UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Unified Patents Inc.,
`Petitioner
`v.
`
`Data Speed Technology LLC
`Patent Owner
`
`
`
`IPR2014- _____
`
`Patent 5,867,686
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II. MANDATORY NOTICES ............................................................................. 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-in-Interest ............................................................................ 2
`
`Related Matters ...................................................................................... 4
`
`Identification of Lead and Back-Up Counsel........................................ 7
`
`Service Information ............................................................................... 7
`
`III.
`
`PAYMENT OF FEES ..................................................................................... 7
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 7
`
`A. Grounds for Standing ............................................................................ 7
`
`B.
`
`C.
`
`D.
`
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a))
`and Identification of Challenges (37 C.F.R. § 42.104(b)) .................... 8
`
`How the Construed Claims are Unpatentable under the
`Statutory Grounds identified in 37 C.F.R. § 42.104(b)(2) and
`Supporting Evidence Relied upon to Support the Challenge ................ 8
`
`Threshold Showing of Reasonable Likelihood That Petitioner
`Would Prevail With Respect To At Least One Challenged
`Claim (35 U.S.C. § 314(a)) Has Been Met ........................................... 9
`
`V.
`
`FACTUAL BACKGROUND .......................................................................... 9
`
`A. Declaration Evidence ............................................................................ 9
`
`B.
`
`C.
`
`D.
`
`The State of the Art as of 1992 ........................................................... 10
`
`The Challenged ‘686 Patent ................................................................ 12
`
`Prosecution History ............................................................................. 13
`
`VI. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(b)(3)) ............................... 15
`
`A.
`
`Support for claim construction ............................................................ 17
`
`ii
`
`

`

`VII. THE GROUNDS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING .................................... 20
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Prior Art Discloses Each Claimed Feature And One Of
`Ordinary Skill Would Be Led To Form This Combination ................ 22
`
`The Proposed Combination Renders Obvious Claim 5’s
`“Defining. . . As A Write New Chain Command” .............................. 30
`
`The Proposed Combination Discloses An Equivalent To Claim
`10’s Means For Storing Element ......................................................... 31
`
`The Prior Art Relied Upon Was Publicly Available Before
`November 9, 1992 ............................................................................... 33
`
`Claim Chart Demonstrating How The Proposed Combination
`Renders Obvious Claims 1-11 Of The ‘686 Patent ............................. 33
`
`VIII. CONCLUSION .............................................................................................. 54
`
`
`
`
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to the provisions of 35 U.S.C. §§ 311-319, Unified Patents Inc.,
`
`(“Unified” or “Petitioner”) hereby petitions the Patent Trial and Appeal Board to
`
`institute inter partes review of claims 1-11 of US Patent No. 5,867,686 to Conner
`
`et al. (“the ‘686 Patent,” Ex. 1001).
`
`In short, the ‘686 Patent is directed to a mass storage device that is shared by
`
`a number of computers. Ex. 1001, Abstract. To prevent conflict issues, the ‘686
`
`Patent describes a locking scheme. Id. The mass storage device writes its files
`
`such that the boundary location of the most recently stored data serves as the
`
`starting point for a new allocation. Ex. 1001, Cl. 2. Also, when writing data to the
`
`mass storage device, the ‘686 Patent stores “parametric data” about that data. Ex.
`
`1001, Cl. 6.
`
`The prior art relied upon herein–which was not before the Examiner–
`
`demonstrates that such features were well known before Nov. 9, 1992, one year
`
`before the ‘686 Patent’s earliest priority date. Three printed publications that
`
`describe the Amoeba system and which date back to as early as 1981 disclose and
`
`render obvious each of the ‘686 Patent’s claims. None of the ‘686 Patent’s claims
`
`recite anything more than subject matter that was both well-known and obvious to
`
`one of ordinary skill in the art at the time of the invention.
`
`
`
`1
`
`

`

`II. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Unified Patents provides the following
`
`mandatory disclosures.
`
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified Patents is
`
`the real party-in-interest, and further certifies that no other party exercised control
`
`or could exercise control over Unified Patents’ participation in this proceeding, the
`
`filing of this petition, or the conduct of any ensuing trial.
`
`Unified Patents was founded by intellectual property professionals over
`
`concerns with the increasing risk of non-practicing entities (NPEs) asserting poor
`
`quality patents against strategic technologies and industries. The founders thus
`
`created a first-of-its-kind company whose sole purpose is to deter NPE litigation
`
`by protecting technology sectors, like cloud storage, the technology against which
`
`the ‘686 Patent is being asserted. Companies in a technology sector subscribe to
`
`Unified’s technology specific deterrence, and in turn, Unified performs many
`
`NPE-deterrent activities, such as analyzing the technology sector, monitoring
`
`patent activity (including patent ownership and sales, NPE demand letters and
`
`litigation, and industry companies), conducting prior art research and invalidity
`
`analysis, providing a range of NPE advisory services to its subscribers, sometimes
`
`acquiring patents, and sometimes challenging patents at the United States Patent
`
`
`
`2
`
`

`

`and Trademark Office (USPTO). Since its founding, Unified is 100% owned by its
`
`employees; subscribers have absolutely no ownership interest.
`
`Unified has sole and absolute discretion over its decision to contest patents
`
`through the USPTO’s post-grant proceedings. Should Unified decide to challenge
`
`a patent in a post-grant proceeding, it controls every aspect of such a challenge,
`
`including controlling which patent and claims to challenge, which prior art to apply
`
`and the grounds raised in the challenge, and when to bring any challenge.
`
`Subscribers receive no prior notice of Unified’s patent challenges. After filing a
`
`post-grant proceeding, Unified retains sole and absolute discretion and control over
`
`all strategy decisions (including any decision to continue or terminate Unified’s
`
`participation). Unified is also solely responsible for paying for the preparation,
`
`filing, and prosecution of any post-grant proceeding, including any expenses
`
`associated with the proceeding.
`
`In the instant proceeding, Unified exercised its sole discretion and control in
`
`deciding to file this petition against the ‘686 patent, including paying for all fees
`
`and expenses. Unified shall exercise sole and absolute control and discretion of
`
`the continued prosecution of this proceeding (including any decision to terminate
`
`Unified’s participation) and shall bear all subsequent costs related to this
`
`proceeding. Unified is therefore the sole real-party-in-interest in this proceeding.
`
`
`
`
`
`3
`
`

`

`B. Related Matters
`
`The ‘686 Patent has been asserted in many litigations, none of which involve
`
`Unified Patents. Below, Data Speed Technology LLC is referred to as “Data
`
`Speed.” The following cases are active:
`
`
`
`
`
`1. Data Speed v. Autodesk Inc., 1-14-cv-00032 DED, filed January 14, 2014
`
`2. Data Speed v. Egnyte Inc., 1-14-cv-00033 (DED, filed Jan. 14, 2014)
`
`3. Data Speed v. Saba Software Inc., 1-14-cv-00037 (DED, filed Jan. 14, 2014)
`
`4. Data Speed v. Perforce Software Inc., 1-14-cv-00036 (DED, filed Jan. 14,
`
`2014)
`
`5. Data Speed v. Wolters Kluwer U.S. Corporation et al, 1-13-cv-01452 (DED,
`
`filed Aug. 17, 2013)
`
`6. Data Speed v. Thomson Reuters Corporation et al, 1-13-cv-01450 (DED,
`
`filed Aug. 17, 2013)
`
`7. Data Speed v. Document Logistix Ltd. et al, 1-13-cv-01448 (DED, filed
`
`Aug. 17, 2013)
`
`8. Data Speed v. VMware Inc., 1-13-cv-01451 (DED, filed Aug. 17, 2013)
`
`9. Data Speed v Toshiba America Inc., 1-13-cv-01052 (DED, filed June 10,
`
`2013)
`
`10. Data Speed v. Xerox Corporation, 1-13-cv-00624 (DED, filed Apr. 12,
`
`2013)
`
`4
`
`

`

`11. Data Speed v. EMC Corporation, 1-13-cv-00616 (DED, filed Apr. 12, 2013)
`
`12. Data Speed v. World Software Corporation, 1-13-cv-00623 (DED, filed Apr.
`
`12, 2013)
`
`13. Data Speed v. LexisNexis Group, 1-13-cv-00619 (DED, filed Apr. 12, 2013)
`
`The following cases have terminated:
`
`1. Data Speed v. Zoho Corporation, 1-13-cv-00625 (DED, filed Apr. 12, 2013)
`
`2. Data Speed v. Open Text Inc., 1-13-cv-00689 (DED, filed Apr. 16, 2013)
`
`3. Data Speed v. Alfresco Software Ltd., et al 1-13-cv-01443 (DED, filed Aug.
`
`17, 2013)
`
`4. Data Speed v. Box Inc., 1-13-cv-01444 (DED, filed Aug. 17, 2013)
`
`5. Data Speed v. Dassault Systemes SolidWorks Corp., 1-13-cv-01447 (DED,
`
`filed Aug. 17, 2013)
`
`6. Data Speed v. MindJet LLC, 1-14-cv-00035 (DED, filed Jan. 14, 2014)
`
`7. Data Speed v. Intuit Inc., 1-14-cv-00034 (DED, filed Jan. 14, 2014)
`
`8. Alfresco Software, Inc. et al v. Data Speed, 5-14-cv-00227 (CAND, filed
`
`Jan. 15, 2014)
`
`9. VMware, Inc. v. Data Speed, 5-13-cv-03823 (CAND, Aug. 19, 2013)
`
`10. Data Speed v. Fiserv Inc. et al, 1-13-cv-01449 (DED, filed Aug. 17, 2013)
`
`11. Data Speed v. Cincom Systems Inc., 1-13-cv-01446 (DED, filed Aug. 17,
`
`2013)
`
`
`
`5
`
`

`

`12. Data Speed v. Blackboard, Inc., 1-13-cv-01445 (DED, filed Aug. 17, 2013)
`
`13. Data Speed v. Adobe Systems Inc., 1-13-cv-01049 (DED, filed June 10,
`
`2013)
`
`14. Data Speed v. Canon U.S.A. Inc., 1-13-cv-01050 (DED, filed June 10, 2013)
`
`15. Data Speed v. Fujitsu America Inc., 1-13-cv-01051 (DED, filed June 10,
`
`2013)
`
`16. Data Speed v. SAP America Inc., 1-13-cv-00690 (DED, filed Apr. 16, 2013)
`
`17. Data Speed v. International Business Machines Corporation, 1-13-cv-00618
`
`(DED, filed Apr. 12, 2013)
`
`18. Data Speed v. Novell Inc., 1-13-cv-00621 (DED, filed Apr. 12, 2013)
`
`19. Data Speed v. Oracle Corporation, 1-13-cv-00622 (DED, filed Apr. 12,
`
`2013)
`
`20. Data Speed v. Cisco Systems Inc., 1-13-cv-00615 (DED, filed Apr. 12,
`
`2013)
`
`21. Data Speed v. Microsoft Corporation, 1-13-cv-00620 (DED, filed Apr. 12,
`
`2013)
`
`22. Data Speed v. Hewlett-Packard Company, 1-13-cv-00617 (DED, filed Apr.
`
`12, 2013)
`
`
`
`
`
`
`
`6
`
`

`

`C.
`
`Identification of Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
`
`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following:
`
`
`Address: Michael L. Kiklis
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketkiklis@oblon.com
`Email:
`Telephone: (703) 413-2707/(703)413-3000 (main)
`Fax:
`(703) 413-2220
`
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge the required fees as well as
`
`any additional fees that might be due to Deposit Account No. 15-0030.
`
`
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘686 patent is satisfied.
`
`A. Grounds for Standing
`
`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ‘686 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`
`
`7
`
`

`

`requesting inter partes review challenging the patent claims on the grounds
`
`identified herein.
`
`B.
`
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) and
`Identification of Challenges (37 C.F.R. § 42.104(b))
`Petitioner requests inter partes review and cancellation of claims 1-11 of the
`
`‘686 patent as being obvious under 35 U.S.C. § 103 in view of the following
`
`printed publications, each of which is prior art pursuant to 35 U.S.C. § 102(b):
`
`1. An Overview of the Amoeba Distributed Operating System, Andrew S.
`
`Tanenbaum and Sape J. Mullender, SIGOPS Operating Systems Review,
`
`Vol. 15, Issue 3, July 1981, pp. 51-64 (“Overview”)(Ex. 1002).
`
`2. The Design of a High-Performance File Server, Robbert van Renesse,
`
`Andrew S. Tanenbaum, Annita Wilschut, Proceedings of the International
`
`Conference on Distributed Computing Systems, Newport Beach, CA, June
`
`1989, pp. 22-27 (“High Performance”)(Ex. 1003).
`
`3. A Comparison of Two Distributed Systems: Amoeba and Sprite, Fred
`
`Douglis, John K. Ousterhout, M. Frans Kaashoek, Andrew S. Tanenbaum,
`
`Computing Systems, Vol. 4, No. 4, Fall 1991, pp. 353-384
`
`(“Comparison”)(Ex. 1004).
`
`C. How the Construed Claims are Unpatentable under the Statutory
`Grounds identified in 37 C.F.R. § 42.104(b)(2) and Supporting
`Evidence Relied upon to Support the Challenge
`
`
`
`8
`
`

`

`
`
`The challenged claims are to be construed as indicated in Section VI, below.
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how the challenged claims
`
`are unpatentable under the statutory grounds identified above, including the
`
`identification of where each element of the claim is found in the prior art, is
`
`provided in Section VII, below, in the form of a claim chart. Pursuant to 37 C.F.R.
`
`§ 42.104(b)(5), the appendix numbers of the supporting evidence relied upon to
`
`support the challenges and the relevance of the evidence to the challenges raised,
`
`including identifying specific portions of the evidence that support the challenges,
`
`are provided in Section VII, below, in the form of a claim chart.
`
`D.
`
`Threshold Showing of Reasonable Likelihood That Petitioner
`Would Prevail With Respect To At Least One Challenged Claim
`(35 U.S.C. § 314(a)) Has Been Met
`
`Information presented in this Petition, including the unpatentability ground
`
`detailed in Section VII, below, establishes a reasonable likelihood that Petitioner
`
`will prevail with respect to at least one of the challenged claims. See 35 U.S.C. §
`
`314(a). Indeed, that section, supported by the Hutchinson declaration (Ex. 1005)
`
`demonstrates how the challenged claims are obvious in view of the relied upon
`
`prior art.
`
`V.
`
`FACTUAL BACKGROUND
`
`A. Declaration Evidence
`
`9
`
`
`
`
`
`

`

`This Petition is supported by the declaration of Professor Norman
`
`Hutchinson, Ph.D. from the University of British Columbia (attached as Ex. 1005).
`
`Dr. Hutchinson offers his opinion with respect to the skill level of one of ordinary
`
`skill in the art (Ex. 1005, ¶¶ 27, 28, and 31), the content and state of the prior art
`
`(Ex. 1005, ¶¶ 29-31), claim construction (Ex. 1005, ¶¶ 14-23), the teachings and
`
`suggestions that one of ordinary skill would understand based on Exs. 1002-1004
`
`(Ex. 1005, pps. 18-54), the reasons for combining the teachings from Exs. 1002-
`
`1004 (Ex, 1005, ¶¶ 35-45), and the manner in which one of ordinary skill would
`
`combine those teachings (Ex. 1005, pps. 18-54). Dr. Hutchinson is an Associate
`
`Professor of Computer Science at the University of British Columbia. He has over
`
`twenty-five years of experience in distributed systems and has written and lectured
`
`extensively on this topic. See Ex. 1005.
`
`This petition is also supported by a declaration from Ms. Jodi Gregory. Ms.
`
`Gregory authenticates Exs. 1002-1004 and testifies that such exhibits were publicly
`
`available before November 9, 1992, one year before the earliest priority date of the
`
`‘686 Patent. See Ex. 1006.
`
`The State of the Art as of 1992
`B.
`
`
`As Dr. Hutchinson explains, the elements of the ‘686 Patent claims were
`
`well known to those of ordinary skill in the art in the area of networked or
`
`distributed file systems more than one year before the earliest priority date of the
`
`
`
`10
`
`

`

`‘686 Patent. By the late 1980s and early 1990s, networks of individual computers
`
`had become pervasive. Many systems were designed and deployed to take
`
`advantage of the trend towards cheaper and more powerful computers that could be
`
`connected to a communication network. Examples include LOCUS at UCLA and
`
`Cedar at XEROX PARC in the early 1980s, the Network File System (NFS)
`
`developed by Sun, the Andrew File System (AFS) developed at CMU, the Sprite
`
`networked operating system developed at UC Berkeley, the Amoeba distributed
`
`operating system developed at the Vrije University in the Netherlands, and many
`
`others. Exs. 1002-1004; Ex. 1005, ¶ 29.
`
`Dr. Hutchinson further explains that these networked and distributed
`
`systems included a number of common features. Each computer in the system ran
`
`an independent copy of the operating system and participated with the other
`
`computers in the system via a collection of network protocols. All of the systems
`
`included a network file server, which could be accessed via the network to which
`
`all the computers were connected. These network file servers provided the ability
`
`for individual client computers to share data with other computers by reading and
`
`writing files from the network file server. Each individual system defined its own
`
`protocol for synchronizing two clients that attempted to perform conflicting
`
`operations at the same time. Ex. 1005, ¶ 30.
`
`
`
`11
`
`

`

`Dr. Hutchinson therefore concludes that information storage systems
`
`accessible via a communication network by a collection of client computers were
`
`well known at the time of the ‘686 Patent. Some of these file servers had protocols
`
`to prevent concurrent write access to shared data (e.g., LOCUS, Andrew,
`
`Amoeba), some did not (e.g., Sun’s NFS, Sprite). Some required the length of a
`
`newly created file to be specified by the creator (e.g., Amoeba), some did not (e.g.,
`
`Sun’s NFS, Andrew). Some supported replication of the stored data to increase its
`
`tolerance to faults (e.g., Amoeba, Andrew), some did not (e.g., Sun’s NFS, Sprite).
`
`Ex. 1005, ¶ 31.
`
`The design space for networked information storage systems was well
`
`understood at the time of the ‘686 Patent, and thus, Dr. Hutchinson states that it
`
`was well within the skill level of one of ordinary skill in the art to mix and match
`
`these various file system features to accomplish a particular design goal or to
`
`accommodate a particular environment. Ex. 1005, ¶ 31. One of ordinary skill was
`
`well aware of the design and implementation of distributed file systems, locking
`
`and unlocking of mass storage devices, and commands to read and write to the
`
`mass storage device. Ex. 1005, ¶ 27. In fact, one of ordinary skill had reference
`
`implementations of distributed file systems, including Amoeba, at his or her
`
`disposal. Ex. 1005, ¶ 50.
`
`C.
`
`The Challenged ‘686 Patent
`
`
`
`12
`
`

`

`The ‘686 Patent is directed to a storage device that is shared among a
`
`number of computers (or hosts). Each of the computers may independently read
`
`and write data to the storage device. The system therefore uses a locking
`
`mechanism to prevent conflict issues from arising. Ex. 1001, abstract, 3:14-30; Ex.
`
`1005, at ¶ 12.
`
`The storage device stores data by using the end of a previous allocation as
`
`the starting point for the following allocation. Ex. 1001, 3:33-37, 20:14-40, Cl. 2;
`
`Ex 1005 at ¶ 13. In addition to the data that the storage device stores, the storage
`
`device may store additional data (“parametric data”) in a separate area of memory,
`
`known as the key space, that somehow relates to the stored data. Ex. 1001, Cls. 6,
`
`7, and 9. Although recited in the claims, the term “parametric data” is not found in
`
`the specification.
`
`D.
`
`Prosecution History
`
`The original application was filed with a single independent claim:
`
`
`
`
`
`13
`
`

`

`Ex. 1007, at 2. The Examiner applied three references against this claim,
`
`each of which was argued by the applicant as applying to only a single computer
`
`(or host) rather than multiple computers:
`
`
`
`
`
`Ex. 1007, at 16-17. The Examiner maintained his rejection, and thus, the applicant
`
`filed a file wrapper continuation in which the applicant proposed a set of claims
`
`that attempted to more clearly require the use of multiple computers.
`
`
`
`14
`
`

`

`
`
`
`
`Ex. 1007, at 21-22. Of the newly submitted claims, the Examiner allowed
`
`those requiring “on-the-fly allocation, together with the other limitations of the
`
`claims” (e.g., claims 1 and 10), those requiring the “write new chain command”
`
`(claim 5), and those requiring “parametric data” (e.g., claim 6). Ex. 1007, at 31-32.
`
`Had the Examiner known about the existence of those features in distributed
`
`systems, like the Amoeba system, there is no doubt that the Examiner would never
`
`have allowed these claims.
`
`VI. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3))
`
`The ‘686 Patent has expired, and thus the Board’s review of the claims is
`
`similar to that of a district court’s review. In re Rambus, Inc., 694 F.3d 42, 46
`
`(Fed. Cir. 2012). The principles set forth by the court in Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) should be applied since the expired claims are not
`
`
`
`15
`
`

`

`subject to amendment. Those principles include: words of a claim “are generally
`
`given their ordinary and customary meaning” as understood by a person of
`
`ordinary skill in the art in question at the time of the invention, claims must be read
`
`in view of the patent’s specification, and the patent’s prosecution history should be
`
`consulted.
`
`The Petitioner proposes a construction for several terms below, based on
`
`their ordinary and customary meaning or the special meaning provided by the ‘686
`
`Patent. The Petitioner and Dr. Hutchinson utilize the ordinary and customary
`
`meaning for all other claim terms.
`
`Claim Term
`Parametric Data (claims 6, 7, and 9)
`Reserved keys space (claims 6, 8, and
`9)
`Defining . . . as a write new chain
`command (claim 5)
`
`External bus (claim 10)
`
`Means for storing at least one byte of
`data from the requesting computer into
`the identified memory space (claim 10)
`
`Proposed construction
`Data about data
`Area for storing data
`
`A command that allocates a specified
`number of bytes in one area of the
`storage system and allocates a
`specified number of bytes in another
`area of the storage system.
`Any form of communication network
`for communicating between computer
`systems or between a computer system
`and a device outside of the computer
`system.
`Invokes 35 U.S.C. 112(6)
`Function: storing at least one byte of
`data from the requesting computer into
`the identified memory space.
`
`
`
`16
`
`

`

`Structure: software code in the
`memory of a computer that, when
`executed by the computer processor,
`performs a write command by writing
`at least one byte of data into the
`identified area of memory of the
`computer
`Data that describes other data
`
`Descriptive parameter (claim 11)
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`A. Support for claim construction
`Parametric data: Parametric data does not appear in the specification. It
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`appears only in claims 6, 7, and 9. Claim 6 recites “storing parametric data . . .
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`about the at least one data byte” and claim 7 recites “reading parametric data about
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`the at least one byte.” One of ordinary skill in the art would recognize that the
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`term “parametric” is being used in a very broad sense to indicate that the
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`parametric data somehow relates to the “at least one byte of data.” Ex. 1005, at ¶
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`15. Consequently, Dr. Hutchinson concludes that one of ordinary skill would
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`interpret this claim to mean “data about data.” Id.
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`Reserved keys space: This term is described in the specification at 8:60-9:4
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`and in association with a several commands that operate on the keys space, such as
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`the WRITE KEYS COMMAND (Ex. 1001, 19:15-19:55), WRITE NEW CHAIN
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`COMMAND (Ex. 1001, 23:18-25:5), and WRITE NEW KEYS COMMAND (Ex.
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`1001, 25:6-25:62). Ex. 1005, at ¶ 17. Although the specification states that keys
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`17
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`are normally used to sort data within a database, the specification does not require
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`the keys space to be used solely for this purpose. Ex. 1001, 25:6-62. In fact, claim
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`6 requires that parametric data is stored in the reserved keys space. Therefore, Dr.
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`Hutchinson concludes that one of ordinary skill would understand this term to
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`mean “an area for storing data.” Ex. 1005, at ¶ 17.
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`Defining . . . as a write new chain command: This term was defined by the
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`patent owner and does not have an ordinary or customary meaning. Ex. 1005, at ¶
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`18. The write new chain command is described in the ‘686 Patent at 23:18-25:5;
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`Figs. 41A and 41B, and the encoding of the command is depicted in Fig. 11.
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`According to the Specification, the write new chain command takes two
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`parameters: a “data size” parameter and a “key size” parameter (Fig. 11, 23:30-43).
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`The functionality of the write new chain command is to allocate “data size” bytes
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`of space in the data area and “key size” bytes of space in the key area of the
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`information storage device. The specific encoding of the write new data command
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`is given in Fig. 11, with 32 bits used for the “data size” parameter and 20 bits used
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`for the “key size” parameter. Dr. Hutchinson concludes that one of ordinary skill
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`would understand that defining “a write access request” as a “write new chain
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`command” means that the write access request is limited to the functionality and
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`parameters of the “write new chain command,” but not its encoding. Ex. 1005, at ¶
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`18. Specifically, this term should be construed as a command that allocates a
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`18
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`specified number of bytes in one area of the storage system and allocates a
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`specified number of bytes in another area of the storage system. Id.
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`External Bus: The term “external bus” does not appear in the ‘686 Patent’s
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`specification, only the claims. Dr. Hutchinson states that one of ordinary skill
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`understands that a “bus” in a computer system refers to an internal communication
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`network through which devices communicate with each other within a computer
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`system. Ex. 1005, at ¶ 19. The addition of the qualifier “external” requires that the
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`bus is used to communicate between a computer system and a device that is
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`external to the computer system. Per Dr. Hutchinson, one of ordinary skill would
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`view this as including any form of communication network for communicating
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`between computer systems or between a computer system and a device outside of
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`the computer system. Id. This includes computer networks as found in the
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`networked and distributed computer systems as of the time of the patent. Id.
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`Means for storing: This element is a means-plus-function element and
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`subject to construction under 35 U.S.C. § 112(6). The specification describes that
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`the specified function–“storing at least one byte of data from the requesting
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`computer into the identified memory space”– is performed by the WRITE
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`MODIFY UNLOCK command (Ex. 1001, at 17:46-18:42), the WRITE DATA
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`command (Ex. 1001, at 18:45-19:14), and the WRITE ANY command (Ex. 1001,
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`at 21:60-22:31). Ex. 1005, at ¶ 21-22. Based on the functionality of these
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`19
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`commands, Dr. Hutchinson concludes that one of ordinary skill would understand
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`that the structure that corresponds to the claimed function is software code in the
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`memory of a computer that, when executed by the computer processor, performs a
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`write command by writing at least one byte of data into the identified area of
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`memory of the computer. Ex. 1005, ¶ 22.
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`Dr. Hutchinson explains that the “means for storing” claim element performs
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`the claimed function in the following way: by receiving three parameters–the
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`starting address, the length of the data to write and the data itself–and by writing
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`the data at the starting address. Id. The length of the data is expressed as two
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`fields: a “size” field that describes the size of each record to store and a “how
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`many” field that specifies how many records, each of the given size, should be
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`stored. Id. The length of the data is therefore calculated by multiplying the “size”
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`field by the “how many” field. Id. The result of the means for storing claim
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`element is that data is stored into the memory space. Id.
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`Descriptive parameter: The word “descriptive” appears only in claim 11 and
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`not in the specification. Dr. Hutchinson explains that the ordinary and customary
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`meaning of this term, as understood by one of ordinary skill in the art, is that the
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`descriptive parameter refers to data that describes other data. Ex. 1005, ¶ 23.
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`VII. THE GROUNDS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING
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`
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`20
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`Exs. 1002, 1003, and 1004 describe various features of the Amoeba system
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`that, when combined as one of ordinary skill would do, disclose every element of
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`the ‘686 Patent claims. Amoeba is a capability-based distributed operating system
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`designed on a micro-kernel foundation. Amoeba’s development started in 1980 at
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`the Vrije University in the Netherlands under the direction of Andrew S.
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`Tanenbaum. The goal of the project was to understand how a large number of
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`processors could be merged into a coherent system for distributed and parallel
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`computation. A number of file systems were developed for Amoeba over its
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`lifetime, starting from a simple Flat File Server, and ending with the Bullet File
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`Server in Amoeba version 5.0. These file systems included a number of features
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`found in the ‘686 Patent. See Ex. 1002, pp. 51-55, 59-61; Ex. 1003, pp. 22-26; Ex.
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`1004, pp. 361-370; Ex. 1005, ¶ 32.
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`The first file server for Amoeba was known as the Flat File Server. It was
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`originally implemented as a student programming project and provides a basic file
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`service programming interface. In addition to the normal operations to create,
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`delete, read and write files, it also includes the capability of locking a file so that
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`no other user can access the file for the duration of the existence of the lock, and
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`storing a limited amount of extra information along with the data stored in files.
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`See Ex. 1002, pp. 59-61; Ex. 1005, ¶ 33.
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`21
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`Later in the lifetime of the Amoeba project, another version of the file server
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`evolved. This file server is known as the Bullet File Server, emphasizing one of its
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`design goals: to achieve as high performance as is possible, given the constraints
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`of the technology of the time. The Bullet File Server supports the normal
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`operations to create, destroy, read and write files. Several design decisions were
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`made by the designers of the Bullet File Server to achieve high performance. The
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`first of these is to typically only allow files to be modified during the initial period
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`of their existence; once a file has been “committed,” it can no longer be modified
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`by any process, including its creator. The second design decision is that files will
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`be stored contiguously on disk and in memory. See Ex. 1003, pp. 22-27; Ex. 1004,
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`pp. 366-370; Ex. 1005, ¶ 34.
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`A.
`
`The Prior Art Discloses Each Claimed Feature And One Of
`Ordinary Skill Would Be Led To Form This Combination
`
`Dr. Hutchinson uses three published references describing the Amoeba
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`system in his analysis to demonstrate that the ‘686 Patent claims would be
`
`considered obvious to one of ordinary skill in the art as of the earliest priority date
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`of the ‘686 Patent. He also provides a number of reasons why one of ordinary skill
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`would combine the three references in the manner that he proposes in his claim
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`chart. Importantly, all three publications describe the same system, the Amoeba
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`system, over the first decade of its lifetime from 1981 through 1991. Anyone
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`22
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`investigating information storage systems connected to multiple computers who
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`was aware of the Amoeba system would have been aware of the multiple research
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`