergsten was within the skill
`
`level of an ordinarily skilled artisan, and would not change the principles of
`
`operation of the respective references.
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`Finally, Patent Owner argues that Petitioner has not provided a
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`motivation to combine Kikuchi and Bergsten. PO Resp. 50–52. According
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`to Petitioner, one of ordinary skill in the art would have been motivated to
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`combine Kikuchi and Bergsten to “improve the Kikuchi system with the
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`advantage of virtualized, networked storage,” to “increase both the number
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`of storage devices accessible to hosts and the storage address range
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`available,” and to “benefit from increased restructuring capabilities.” Pet.
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`34–35 (citing Ex. 1010 ¶ 142–147); Reply 13 (citing Ex. 1010 ¶ 146).
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`Patent Owner challenges each of these statements, and the supporting
`
`testimony, as lacking evidence supporting how Bergsten would provide the
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`alleged benefits or explaining why one of ordinary skill in the art would be
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`motivated to combine the references as proposed by Petitioner. PO
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`Resp. 51–52.
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`Here, too, we credit the testimony of Dr. Chase that one of ordinary
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`skill in the art would have been motivated to combine Kikuchi and Bergsten
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`in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147. Bergsten itself
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`indicates that it would be “desirable” for a storage controller to not be
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`“dependent on any particular hardware or software configuration of any host
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`computer or mass storage device which it services.” Ex. 1007, 1:48–51.
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`The numerous reasons articulated by Petitioner for the combination of
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`Kikuchi with Bergsten, resulting in an enhanced system with advantages
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`including virtualized storage, increased capacity and increased flexibility,
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`are detailed by Petitioner and supported by testimony. KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421–22 (2007). Patent Owner’s arguments to
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`the contrary are unavailing.
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`As discussed below, we are not persuaded that Patent Owner has
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`established secondary considerations of non-obviousness. Accordingly, we
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`find that Petitioner has demonstrated by a preponderance of the evidence
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`that claims 1, 2, 4, 10, 11, and 13 are obvious over Kikuchi and Bergsten.
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`D. Asserted Ground Based on Kikuchi, Bergsten and Smith
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`Petitioner challenges claim 5, which depends from claim 1, as
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`unpatentable over Kikuchi, Bergsten and Smith. Pet. 43–44. Smith
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`discusses a Tachyon chip, an FC interface controller that “enables a
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`seamless interface to the physical FC-0 layer and low-cost [FC] attachments
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`for hosts, systems, and peripherals on both industry-standard and proprietary
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`buses.” Ex. 1005, 1. Petitioner argues that “one of ordinary skill would
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`understand that the emulation and physical drivers of Bergsten are designed
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`to incorporate the functionality of the Tachyon chip of Smith.” Pet. 43
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`(citing Ex. 1010 ¶¶ 239–240). Specifically, Petitioner argues that the
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`combined system, and in particular, Smith, describes a Fibre Channel
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`protocol unit, a FIFO queue coupled to the FC protocol unit, and inbound
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`and outbound sequence managers that perform DMA transfers of inbound
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`data and outbound data. Id. (citing Ex. 1005, pp. 5, 7, 9, Fig. 4). Patent
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`Owner argues that the challenge to claim 5 must fail for the same reasons as
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`discussed for claim 1, because Petitioner does not allege that Smith changes
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`the functionality of the Bergsten/Kikuchi combination, and challenges
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`Petitioner’s rationale for the combination. PO Resp. 52. We are persuaded
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`by the evidence that one of ordinary skill in the art would have incorporated
`
`the functionality of the Tachyon chip into the system of Kikuchi and
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`Bergsten. As discussed below, we are not persuaded that Patent Owner has
`
`established secondary considerations of non-obviousness. On this record,
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`Petitioner has demonstrated by a preponderance of the evidence that claim 5
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`is unpatentable over the combination of Kikuchi, Bergsten, and Smith.
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`E. Asserted Grounds Based on Bergsten and Hirai
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`Petitioner challenges claims 1–4 and 6–13 as unpatentable over
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`Bergsten and Hirai. Pet. 44–57. We instituted inter partes review on claims
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`1, 2, 4, 10, 11, and 13 on this ground. Dec. 11–13.
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`1. Hirai
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`Hirai is a Japanese published patent application titled “Personal
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`Computer System.” Ex. 1008, (54). Hirai describes a personal computer
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`system that allows the sharing of multiple magnetic disk devices by multiple
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`personal computers. Id. at Abstract. The multiple disks are considered as
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`one virtual magnetic disk device with a partition control table that manages
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`and specifies the access right of the personal computers connected to the
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`sharing device for each partition of the memory region of the virtual
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`magnetic disk device. Id. ¶¶ 5, 11, 12. The access right to a partition
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`includes R (read), W (write), C (create), D (delete), and X (execute). Id.
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`¶ 12. Figure 2 of Hirai is reproduced below.
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`Figure 2 shows an example of a partition control table. For example,
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`Personal computer 1 can read, write create, and execute with a partition
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