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,
`
`v.
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`CROSSROADS SYSTEMS, INC.
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`Patent Owner.
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`____________
`
`Case IPR2014-01209
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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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`Table of Contents
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`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 ........................................................................................................ 1
`Patent Owner’s Evidence of Diligence Fails ............................................... 2
`Patent Owner Fails to Overcome the Fact that the Kikuchi-Bergsten
`System Restricts Access to Specific Host Devices ..................................... 9
`The Proposed Combination Does Not Change the References’ Principles
`of Operation ................................................................................................ 11
`
`I.
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`A.
`B.
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`C.
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`
`II.
`
`A.
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`The Bergsten-Hirai System is Identical in Relevant Respect to Devices
`Patent Owner Has Accused of Infringement and Patent Owner Only Attacks
`the References Individually ........................................................................... 13
`Patent Owner’s Primary Argument – that Bergsten doesn’t Identify a
`Particular Host – Fails because there is only a Single Host Device
`Attached to each Host Interface ................................................................. 14
`B. Hirai Does Not Teach that the Access Controls Are at the Network File
`System Level .............................................................................................. 16
`The Proposed Ground Applies Hirai’s Access Controls at the Block Level,
`not the File Level ........................................................................................ 16
`Bergsten is Not Limited to Applications in which All Users are Given
`Access to All Data ...................................................................................... 17
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`C.
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`D.
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`III. The Petition Set Forth a Specific Reason to Combine the References
`Asserted Against Claim 5 .............................................................................. 19
`
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`IV. Patent Owner Does Not Even Attempt to Establish any Nexus between the
`Alleged Secondary Considerations and the Claimed Invention .................... 20
`
`
`V.
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`Conclusion ..................................................................................................... 25
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`

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`
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`I.
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`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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`Crossroads Systems, Inc.’s (Patent Owner’s) first argument with respect to
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`the Kikuchi and Bergsten combination, is that Kikuchi is not prior art. Patent
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`Owner’s attempt to antedate Kikuchi fails because, according to Patent Owner’s
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`own purported timeline, about four months of the diligence period was dedicated
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`only to developing a product that, Patent Owner also admits, was outside the scope
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`of the claims. Patent Owner unduly delayed and failed to diligently reduce the
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`invention to practice because it could have developed the claimed invention, but
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`chose not to for reasons that the Federal Circuit has held does not excuse delay.
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`Patent Owner made a business decision—unrelated and unnecessary to the testing
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`of the invention—to prioritize the development of another product (and delay
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`development of the claimed invention) in order to provide the company with an
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`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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`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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`1
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`
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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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`(“[W]e agree with Petitioner that, in the abstract, use of a pointer or citation to
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`declaration testimony, without sufficient arguments and explanation in the
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`response itself, improperly circumvents the page limit[.]”); Cisco Systems, Inc. v.
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`C-Cation Technologies, LLC, IPR2014-00454 (Paper 12, Aug. 29, 2014) at 10,
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`(Board refusing to “consider arguments . . . not made in the Petition, but . . .
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`incorporated by reference[.]”). The diligence chronology therefore should not be
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`considered.
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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
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`engaged in a constructive reduction to practice of the Verrazano bridge product,
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`which Patent Owner claims had to be completed before the claimed subject matter
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`2
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`
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`of the ’147 Patent could be reduced to practice. Resp. at 29-32. 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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`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. Id. at 31; 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 30.
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`In Naber v. Cricchi, the Court determined that, because the inventor
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`“admittedly ‘possessed the capability of conducting . . . a test [of functionality of
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`the claimed invention],’ it was his burden to reconcile the waiting period with the
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`‘reasonable diligence’ requirement.” 567 F.2d 382, 385 (Cust. & Pat. App. 1977),
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`citing Litchfield v. Eigen, 535 F.2d 72, 76, 190 USPQ 113, 116 (Cust. & Pat.App.
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`1976). The Court found lack of diligence where both the inventor and his
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`supervisor “admitted that a simple transistor embodying the structure [of the
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`claimed invention] could have been built and tested”, yet the inventor “chose not to
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`proceed to a reduction to practice with a simple transistor, but to wait until work on
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`layer deposition techniques progressed.” Id. As noted in Thompson v. Dunn, it is
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`3
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`not diligent to “delay the reduction to practice of the invention . . . and devote time
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`and energy to the development of an auxiliary device which is not essential to the
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`testing of the invention at issue.” 166 F.2d 443, 447 (Cust. & Pat. App. 1948)
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`overruled on other grounds by Weil v. Fritz, 572 F.2d 856 (Cust. & Pat. App.
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`1978). Similarly, in Oracle Corp. v. Click-to-Call Tech. L.P., No. IPR2013-00312
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`(Paper 52, Oct. 28, 2014) at 25-26, citing In re Harry, 333 F.2d 920, 923 (Fed. Cir.
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`1964), the Board noted that delaying development of the claimed invention until
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`completion of the “overall system architecture design” does not establish
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`reasonable diligence.
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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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`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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`4
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`critical period could not have been modified to include access controls. Ex. 1220
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`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.
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`Q. (BY MR. GARDELLA) To your knowledge, was the software
`team dedicated entirely to work on the 4100 [Verrazano]?
`MR. HALL: Objection; form.
`A. Yes.
`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?
`MR. HALL: Objection; calls for speculation.
`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.
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`5
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`
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`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?
`MR. HALL: Objection; form.
`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?
`MR. HALL: Objection; form.
`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?
`MR. HALL: Objection; calls for speculation.
`A. It’s possible.
`Id. at 70:16-72:22.
`
`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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`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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`6
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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., IPR2013-
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`00312 at 25-26.
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`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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`Given the minimal revisions made to the patent application between July
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`1997 and December 1997, and Patent Owner’s failure to even allege which of
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`these revisions were made in the five weeks preceding the end of the critical
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`period, the proffered evidence fails to account for that five week period. A single
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`patent application review meeting and the transmission of a draft patent application
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`7
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`with minimal revisions cannot have required more than a couple days of effort.
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`Patent Owner offers no other evidence of diligence during the five week period.
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`A showing of diligence requires specific details concerning work done rather
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`than “mere pleadings” related to progress of patent application preparation. Oracle
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`Corp. v. Click-to-Call Tech., IPR2013-00312 at 16-17, 19 (finding patent owner
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`failed to demonstrate diligence between the date invention disclosure was received
`
`by patent counsel and filing date of the application because, over the course of
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`several weeks, patent owner and counsel could only attest to having “continued to
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`make progress on the preparation of [the] patent application.”), citing In re Harry,
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`333 F.2d 920, 923 (Fed. Cir. 1964). Here, the evidence concerning work on the
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`patent application likewise fails to establish diligence for the same reasons.
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`Patent Owner’s diligence evidence fails: Patent Owner could have built
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`access controls into the Verrazano/4100 software but chose not to do so, could
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`have separately tested access controls on the prototypes but chose not to do so, and
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`failed to account for the remaining five weeks of the critical period (from
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`November 25 to December 31, 1997). Kikuchi remains a prior art reference
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`against the claimed subject matter.
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`8
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`
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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 33-34; 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 34-35,
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`paraphrasing 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 , multi-protocol intercommunication capabilities of the command and
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`interpretation unit described in Kikuchi are enhanced by incorporating Bergsten’s
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`emulation drivers 21 and physical drivers 22. Pet. at 32-34. The correlation chart
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`and address conversion units described in Kikuchi are modified to include the
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`virtual mapping functionality of Bergsten’s storage controller, as shown in the
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`figure below (reproduced from the petition). Id. at 33-34.
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`9
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`Accordingly, Dr. Levy’s
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`criticism fails to address the
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`combined system (shown at
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`right) but rather attacks Kikuchi
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`individually. It is axiomatic
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`that one cannot show
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`nonobviousness by attacking
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`references individually where
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`the rejections are based on
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`combinations of references. In
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`re Keller, 642 F.2d 413, 426
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`(CCPA 1981); In re Merck &
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`Co., Inc., 800 F.2d 1091, 1097
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`(Fed. Cir. 1986). This is especially true where, as here, the Patent Owner’s expert
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`does not dispute that the asserted combination was within the level of skill in the
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`art. Ex. 1218 at 103:16-21; see also Ex. 1010 at ¶¶ 142-47.
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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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`Kikuchi explains that
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`10
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`[i]t is an object of the present invention to improve the
`deficiencies inherent in the conventional devices discussed
`above, and in particular to provide a disk apparatus in which
`each host device can be treated differently, so that for example
`access authorization can be assigned solely to specific host
`devices, or furthermore, each host device can gain access to a
`different partition while using the same interface.
`Ex. 1006 at 1:65-2:6 (emphasis added). Kikuchi expressly states that each disk
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`partition is allocated to a different host device:
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`[B]ecause a partition offset information value is stored for each
`host device, the disk apparatus is able to allocate a different
`disk partition to each host device. Consequently, a single disk
`apparatus can essentially appear as a different disk to each host
`device, enabling the efficient usage of modern large volume
`disk apparatus.
`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. Krippelz, 667 F.3d at 1268-70; Arthrocare
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`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
`
`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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`11
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`Resp. at 41-42, 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). Resp. at 43.
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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, as both parties’ experts have acknowledged. Ex. 1218 at 103;
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`Ex. 1010 at ¶ 145; Ex. 2054 at 200, 214. Because alternating between a mapping
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`tree and a mapping chart was a routine design choice, it cannot constitute a
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`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) (explaining that the relevant
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`inquiry is “whether there was an apparent reason to combine the known elements
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`in the way a patent claims” and that “[i]t is common sense that familiar items may
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`have obvious uses beyond their primary purposes, and a person of ordinary skill
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`often will be able to fit the teachings of multiple patents together like pieces of a
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`puzzle.”). Professor Chase explained that a skilled storage engineer would have
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`12
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`been motivated to incorporate the virtual storage emulation of Bergsten into the
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`disk apparatus of Kikuchi to increase both the number of storage devices accessible
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`to hosts connecting to the disk apparatus and the storage address range available
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`within the combined system. Ex. 1010 at ¶ 146. The combined system also
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`benefits from increased restructuring capabilities because an administrator could
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`replace or update equipment and reassign host storage regions without requiring
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`host-side involvement. Id.
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`For the foregoing reasons, Patent Owner’s arguments concerning the
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`Kikuchi-Bergsten combination should be rejected.
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`II. The Bergsten-Hirai System is Identical in Relevant Respect to Devices
`Patent Owner Has Accused of Infringement and Patent Owner Only
`Attacks the References Individually
`
`Patent Owner argues that the Bergsten-Hirai combination does not teach
`
`identifying a particular host. Patent Owner’s argument, however, is belied by the
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`fact that the Patent Owner previously has accused of infringement systems which
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`operate in the same manner as the Bergsten-Hirai system. Consistent with that
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`infringement allegation, Patent Owner’s expert Dr. Levy concedes that in systems
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`where there is a single host device attached to host interface the host interface ID
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`suffices to uniquely identify the host.
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`Patent Owner next argues that Hirai only teaches NFS level access control,
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`but this argument fails to address the proposed combination. In the proposed
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`13
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`
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`combination, Bergsten’s block-level emulation drivers are modified to include
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`access controls. Lastly, Patent Owner argues that adding access control to
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`Bergsten would defeat its overarching purpose of providing all users access to all
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`data. While that may be one benefit of Bergsten in certain implementations,
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`however, the reference is by no means limited to systems that provide all users
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`access to all data.
`
`A. Patent Owner’s Primary Argument – that Bergsten doesn’t
`Identify a Particular Host – Fails because there is only a Single
`Host Device Attached to each Host Interface
`
`Bergsten sufficiently identifies host devices because there is only a single
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`host device attached to each “host interface.” Dr. Levy conceded this point on
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`cross examination. Ex. 1218 at 93:20-96:4. Dr. Chase similarly explains that in
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`Bergsten and in the combined Bergsten-Hirai system each host is identified
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`because, among other things, each host interface is coupled to a single host device.
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`Ex. 1010 at ¶¶ 140-41, 247.
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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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`14
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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.
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`As shown in the figure at right,
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`the “FC ports” referenced in the
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`infringement contentions
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`correspond to each FC adapter
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`card in the back of the Overland
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`appliance (ProtecTIER is the
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`name of the software which runs on the Overland REO 9500D). Ex. 1226 at 19
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`(authenticated by Ms. Gregory in a declaration attached as Ex. 1231), see also 7,
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`16, 47, 85, 106, 108. Accordingly, the accused Overland system is identical to the
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`Bergsten-Hirai combination in that the mapping is between remote storage devices
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`and an FC adapter card port or channel, which is in turn connected to a single host
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`device. Pet. at 46-47; Ex. 1010 at ¶ 247. By making this allegation of
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`infringement, Patent Owner has joined its expert Dr. Levy in conceding that
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`mapping to a fibre channel port or channel is sufficient to meet the mapping
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`limitation at least where each port or channel is connected to a single host device.
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`15
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`
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`B. Hirai Does Not Teach that the Access Controls Are at the Network
`File System Level
`
`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 14-18. 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 47-48. Moreover, “execute” would
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`be 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
`Patent Owner’s arguments as to the Bergsten-Hirai combination are similar
`
`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 the file level instead of the block-level ignores that the
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`16
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`
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`combined system applies the access controls in the context of Bergsten, which
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`involves low-level virtualized mapping. Resp. at 16-19, 14-20; Pet. at 32-33, 47-
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`48. The petition explains that, to the extent Bergsten fails to describe the
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`privileges associated with write-protecting data, Hirai’s access control may be
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`incorporated into Bergsten’s storage controller (which operates at the block level,
`
`not the file level). Pet. at 47-48. Like the Kikuchi-Bergsten combination, Dr. Levy
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`does not assert that the Bergsten-Hirai combination that was actually proposed in
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`the petition (and by Dr. Chase) would have required anything beyond routine skill.
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`Ex. 2053 at ¶¶ 130-36; Ex. 1010 at ¶¶ 247-51. Accordingly, Patent Owner’s
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`argument that Hirai’s access controls are at the file system level is, as above, only
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`an attack on the secondary reference individually. In re Keller, 642 F.2d 413at
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`426; In re Merck & Co., 800 F.2d 1091at 1097 (attack on secondary reference
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`individually is insufficient to demonstrate nonobviousness).
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`D. Bergsten is Not Limited to Applications in which All Users are
`Given Access to All Data
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`Patent Owner’s final argument regarding Bergsten-Hirai is that a skilled
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`artisan would not consider modifying Bergsten so that access to certain data is
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`granted on a per-host basis. Patent Owner posits that this would be antithetical to
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`Bergsten’s supposedly fundamental purpose of permitting all hosts access to all
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`data. Resp. at 24-25.
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`To the contrary, Bergsten is fully compatible with access controls. The first
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`stated goal of Bergsten is “to ensure that valuable data is adequately protected
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`against loss or damage.” Ex. 1007 at 1:20-22. Bergsten next identifies, as a
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`problem solved by the systems described within, the “need for the capability to
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`store multiple back-up copies of data in geographically separate locations, while
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`still permitting quick and easy access by a host computer to any back-up copy.” Id.
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`at 1:34-37. Only after highlighting these primary goals does Bergsten state that
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`“[i]t is further desirable that such a storage controller allow multiple host
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`computers at different locations to access any copy of stored data.” Id. at 1:39-
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`42. Read in context, the objective of providing multiple host computers access to
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`all data is subordinate to Bergsten’s primary goals of data protection and high
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`availability. These primary goals are furthered by access controls that provide an
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`additional layer of data protection.
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`An artisan skilled in network storage during the relevant timeframe would
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`combine the Bergsten and Hirai teachings in the above-described manner in order
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`to provide additional levels of granularity to the block-level data access of
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`Bergsten using the mapping-based access controls of Hirai. Ex. 1010 at ¶¶ 247-51.
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`Professor Chase explained that one advantage of doing so would be that blocks of
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`host computers may be allocated varying levels of access to particular sets of data,
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`such that certain systems within a business entity could modify the data while other
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`systems within the business entity have read-only access, and further systems
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`within the business entity may be denied access altogether (e.g., due to a level of
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`sensitivity of the stored data). Id. at ¶ 249. In applying access controls at the
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`logical addressing level, as Professor Chase explained, access controls may be
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`applied uniformly throughout all of the copies of particular data within a daisy-
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`chained networking system of storage controllers, thus supporting and enhancing
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`Bergsten’s goal of “creat[ing] and manag[ing] multiple back-up copies…in a
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`manner that is both non-disruptive of, and transparent to, the host computer
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`systems and their users.” Ex. 1007 at 3:4-8; Ex. 1010 at ¶ 250; see also Pet. at 49.
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`III. The Petition Set Forth a Specific Reason to Combine the References
`Asserted Against Claim 5
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`With regard to claim 5, Patent Owner raises the additional argument that the
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`Petition did not set forth reasons to add the functionality described in the Smith
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`reference to the underlying combinations (Kikuchi-Bergsten and Bergsten-Hirai).
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`Resp. at 52-53. To the contrary, the petition explained that “one of ordinary skill
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`would 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,” citing paragraphs
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`239-40 and 342-43 of the Chase declaration. Pet. at 43, 57. Those portions of the
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`Chase declaration describe, in turn, that
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`[i]n the combined system, the emulation drivers and physical
`drivers of Bergsten, to the extent that their internal
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`configurations are not disclosed in detail, would be designed to
`incorporate the functionality of the Tachyon chip of Smith. . . .
`One of skill in the art would have understood that the internal
`architecture of the Tachyon chip would readily combine with
`the disk apparatus of Kikuchi to provide for communication
`between the FC interface (e.g., the physical drivers and
`emulation drivers) and the internal operating system of
`Kikuchi’s disk apparatus.
`Ex. 1010 at ¶¶ 239-40 (internal paragraph numbering omitted, emphasis added).
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`The Petition therefore specifically explained that the adding the Smith (Tachyon)
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`functionality would enable communication between Bergsten’s physical/emulation
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`derivers and the OS of Kikuchi’s disk apparatus. A similar explanation is set forth
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`for the addition of Smith to the Bergsten-Hirai system. Ex. 1010 at ¶¶ 342-43.
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`IV. Patent Owner Does Not Even Attempt to Establish any Nexus between
`the Alleged Secondary Considerations and the Claimed Invention
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`Any objective evidence of nonobviousness must arise from the claimed
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`features. Rambus Inc. v. Rea, 731 F.3d 1248, 1257-58 (Fed. Cir. 2013), citing
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`Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“for objective
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`evidence . . . to be accorded substantial weight, its proponent must establish a
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`nexus between the evidence and the merits of the claimed invention.”); Demaco
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`Corp.v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).
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`Objective evidence of nonobviousness must also be “reasonably commensurate
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`with the scope of the claims.” Rambus Inc. v. Rea at 1257. “In order to be
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`commensurate in scope with the claims, the commercial success must be due to
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`claimed features, and not due to unclaimed features.” Joy Technologies Inc. v.
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`Manbeck, 751 F. Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff’d,
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`959 F.2d 226, 228, 22 USPQ2d 9483, 9486 (Fed. Cir. 1992) (Features responsible
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`for commercial success were recited only in allowed dependent claims, and
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`therefore the