UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`NETAPP, INC. AND HEWLETT PACKARD ENTERPRISE CO.,
`Petitioners,
`v.
`KOM SOFTWARE, INC.,
`Patent Owner.
`
`___________________________________
`Case: IPR2019-00604
`US Patent No. 7,536,524 B2
`Title: Method and system for providing restricted access to a storage medium
`___________________________________
`DECLARATION OF DR. JOSE LUIS MELENDEZ IN SUPPORT OF
`PATENT OWNER RESPONSE RELATED TO INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,536,524
`___________________________________
`
`Petitioners – Netapp, Inc. and Hewlett Packard Enterprise Co.
`Patent Owner – KOM Software, Inc.
`IPR2019-00604
`
`IPR2019-00604
`KOM - EXHIBIT 2001
`
`1 of 53
`
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`NETAPP, INC. AND HEWLETT PACKARD ENTERPRISE CO.,
`Petitioners,
`v.
`KOM SOFTWARE, INC.,
`Patent Owner.
`
`___________________________________
`Case: IPR2019-00604
`US Patent No. 7,536,524 B2
`Title: Method and system for providing restricted access to a storage medium
`___________________________________
`DECLARATION OF DR. JOSE LUIS MELENDEZ IN SUPPORT OF
`PATENT OWNER RESPONSE RELATED TO INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,536,524
`___________________________________
`
`Petitioners – Netapp, Inc. and Hewlett Packard Enterprise Co.
`Patent Owner – KOM Software, Inc.
`IPR2019-00604
`
`IPR2019-00604
`KOM - EXHIBIT 2001
`
`1 of 53
`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`SUMMARY OF OPINIONS AND PRIOR ART ........................................... 3
`II.
`III. QUALIFICATIONS AND EXPERIENCE ...................................................10
`A.
`EDUCATION AND WORK EXPERIENCE .....................................10
`B.
`COMPENSATION STATEMENT .....................................................13
`C.
`INFORMATION CONSIDERED IN FORMING OPINION ............14
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES .................................................................................................14
`A.
`CLAIM CONSTRUCTION PRINCIPLES ........................................14
`B.
`ANTICIPATION .................................................................................15
`C.
`OBVIOUSNESS .................................................................................15
`PERSON OF ORDINARY SKILL IN THE ART ........................................16
`V.
`VI. THE ‘524 PATENT .......................................................................................17
`A. OVERVIEW OF THE ‘524 PATENT ................................................17
`B.
`CLAIM CONSTRUCTION ................................................................20
`VII. PATENTABILITY OF CLAIMS 1-4, 9, 11, 18-19, 24, AND 29-31 OF
`THE ‘524 PATENT OVER VOSSEN ..........................................................20
`A.
`“APPLYING AN OPERATION ACCESS PRIVILEGE” .................20
`B.
`“ASSOCIATING AN ACCESS PRIVILEGE WITH AT LEAST A
`PORTION OF THE STORAGE MEDIUM” ......................................23
`VIII. PATENTABILITY OF CLAIMS 1-4, 9, 11, 18-19, 24, AND 29-31 OF
`THE ‘524 PATENT OVER NAGAR ............................................................29
`A.
`“APPLYING AN OPERATION ACCESS PRIVILEGE” .................29
`
`
`
`i
`
`2 of 53
`
`
`
`
`
`B.
`
`“ASSOCIATING AN ACCESS PRIVILEGE WITH AT LEAST A
`PORTION OF THE STORAGE MEDIUM” ......................................32
`IX. PATENTABILITY OF CLAIM 24 OF THE ‘524 PATENT OVER
`VOSSEN & KUNG, AND NAGAR & KUNG ............................................37
`A.
`“FORCING A SECURE ERASURE…WHEREIN SECURE
`ERASURE COMPRISES OVERWRITING THE CONTENTS” .....37
`
`
`
`
`
`
`ii
`
`3 of 53
`
`
`
`I.
`
`INTRODUCTION
`1. My name is Dr. Jose Luis Melendez. I am an independent expert at least
`
`in the fields of imaging, computing, and communications technologies. I also serve
`
`as Professor of Computer Science and Engineering, as well as Special Assistant to
`
`the Chancellor, at the University of Puerto Rico, in Mayagüez, Puerto Rico, where I
`
`reside. I have been asked to and have conducted a review of Windows NT File System
`
`Internals, A Developer’s Guide, Rajeev Nagar, 1997 (“Nagar”), U.S. Pat. 6,026,402
`
`(“Vossen”), Cryptography and Data Security, Dorothy Elizabeth Robling Denning,
`
`1982 (“Denning”), US 2005/0097260 A1 (“McGovern”), and U.S. Pat. 5,265,159
`
`(“Kung”), (together the “Alleged Prior Art”) to determine whether or not these
`
`publications are invalidating prior art to Patent Owner’s United States Patent
`
`No. 7,536,524 B2 (“’524 patent” or the “subject patent”). Additionally, I have
`
`reviewed the IPR2019-00604 petition submitted by Netapp, Inc. and Hewlett
`
`Packard Enterprise Co. (“Petitioner(s)”) along with its relevant exhibits, including
`
`the declaration of Dr. Jon B. Weissman (“Weissman” or “Weissman declaration”).
`
`In this report, I will address only certain aspects of the petition, Weissman
`
`declaration, and noted prior art, that I believe will be of particular benefit to the
`
`Patent Trial and Appeal Board (PTAB) in evaluating the Petition, in light of the
`
`1
`
`4 of 53
`
`
`
`
`
`record and totality of stakeholder arguments, in coming to its final decisions
`
`regarding the ‘524 patent.
`
`2.
`
`During the prosecution of the ‘524 patent and prior to its acceptance
`
`and publication, several references were cited as prior art as being relevant to the
`
`allowed invention. Many of these references relate to systems that generally serve
`
`to store computer data. Additionally, the ‘524 patent itself makes special reference
`
`to the, “popular operating system,” Windows NT® as prior art. (‘524 patent at 1:41-
`
`44). As such, it is apparent that the ‘524 patent disclosures would have relied upon
`
`a person of ordinary skill in the art to be familiar with Windows NT and especially
`
`with particulars such as Windows NT filter drivers described in related developer’s
`
`guides such as Nagar. Yet Windows NT, including Nagar, does not disclose or
`
`suggest the subject claims of the ‘524 patent, which provide for novel, non-obvious
`
`improvements over the prior art including Windows NT.
`
`3. My report highlights certain aspects of how the ‘524 patent invention
`
`differs from the Alleged Prior Art in view of the arguments presented in the
`
`IPR2019-00604 Petition, the Weissman declaration, and in light of the ‘524 patent
`
`itself. My report is intended as a supplement to arguments put forward in the KOM
`
`Software, Inc. (“KOM”, “KOM Software”, or “Patent Owner”) Patent Owner
`
`Response to which it is appended.
`
`
`
`2
`
`5 of 53
`
`
`
`
`
`4.
`
`This declaration and rebuttal is based on the information presently
`
`available to me. Should additional information become available, I reserve the right
`
`to supplement my opinion based upon information that may subsequently become
`
`available which may include a review of information that may be produced, or from
`
`testimony or depositions that are subsequently taken.
`
`II.
`
`SUMMARY OF OPINIONS AND PRIOR ART
`I understand that the instituted review has been authorized as to
`5.
`
`challenges under 35 U.S.C. § 102 (“anticipation”) as to ‘524 Patent Claim 1 only,
`
`and under 35 U.S.C. § 103 (“obviousness”) as to ‘524 Patent Claims 1-4, 9, 11, 18-
`
`19, 24, and 29-31.
`
`6.
`
`None of the Alleged Prior Art contain disclosures (enabling or
`
`otherwise) with respect to required limitations of all challenged claims as noted
`
`specifically herein, nor would such have been obvious to a person of ordinary skill
`
`in the art (POSITA) in view of the proposed combinations.
`
`7.
`
`The claims of the ‘524 patent are directed to technical issues or needs
`
`that were not well recognized nor understood, and technical solutions that were not
`
`well developed to address the technical issues or needs, at the time of the priority
`
`date of the ‘524 patent.
`
`8.
`
`It is my opinion that Claims 1-4, 9, 11, 18-19, 24, and 29-31 of the ‘524
`
`patent recite distinct features that were not published and not otherwise publicly
`
`
`
`3
`
`6 of 53
`
`
`
`
`
`known before the priority date of the ‘524 patent and would not be rendered obvious
`
`by the prior art cited in the IPR2019-00604 Petition.
`
`9.
`
`Nagar is not an invention. (Nagar Generally). Instead, Nagar merely
`
`provides known details and tips for developers regarding the popular Windows NT
`
`operating system referenced by the ‘524 patent itself. (‘524 patent at 1:41-44). Nagar
`
`is intended, “as a reference in understanding how the various Windows NT file
`
`systems process user requests for file I/O.” (Nagar at p. 16). As a relevant example,
`
`Nagar discusses known Windows NT filter drivers. (Nagar at p. 51). Nagar explains
`
`that, “[a] filter driver is an intermediate driver that intercepts requests targeted to
`
`some existing software module (e.g., the file system or a disk driver).” (Id.). As
`
`would have been known by a person of ordinary skill in the art, a Windows NT filter
`
`driver is typically a specialized driver intended to work in combination with other
`
`existing drivers, above or below the file system. (Nagar at p. 52).
`
`10. Nagar furthermore explains:
`
`Once you have inserted your filter driver at an appropriate place in the
`driver hierarchy, you can intercept I/O requests from the user, perform
`your magic, and then forward the request to the existing module (either
`the file system or the disk driver) so that they can continue to provide
`functionality, such as managing the mounted logical volume or
`transferring data to or from the physical disks. (Nagar at p. 53).
`
`It is relatively easy to insert a filter driver into the existing driver
`hierarchy in either of these two places, without having to redesign all
`other existing Windows NT file system, disk, other intermediate drivers,
`
`
`
`4
`
`7 of 53
`
`
`
`
`
`because all drivers in the I/O subsystem must conform to a well-defined,
`layered driver interface. (Id.).
`
`
`
`11. Thus, Nagar merely describes intercepting user requests with filter
`
`drivers within the known Windows NT operating system layered interface
`
`architecture, even refering to what may be done with that as, “magic" (Nagar at pp.
`
`52-53). Nagar makes clear that the, “filter driver is the kernel-mode driver that you
`
`design and implement,” and not something included with Windows NT. (Nagar at
`
`p. 501). Notably, the ‘524 patent prior art discussion also explicitly mentions these
`
`same driver layers in regards to Windows NT:
`
`The NT IO Manager's layered approach also insulates most NT drivers
`from having to know anything about the following: whether an IO
`request originated in any particular protected subsystem, such as
`Win32 or POSIX; whether a given protected subsystem has particular
`kinds of-user-mode drivers; and, the form of any protected subsystem's
`IO model and interface to drivers. (‘524 patent at 7:4-10).
`
`12.
`
`Importantly, Windows NT did not comprise, nor does Nagar disclose
`
`nor render obvious, associating an operating access privilege with a storage medium.
`
`(Nagar at pp. 50-54). Such would necessarily require access privileges of the storage
`
`medium rather than of user identity. In Nagar, data relating to access privileges of
`
`the storage medium are not used to change or limit requests provided to the file
`
`system layer, nor would such have been obvious. Contrast Nagar to the ‘524 patent
`
`wherein the, “storage medium has stored thereon data relating to access privileges
`
`
`
`5
`
`8 of 53
`
`
`
`
`
`for the storage medium,” and, the “data relating to access privileges for the storage
`
`medium are used to limit those requests provided to the file system layer.” (‘524
`
`patent at 11:60-12:7).
`
`13. Vossen is directed towards limiting the ability of executing processes
`
`associated with application programs and running within a computer, from accessing
`
`portions of storage that the process is not authorized to access, understood as being
`
`manifested in the allowance of access by executing processes to only certain portions
`
`of a logical storage. (Vossen at Abstract, 1:5-8, 1:11-14, 1:63-67, 2:3-6, 2:65-3:1,
`
`and All Claims). In this way, Vossen attempts to provide an important benefit of
`
`preventing unauthorized programs and their associated operating processes from
`
`accessing file data within those certain portions restricted for use by only authorized
`
`programs and their executing processes. (Id.). Vossen’s solution and corresponding
`
`architecture is user and process centric, thus affording processes and their
`
`corresponding programs the security of knowing that unauthorized processes will
`
`not otherwise access or manipulate “their” files:
`
`The operating system traverses the indicated file system nodes to locate the
`file, then determines whether to provide access to the file by evaluating the
`credentials associated with the requesting process together with the security
`descriptor associated with the file. The security descriptor contains attributes
`describing which users or pseudo-users are permitted to access the file, and
`in what ways (obtain file contents, modify contents, or both). (Vossen at 3:63-
`4:4, emphasis added).
`
`
`
`
`6
`
`9 of 53
`
`
`
`
`
`14. Hence, Vossen depends upon restricting, “a process or process
`
`hierarchy to a subset of a host’s file system.” (Vossen at Title – see Certificate of
`
`Correction). This is fundamental to Vossen. (Vossen Generally). Vossen’s access
`
`credentials are for use by the requesting processes, and Vossen’s security descriptors
`
`assign access permissions to users, and thus apply regardless of any operation access
`
`privilege to a storage medium. (Vossen at 3:63-4:4 and Generally).
`
`15. Denning is a textbook directed to cryptography and data security.
`
`(Denning Generally).
`
`16. McGovern is directed to a system and method for providing retention
`
`dates in a storage system, specifically within a Write Once Read Many storage
`
`medium. (McGovern Generally).
`
`17. Kung is directed to a method for encrypting data for deletion so that
`
`while the deleted data is not actually erased, it is unrecoverable without access to the
`
`encryption key useful for its decryption. (Kung at 2:35-39, 3:40-45, 4:3-7, and sole
`
`Figure). Note that while the Kung key for decryption may be destroyed, the data
`
`content is not overwritten and thus remains on the storage medium after the deletion.
`
`Kung teaches that the data content is not overwritten, but instead is merely
`
`unreadable. (Id.). Kung writes:
`
`In the one way mode 17, the data in the file 20 is encrypted using a random
`external key 21, and then the key 21 is automatically destroyed 19 and cannot
`
`
`
`7
`
`10 of 53
`
`
`
`
`
`be used to recover the data. Consequently without the key 21, the data cannot
`be decrypted and is thus unreadable by anyone. (Kung at 3:40-45).
`
`
`
`18. Despite Kung’s use of the word, “erase”, Kung only teaches deletion
`
`without erasure comprising overwriting of the data content, because the content in
`
`Kung is encrypted yet retained within the storage medium. (Kung at 1:62-67). An
`
`efficient conventional deletion does not involve actual erasure (overwriting the
`
`content) of the data, but instead removes the pointer to the data. (Kung at 1:11-17).
`
`In this case, the data is not erased, but cannot be directly recovered because the
`
`pointer is lost. (Id.). A POSITA would understand that unrecoverable data is
`
`effectively deleted data, because it cannot be usefully accessed. Kung improves upon
`
`the conventional deletion by adding the step of encrypting the data before the pointer
`
`is removed. (Kung at 4:8-24). In this way, recovery of the data requires a two step
`
`process of re-establishing a pointer to its location and using the key for decrypting
`
`the data. (Kung at 4:3-7). Importantly, even where the key is destroyed or otherwise
`
`lost, in Kung, the data is not erased, as the contents of the data, while encrypted, are
`
`retained within the storage medium. (Kung at 3:40-45). It is considered deleted, only
`
`in that the data cannot be read by anyone, though the content still exists on the
`
`storage medium. (Id.). “Consequently without the key 21, the data cannot be
`
`decrypted and is thus unreadable by anyone.” (Kung at 3:43-45). Note that the data
`
`actually remains and is not overwritten.
`
`
`
`8
`
`11 of 53
`
`
`
`
`
`19. Kung teaches away from forcing the secure erasure of the ‘524 patent
`
`because the data in Kung is merely encrypted when deleted such that the content
`
`remains within the storage medium. (Id.). Kung teaches that such data is
`
`unrecoverable, thus teaching a POSITA that actual erasure comprising overwriting
`
`the contents of the storage medium is unnecessary. It is further instructive to review
`
`the above descriptions in light of Claim 2 and the sole Figure of Kung where the
`
`random key is destroyed at element 19:
`
`2. A method of deleting a file stored on a permanent storage medium of
`a computer system under the control of an operating system, said
`operating system identifying the location of said file by means of a file
`directory pointer, said method comprising the steps of:
`selecting a stored file for deletion;
`encrypting the stored file using a random key;
`destroying the random key; and
`deleting a file director pointer to the stored file.
`
`
`
`
`
`
`
`Sole Figure (Kung)
`
`9
`
`12 of 53
`
`
`
`
`
`20.
`
`In my opinion, none of the Alleged Prior Art anticipate nor render
`
`obvious any challenged claim of the ‘524 patent. A POSITA would not reasonably
`
`arrive at the claimed invention of the ‘524 patent in view of any combinations of the
`
`noted Alleged Prior Art. Herein I provide a multitude of detailed reasons as to why
`
`the claims are not invalid in light of the combined art, and also rebut allegations
`
`made by Petitioners and Dr. Weissman (Petitioners’ Expert) to the contrary.
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. EDUCATION AND WORK EXPERIENCE
`I am Professor of Computer Science and Engineering, and also Special
`21.
`
`Assistant to the Chancellor, at the University of Puerto Rico at Mayagüez. My
`
`responsibilities include developing and teaching specialized courses and seminars,
`
`serving on graduate committees including PhD programs, defining and conducting
`
`research including students related generally to Computer Science, and supporting
`
`university relationships with industry.
`
`22.
`
`I hold a Doctor of Philosophy in Electrical Engineering from Stanford
`
`University (awarded January 6, 1994) with a Grade Point Average of 4.0/4.0. I have
`
`a Bachelor of Science in Electrical Engineering from the Massachusetts Institute of
`
`Technology (awarded June 4, 1990) and graduated with a Grade Point Average of
`
`5.0/5.0. I also obtained a Master of Science in Electrical Engineering and Computer
`
`
`
`10
`
`13 of 53
`
`
`
`
`
`Science from the Massachusetts Institute of Technology (awarded February 20,
`
`1991) with a Grade Point Average of 4.8/5.0.
`
`23. My doctoral thesis involved the definition, solution and validation of a
`
`stiffly coupled differential equation model for the formation of high performance
`
`imaging systems. In performance of my doctoral thesis I developed novel
`
`algorithms for the solution of the complex equations and implemented those
`
`algorithms in computer code. I verified the models and algorithms through
`
`experimentation including constructing and characterizing the sensing portions of
`
`electronic imaging devices.
`
`24.
`
`I am co-inventor of patented technology related to the formation and
`
`maintenance of high data rate wireless data links. Devices exhibiting 100 Mb/sec
`
`data rates utilizing the high data rate wireless technology were demonstrated
`
`publicly in 2001, and included real time, live transmission of a feature length film.
`
`25. While at Texas Instruments, I managed the wireless infrastructure
`
`business that designed, tested, and marketed semiconductor components for use in
`
`infrastructure applications such as cellular networks. The business group I managed
`
`designed, developed and sold some of the very first radio components tested in
`
`emerging (at the time) generations of cellular systems first capable of transmitting
`
`high speed, high quality images as data by way of digital transmissions (Multimedia
`
`Messaging Service – MMS) over mobile networks.
`
`
`
`11
`
`14 of 53
`
`
`
`
`
`26.
`
`In 2002, I founded Commoca, Inc. (“Commoca”). Commoca
`
`developed hardware, embedded software (or “firmware”), and network services for
`
`the deployment of converged voice and data services over wired and wireless
`
`communications networks. Commoca devices utilized IEEE 802.11 (“WiFi” or
`
`“Wi-Fi”) technology to connect touch screen telephones to access points and were
`
`believed to have been amongst the first of such devices to do so. Converged
`
`communications devices provided by Commoca were field tested by BellSouth
`
`Corporation at consumer locations in Florida and Georgia in 2006. My company
`
`received grants from the National Science Foundation to develop the state-of-the-art
`
`Transactional Applications Delivery System (TADS) over the internet.
`
`27.
`
`In 2008, while working as a research consultant for the University of
`
`Texas Southwestern Medical in Dallas (UTSW), I co-invented a novel multi-
`
`wavelength imaging system (US 8,838,211) and worked to develop and produce a
`
`product through a university spinoff company which I led. In early 2013, following
`
`successful clinical studies, the resulting system was cleared by the US Food & Drug
`
`Administration for use in the United States. The system captured and analyzed high
`
`resolution, uncompressed images and subsequently created pulsatility maps
`
`representative of the underlying physiology for use in evaluating deep tissue
`
`wounds. Resulting images were compressed, stored, and transmitted over a variety
`
`of communications networks.
`
`
`
`12
`
`15 of 53
`
`
`
`
`
`28. As highlighted above, my professional experience and knowledge areas
`
`include communication devices, related software, and networked computing
`
`systems as are relevant to the subject matter of this report. Also as detailed in my
`
`CV in Exhibit A attached, I am an inventor of subject matter claimed in 28 U.S.
`
`Patents. Additional
`
`information concerning my background, qualifications,
`
`publications, conferences, honors, and awards are described in my CV.
`
`B. COMPENSATION STATEMENT
`I am paid for my work concerning the subject inter partes review (IPR)
`29.
`
`at a rate of $475 per hour. My compensation is not dependent upon the outcome of
`
`the subject IPR. I may also be reimbursed for travel and other expenses that I incur
`
`in the course of my work on the subject IPR. I have no personal interest in the
`
`outcome of the subject IPR. I have been deposed previously as an expert involving
`
`infringement and validity of computing system patents. Prior to this writing, I have
`
`never testified at a patent trial.
`
`30. The opinions I express in this report are based on my own personal
`
`knowledge and professional judgment. If called as a witness during the proceedings
`
`in the subject IPR, I am prepared to testify competently about my opinions.
`
`
`
`
`
`
`
`13
`
`16 of 53
`
`
`
`
`
`C. INFORMATION CONSIDERED IN FORMING OPINION
`31. The documents which I considered for the opinions expressed in this
`
`declaration are documents identified in this declaration, including the Petition for
`
`inter partes review of U.S. Pat. No. 7,536,524 (including exhibits), the Decision of
`
`Institution for the subject IPR, the ‘524 patent, the ‘524 patent prosecution history
`
`(or at least parts thereof), the Alleged Prior Art, and Patent Owner’s Responses. I
`
`have also relied on my own experiences and expert knowledge in the relevant
`
`technologies and systems that were in use (or were not in use) at the time of the
`
`invention.
`
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES
`A. CLAIM CONSTRUCTION PRINCIPLES
`I understand that a claim in an inter partes review proceeding filed on
`32.
`
`or after November 13, 2018 is interpreted using the same claim construction standard
`
`that would be used to construe the claim in a civil action.
`
`33.
`
`I understand that claim terms are to be given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the art in the
`
`context of the entire patent disclosure. I understand that the inventor may rebut that
`
`presumption by providing a definition of the term in the specification with
`
`reasonable clarity, deliberateness, and precision; and that a claim term is to be
`
`interpreted using its ordinary and customary meaning to a person of ordinary skill in
`
`
`
`14
`
`17 of 53
`
`
`
`
`
`the art in the absence of a specialized definition. As such, I further understand that
`
`the customary meaning applies unless the specification reveals a special definition
`
`given to the claim term by the patentee, in which case the inventor’s lexicography
`
`governs.
`
`B. ANTICIPATION
`I understand that for a patent claim to be valid, it must be novel under
`34.
`
`35 U.S.C. §102. I also understand that the version of 35 U.S.C. §102 in effect prior
`
`to the American Invents Act is applicable for this IPR. I understand that if each and
`
`every limitation of a claim is disclosed in a single prior art reference then the claimed
`
`invention is anticipated. I further understand that it is the Petitioners’ burden to show
`
`that each and every element is described or embodied in the single prior art reference
`
`in order to establish anticipation. I also understand that a prior art reference must be
`
`enabling in order to anticipate a claim.
`
`C. OBVIOUSNESS
`I understand that for a patent claim to be valid it must be non-obvious
`35.
`
`under 35 U.S.C. §103. I further understand that where any single prior art reference
`
`discloses less than each and every limitation of a patent claim it is being used against,
`
`that patent claim is only invalid under 35 U.S.C. §103 if the differences between the
`
`claimed subject matter and that single prior art reference are such that the claimed
`
`subject matter as a whole would have been obvious at the time that the invention
`
`
`
`15
`
`18 of 53
`
`
`
`
`
`was made to a person having ordinary skill in the relevant art. Typically obviousness
`
`is shown using a combination of two or more prior art references that disclose all the
`
`limitations of the claimed invention.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`It is my understanding that the claims and specification of a patent must
`36.
`
`be read and construed as a person of ordinary skill in the art (POSITA), at the time
`
`of the priority date of the claims, would understand them.
`
`37.
`
`I further understand that the following factors may be considered in
`
`determining the level of ordinary skill in the art: (a) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (b) the
`
`sophistication of the technology in question, and the rapidity with which innovations
`
`occur in the field; (c) the educational level of active workers in the field; and (d) the
`
`educational level of the inventor.
`
`38. The relevant technologies to the ‘524 patent are those used by
`
`computing systems for file storage and manipulation, including operating systems.
`
`Dr. Weissman opines on behalf of the Petitioners that a person of ordinary skill in
`
`the art (POSITA), “would have held either a bachelor’s degree in computer
`
`engineering or computer science with two years of experience in the field of data
`
`storage management or a master’s degree in either discipline with an emphasis on
`
`data storage management.” (Weissman at ¶48; Petition at p. 9). In its Institution
`
`
`
`16
`
`19 of 53
`
`
`
`
`
`Decision, the PTAB adopted Petitioners’ articulation of the level of ordinary skill in
`
`the art. (Institution Decision at p. 6). However, the definition proposed by Petitioners
`
`is overly restrictive, beyond “ordinary”, and incorrect. It is broadly known that since
`
`the advent of computers the active practitioners within the field of computing
`
`systems for file storage and manipulation will be found to have diverse degrees and
`
`experience beyond those listed by Dr. Weissman, including, for example, electrical
`
`engineering, electronics engineering, and applied mathematics. Petitioners’ analysis
`
`within its Petition is thus based entirely upon an exclusive and incorrect definition
`
`of a person of ordinary skill in the art. In my opinion, a POSITA may have had a
`
`bachelor’s degree in electrical engineering, computer science, or equivalent with two
`
`years or more of experience in computing systems development; a master’s degree
`
`in electrical engineering, computer science, or equivalent; or comparable computing
`
`systems work experience. As an example, a person’s academic programs or
`
`comparable computing systems work experience that emphasized “operating
`
`systems”, would be just as appropriate as one that emphasized, “data storage
`
`management,” in regards to a person of ordinary skill relating to the subject patent.
`
`VI. THE ‘524 PATENT
`A. OVERVIEW OF THE ‘524 PATENT
`39. The ‘524 patent is directed to particular systems and methods of
`
`applying operation access privileges associated with at least a portion of a storage
`
`
`
`17
`
`20 of 53
`
`
`
`
`
`medium, where attempted operations on the portion are allowed or denied based on
`
`comparisons informed by the mounted storage medium. Note that the, “intercepting
`
`occurs regardless of an identity of a user attempting,” the operation. (‘524 patent at
`
`All Challenged Claims). The ‘524 patent notes in its Fig. 6 the function, “READ
`
`DATA ON STORAGE MEDIUM TO DETERMINE ACCESS RESTRICTIONS,”
`
`when a storage medium is mounted (“MOUNT STORAGE MEDIUM”). (‘524
`
`patent Fig. 6, emphasis added). Thus the ‘524 patent teaches that the operation access
`
`privileges are associated with the mounted storage medium, and not with the
`
`computer’s programs and executing processes. (Id.). The ‘524 patent explains:
`
`Also upon mounting the storage medium, the data relating to access privileges
`for the storage medium are loaded into the trap layer. The trap layer limits
`operations performed on the storage medium to those supported by the
`read/write device by limiting the requests passed onto the file system layer or,
`when the trap layer forms part of the file system layer, by filtering and/or
`modifying the requests. The data relating to access privileges for the storage
`medium are used to limit those requests provided to the file system layer. (‘524
`patent at 11:62-12:7, emphasis added).
`
`40. A simplified block diagram of a system exemplary of the invention is
`
`shown in Fig. 4 of the ‘524 patent and reproduced herein below.
`
`
`
`18
`
`21 of 53
`
`
`
`
`
`
`
`‘524 patent Fig. 4
`“Referring to FIG. 4, a simplified block diagram of opening a file
`within Windows NT® according to the invention is shown. The diagram
`is based on the diagram of FIG. 1. The thick black line represents the
`trap layer or filter layer for preventing some file system operations from
`passing from the application layer to the file system layer. Accordingly,
`a data store device operates as a read/write device with a single device
`driver. The trap layer prevents write operations or, alternatively, other
`predetermined operations from being performed on a specific data
`store. The trap layer achieves this by blocking some requests and by
`modifying other requests. In this way, some operations are prevented
`without requiring modifications to existing applications.” (‘524 patent
`at 10:5-17, emphasis added).
`41. The ‘524 patent is related to the ‘624 patent and the ‘624 prosecution
`
`history states that an important distinguishing feature of the invention is that, “the
`
`trap layer of the present invention allowed or denied an operation based solely on
`
`
`
`19
`
`22 of 53
`
`
`
`
`
`the operation, and regardless of the user.” (‘524 Prosecution at p. 123; ‘624
`
`Prosecution History at p. 43).
`
`B. CLAIM CONSTRUCTION
`I understand that Petitioners and Patent Owner (“the Parties”) have
`42.
`
`proposed claim constructions for certain terms of the ‘524 patent in a civil action.
`
`However, the Petitioners claim that, “the Board need not resolve those disputes here
`
`because the challenged claims read on the prior art under all parties’ constructions.”
`
`(Petition at p. 10). My opinions expressed herein are consistent with interpretations
`
`of the claim terms having their ordinary and customary meaning in the context of
`
`the ‘524 patent disclosures.
`
`VII. PATENTABILITY OF CLAIMS 1-4, 9, 11, 18-19, 24, AND 29-31 OF
`THE ‘524 PATENT OVER VOSSEN
`A. “APPLYING AN OPERATION ACCESS PRIVILEGE”
`“Operating access privilege,” of the subject claims means that the,
`43.
`
`“access privilege” of the challenged claims is of the “operation,” and not a privilege
`
`of executing processes associated with application programs running within a
`
`computer, as in Vossen. (‘624 Prosecution History at p. 43; Vossen at Abstract, 1:5-
`
`8, 1:11-14, 1:63-67, 2:3-6, 2:65-3:1, and All Claims). “Enforcement of the operation
`
`access privilege allows enabled operations or denies restricted operations.” (‘624
`
`Prosecution History at p. 43, emphasis added). As previously noted, Vossen’s access
`
`
`
`20
`
`23 of 53
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
