UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`DAEDALUS BLUE, LLC,
`Patent Owner
`
`Case No.: IPR2021-00831
`U.S. Patent No. 8,671,132
`Original Issue Date: March 11, 2014
`
`Title: SYSTEM, METHOD, AND APPARATUS FOR POLICY-BASED DATA
`MANAGEMENT
`
`REPLY TO PATENT OWNER RESPONSE
`
`4148-8407-3016.3
`
`

`

`TABLE OF CONTENTS
`
`2.
`3.
`
`2.
`
`I.
`II.
`
`Page
`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION ........................................................................... 1
`A.
`“plurality of clients” (Claims 15, 23) ................................................... 2
`B.
`“computing platforms” (claims 15, 23) ................................................ 4
`III. GROUND 1: CLAIMS 15-25 ARE INVALID AS OBVIOUS OVER
`GELB IN VIEW OF TIVOLI ......................................................................... 6
`A. Gelb Is Analogous Art .......................................................................... 6
`1.
`Gelb is not limited to a single-computer mainframe
`system ......................................................................................... 6
`Gelb’s storage system is a distributed storage system ............... 9
`Gelb is reasonably pertinent to the problems addressed
`by the ’132 Patent .................................................................... 11
`Tivoli Is A Printed Publication........................................................... 13
`Claims 15-21 And 23-25 Are Obvious Over Gelb In View Of
`Tivoli .................................................................................................. 14
`1.
`Gelb in view of Tivoli teaches the “clients comprising at
`least two different computing platforms” limitation. .............. 14
`A POSITA would have been motivated to combine Gelb
`with Tivoli ................................................................................ 16
`Claim 18 Is Obvious Over Gelb In View Of Tivoli ........................... 21
`D.
`IV. GROUND 2: CLAIM 22 IS OBVIOUS OVER GELB IN VIEW OF
`TIVOLI AND CALLAGHAN ..................................................................... 23
`1.
`Gelb teaches that a file name is one of the file attributes
`(Pet. 43, citing EX1003, ¶216); ............................................... 23
`Tivoli’s computing platforms included DOS-based
`clients and a Unix storage server (id.); .................................... 23
`Callaghan teaches translating a file name from DOS to
`UNIX naming conventions (Pet., 42, citing Callaghan,
`11-12). ...................................................................................... 23
`V. GROUND 3: DEVARAKONDA ANTICIPATES CLAIMS 15-21,
`23-25. ............................................................................................................ 25
`i
`
`B.
`C.
`
`2.
`
`3.
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`VI. CONCLUSION ............................................................................................. 26
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .......................................................................... 19
`BMW of N. Am., LLC v. Stragent, LLC,
`IPR2017-00677, Paper 32 (PTAB June 13, 2018) ............................................. 13
`Ethicon LLC v. Intuitive Surgical, Inc.,
`No. 2021-1601, slip op. (Fed. Cir. May 19, 2022), ECF No. 57 ........................ 11
`Haas Automation, Inc. v. Olati LLC,
`IPR2021-00146, Paper 29 (PTAB May 13, 2022) ....................................... 13, 14
`Horizon Pharma, Inc. v. Dr. Reddy’s Lab’ys Inc.,
`839 F. App’x 500 (Fed. Cir. 2021) ....................................................................... 5
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) ....................................... 13, 14
`In re Clay
`993 F.2d. 858, 864 (Fed. Cir. 1993) ................................................................... 10
`In re Keller,
`642 F.2d 413 (CCPA 1981) ................................................................................ 16
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 16
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .............................................................................. 2
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) .................................................................... 13, 14
`Lyft, Inc. v. Quartz Auto Techs., LLC,
`IPR2020-01450, Paper 7 (PTAB Mar. 4, 2021) ................................................. 17
`
`iii
`
`

`

`Pfizer, Inc. v. Apotex, Inc.,
`480 F.3d 1348 (Fed. Cir. 2007) ............................................................................ 8
`Quectel Wireless Sols. Co. v. Koninklijke Philips N.V.,
`IPR2021-00558, Paper 7 (PTAB Sept. 16, 2021) ............................................... 17
`Thorner v. Sony Comput. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .................................................................... 2, 4, 5
`Tokai Corp. v. Easton Enter. Inc.,
`2009 WL 10669246 (C.D. Cal. Oct. 23, 2009) .................................................. 24
`Wang Labs., Inc. v. Toshiba Corp.,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 10
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .......................................................................... 20
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 11
`Other Authorities
`37 C.F.R. §42.100(b) ................................................................................................. 1
`
`iv
`
`

`

`LISTING OF EXHIBITS
`
`DESCRIPTION
`
`U.S. Patent No. 8,671,132 to Carlson et al. (the “132 Patent”)
`
`File History of U.S. Patent No. 8,671,132 (the “132 FH”)
`
`Declaration of Dr. Erez Zadok (“Zadok”) re U.S. Patent No.
`8,671,132
`
`Curriculum Vitae of Dr. Erez Zadok
`
`U.S. Patent No. 5,018,060 to Gelb (“Gelb”)
`
`IBM, Tivoli Storage Manager: A Technical Introduction (“Tivoli”)
`
`Excerpt from Brent Callaghan, NFS Illustrated (Addison Wesley
`Longman, Inc. 2000) (“Callaghan”)
`
`U.S. Patent No. 7,269,612 to Devarakonda (“Devarakonda”)
`
`Complaint for Patent Infringement, Daedalus Blue, LLC v.
`Microsoft Corporation, Case No. 6:20-cv-01152-ADA (Dec. 16,
`2020 W.D. Tex.)
`
`IBM Redbooks, How to order IBM Redbooks, available at
`https://www.redbooks.ibm.com/Redbooks.nsf/pages/howtobuy?Op
`en
`
`Affidavit of Duncan Hall (Internet Archive) re IBM, Tivoli Storage
`Manager: A Technical Introduction
`
`U.S. Copyright Office Record for Brent Callaghan, NFS Illustrated
`(Addison Wesley Longman, Inc. 2000)
`
`U.S. Library of Congress Certification for Brent Callaghan, NFS
`Illustrated (Addison Wesley Longman, Inc. 2000)
`
`EXHIBIT
`NO.
`1001
`1002
`
`1003
`
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`v
`
`

`

`EXHIBIT
`NO.
`
`DESCRIPTION
`
`1014
`
`1015
`
`1016
`
`IBM, Tivoli Storage Manager for Windows, Managed System for
`SAN Storage Agent User’s Guide, Version 4, Release 2 (2001)
`retrieved from
`https://web.archive.org/web/20011118124435/http://www.tivoli.co
`m/support/public/Prodman/public_manuals/UG/STOR/TSM/GC35
`-0434-02.pdf
`
`Excerpt from Microsoft Computer Dictionary, Fifth Edition (2002)
`(“Microsoft Dictionary”)
`
`Patterson et al., SnapMirror®: File System Based Asynchronous
`Mirroring for Disaster Recovery, USENIX Association, FAST ’02:
`Conference on File and Storage Technologies, January 2002, pp.
`117-129. (“Patterson”)
`
`1017
`
`U.S. Patent No. 5,819,292 to Hitz et al. (“Hitz”)
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`Sandberg et al., Design and Implementation of the SUN Network
`Filesystem, USENIX Conference & Exhibition, Portland Oregon,
`Summer 1985, pp. 119–130. (“Sandberg”)
`
`Hungate et al., Conference Report: Application Portability Profile
`and Open System Environment User’s Forum, Gaithersburg, MD,
`May 9-10, 1995, J. Res. Natl. Inst. Stand. Technol., Vol. 100, No.
`6, 1995, pp. 699-709. (“Hungate 1995”)
`
`Simple Mail Transfer Protocol, Network Working Group, Request
`for Comments: 2821 (April 2001) retrieved from
`https://tools.ietf.org/html/rfc2821
`
`Email from Jun Zheng dated May 4, 2021 in Daedalus Blue, LLC
`v. Microsoft Corporation, Case No. 6:20-cv-01152-ADA (W.D.
`Tex.)
`
`Declaration of Jared Bobrow in support of Petitioner’s Motion for
`Admission Pro Hac Vice (August 26, 2021).
`
`vi
`
`

`

`EXHIBIT
`NO.
`
`DESCRIPTION
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`Scott McKeown, “WDTX ‘Implausible Schedule’ & Cursory
`Markman Order Highlighted,” Ropes & Gray, Patents Post-Grant,
`Inside Views & News Pertaining to the Nation’s Busiest Patent
`Court, June 2, 2021.
`
`Dani Kass, Judge Albright Now Oversees 20% of New U.S. Patent
`Cases, Law360, March 10, 2021.
`
`Daedalus Blue, LLC’s Preliminary Infringement Contentions;
`Daedalus Blue, LLC v. Microsoft Corporation, Case No. 6:20-cv-
`01152-ADA (served May 20, 2021).
`
`Affidavit of Duncan Hall (Internet Archive) regarding Ex. 1014,
`IBM, Tivoli Storage Manager for Windows, Managed System for
`SAN Storage Agent User’s Guide, Version 4, Release 2 (2001)
`
`Reply Declaration of Dr. Erez Zadok In Support Of Inter Partes
`Review Of U.S. Patent No. 8,671,132
`
`Excerpt from Microsoft Computer Dictionary, 5th Ed. (2002)
`
`IBM Redbook Online!, Redbooks Site Search Screen, retrieved
`from https://web.archive.org/web/20011128002836/http://publib-
`b.boulder.ibm.com:80/Redbooks.nsf/portals/
`
`IBM History page for 1978 (8100 Information System Released in
`1978)
`
`IBM 8100 Information System brochure, retrieved from http://ed-
`thelen.org/comp-hist/IBM-ProdAnn/8100.pdf
`
`Andrew S. Tannenbaum, Distributed Operating Systems (1995)
`
`Andrzej Goscinski, Distributed Operating Systems: The Logical
`Design (1991)
`
`vii
`
`

`

`I.
`
`INTRODUCTION
`
`Petitioner laid out a clear case of unpatentability of all challenged claims. In
`
`its response, Patent Owner:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`rehashes without new evidence a claim construction for
`“plurality of clients” that the Board already rejected;
`
`construes “computing platforms” inconsistently with the
`specification;
`
`raises a meritless analogous art challenge to Gelb that conflicts
`with Patent Owner’s own definitions of “mainframes” and
`“distributed systems”;
`
`asserts a meritless public accessibility challenge to Tivoli—a
`document that was in IBM’s searchable technical repository;
`
`raises a meritless claim that Gelb would not have been
`combinable with Tivoli based on assertions about elements of
`Gelb unrelated to the ’132 Patent claims; and
`
`advances a meritless claim that Devarakonda fails to disclose
`multiple operating systems, despite its clear disclosure of “large
`numbers of servers running different operating systems.”
`
`None of these arguments rebut Petitioner’s showing that all challenged claims of
`
`the ’132 patent are unpatentable.
`
`II.
`
`CLAIM CONSTRUCTION
`
`Claims are to be construed “in accordance with the ordinary and customary
`
`meaning of such claim.” 37 C.F.R. §42.100(b). A claim is given its ordinary
`
`meaning unless patentee: 1) acts as his own lexicographer, or 2) disavows the full
`
`1
`
`

`

`scope of a claim term. Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362,
`
`1365 (Fed. Cir. 2012). “To act as its own lexicographer, a patentee must ‘clearly
`
`set forth a definition of the disputed claim term’ other than its plain and ordinary
`
`meaning. It is not enough for a patentee to simply disclose a single embodiment or
`
`use a word in the same manner in all embodiments, the patentee must ‘clearly
`
`express an intent’ to redefine the term.” Id. (internal citations omitted). “The
`
`standard for disavowal of claim scope is similarly exacting.” Id., 1366.
`
`Patent Owner proposes constructions for “plurality of clients” and
`
`“computing platforms.” POR, 7. In both instances, Patent Owner ignores the plain
`
`meaning of the term and distorts the specification’s teachings.
`
`A.
`
`“plurality of clients” (Claims 15, 23)
`
`Neither party proposed a construction for this term before institution, and the
`
`Board found it unnecessary to construe. Inst. Dec., 8. Now, Patent Owner
`
`proposes to redraft this term:
`
`Original term
`
`plurality of clients
`
`Redrafted term
`
`plurality of clients in a networked
`environment. (POR, 8)
`
`Patent Owner’s construction nakedly inserts the phrase “in a networked
`
`environment,” which is improper. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
`
`898, 913 (Fed. Cir. 2004) (holding that it is improper to read in limitations from
`
`2
`
`

`

`the specification absent “clear indication … that the patentee intended the claims to
`
`be so limited”).
`
`Patent Owner’s proposed construction cannot be correct. The Board has
`
`already determined that the claims do not require “a networked system.” Inst.
`
`Dec., 16. Patent Owner points to nothing in the plain meaning of “plurality of
`
`clients” which requires that they be “in a networked environment.” POR, 8-10.
`
`Instead, Patent Owner turns to the specification to contend that “the invention”
`
`requires this additional phrase. Id., 8-9. But none of Patent Owner’s passages say
`
`anything about the clients having to be networked. Instead, they all indicate that
`
`the storage devices accessed by the clients are networked. POR, 8, citing ’132
`
`Patent, 1:7-10 (“the invention relates to networking and data storage”); id. (“the
`
`invention relates to a system and method for policy-based data management on a
`
`distributed storage system.”); id., 2:20-24 (“the present invention [has] been
`
`developed in response to … needs in the art that have not been fully solved by
`
`currently available storage area network systems.”).
`
`Patent Owner also points to supposed problems that the ’132 Patent
`
`allegedly solved. POR, 9. But these problems all arose from networked storage
`
`systems. Id., citing ’132 Patent, 1:24-2:16. Patent Owner attempts to bootstrap
`
`these statements to pull in networked clients. POR, 8. But these statements fall far
`
`3
`
`

`

`short of a clear definition that requires the “plurality of clients” to be “in a
`
`networked environment.” See Thorner, 669 F.3d at 1365.
`
`B.
`
`“computing platforms” (claims 15, 23)
`
`The proper construction for “computing platform” is the combination of
`
`computer hardware and an operating system. Thus, “two different computing
`
`platforms” simply refers to a difference in either the hardware or the operating
`
`system or both.
`
`The plain meaning of a “platform” includes hardware and an operating
`
`system. EX1028, 8-9; EX1027, ¶45. The claims recite “clients comprising at least
`
`two different computing platforms.” Thus, the “computing platform” is part of a
`
`client. The specification teaches that “clients” are computers. ’132 Patent, 1:14-21
`
`(example clients are “independent workstation[s]” or “server[s]”), 2:30 (same),
`
`5:23 (same); EX1027, ¶46.
`
`Outside the claims, the specification refers to a “computing platform” twice.
`
`First, it states that files “may be formatted according to a variety of different
`
`computing platforms.” Id., 9:25-27. Second, it states that data may be translated
`
`depending on the “types of computing platforms” that are used. Id., 14:31-32.
`
`These statements say nothing about operating systems. EX1027, ¶47.
`
`File/data formats can require translation due to other factors such as the
`
`underlying hardware architecture. For example, computer architectures can be
`
`4
`
`

`

`either “big-endian” or “little-endian,” referring to the order that bytes are stored in
`
`computer words. EX1027, ¶¶50-51. A big-endian system stores the most
`
`significant byte at the smallest memory address and the least significant byte at the
`
`largest. A little-endian system, in contrast, stores the least-significant byte at the
`
`smallest address. Id. When sending a file from a big-endian client to a little-
`
`endian server (or vice versa), the endianness of the file must be converted. Id.
`
`Differences in processor word length create a similar issue. EX1027, ¶¶48-49.
`
`When the specification does talk about operating systems, it uses a different
`
`term—“operating system platforms.” ’132 Patent, 5:22-29. Thus, the patentee
`
`knew the difference between a “computing platform” and an “operating system
`
`platform” and intentionally chose the former for the claims. Horizon Pharma, Inc.
`
`v. Dr. Reddy’s Lab’ys Inc., 839 F. App’x 500, 504 (Fed. Cir. 2021) (holding that
`
`the terms “target” and “produce” used at different points in the specification
`
`indicates that these terms have different meanings, particularly where the patentee
`
`chose to use “target” instead of “produce” in the claims). Thus, “computing
`
`platform” cannot mean only an operating system. Patent Owner’s contention
`
`otherwise distorts the import of the specification. POR, 11.
`
`A computer requires software such as an operating system in order to
`
`function. EX1027, ¶48. Thus, when dependent claim 22 enumerates various
`
`operating systems, it is identifying differences in the operating system of the
`
`5
`
`

`

`computing platform. But that does not exclude hardware differences between two
`
`computing platforms as well. For example, Patent Owner agrees that many
`
`different types of hardware can all run the Unix operating system. POR, 57.
`
`III. GROUND 1: CLAIMS 15-25 ARE INVALID AS OBVIOUS OVER
`GELB IN VIEW OF TIVOLI
`
`Patent Owner contends that Gelb is not analogous art to the ’132 Patent and
`
`that Tivoli is not a printed publication. POR, 12-37. Patent Owner then contends
`
`that Gelb lacks but a single limitation of claims 15 and 23 (“clients comprising at
`
`least two different computing platforms”) and that a POSITA would not have been
`
`motivated to combine Tivoli with Gelb. Id., 38-45. Finally, Patent Owner
`
`contends that dependent claim 18 is not taught by either Gelb or Tivoli. Id., 45-50.
`
`None of these arguments has merit.
`
`A.
`
`Gelb Is Analogous Art
`
`Gelb teaches nearly all of the limitations of the independent claims. Pet. 20-
`
`41. Save one limitation, Patent Owner does not dispute this. POR, 38-45. Thus,
`
`Gelb’s teachings align closely to the subject matter of the ’132 Patent and therefore
`
`are analogous.
`
`1.
`
`Gelb is not limited to a single-computer mainframe system
`
`Patent Owner for the first time contends that Gelb is not analogous art on the
`
`theory that Gelb is a “single-machine mainframe system” and not a “distributed
`
`storage system[].” POR, 13. This is simply incorrect.
`6
`
`

`

`According to Patent Owner, “[a] mainframe computer is a single computer
`
`enclosed in a single large box or frame” (POR, 3; EX2024, ¶26) whereas a
`
`“distributed storage system involves systems that include multiple machines.”
`
`POR, 16; EX2024, ¶74. Based on this, Patent Owner contends that the ’132 Patent
`
`is in the field of distributed storage systems while “Gelb’s mainframe system
`
`involves only one machine.” POR, 16. In doing so, Patent Owner fundamentally
`
`mischaracterizes Gelb.
`
`Gelb broadly teaches a “plurality of host processors sharing a peripheral data
`
`storage system.” Gelb, 5:19-21, Fig. 1 (reproduced below).
`
`Gelb describes “a data processing system having a plurality of host processors 10
`
`sharing a peripheral data storage system 12 via a plurality of input-output
`
`connections (such as I/O channels) 11.” Id., 5:51-56 (emphases added). Each host
`
`processor is in a separate box in Fig. 1. Gelb thus teaches a plurality of machines
`
`(i.e., host processors) that share a storage system over a plurality of connections.
`
`Nothing limits Gelb’s data processing system to a single machine. Gelb’s system
`
`7
`
`

`

`is therefore a distributed system by Patent Owner’s own definition. POR, 16. Gelb
`
`is indeed a distributed system according to a variety of references, including that
`
`relied upon by Patent Owner’s expert. EX1027, ¶¶13-23. At least one such
`
`reference defines a distributed system as including “strongly-coupled …
`
`multiprocessor systems.” EX1033, 5.
`
`To support its contention, Patent Owner relies on Gelb’s Fig. 4 but fails to
`
`address Fig. 1. POR, 15-16. It is true that each host processor individually is a
`
`single computer system. POR, 15, citing Zadok Dep. Tr., 64:13-18. But Fig. 4
`
`discloses only one “host processor 10” out of the plurality of such processors used
`
`in Gelb’s system. Compare Gelb, Fig. 4 with Fig. 1.
`
`Patent Owner further points to Gelb’s use of JCL, a scripting language it
`
`contends without support was used only on IBM mainframe systems. POR, 15.
`
`But these are just examples from a preferred embodiment to show Gelb’s
`
`algorithms. Gelb., 11:47-50. They do not limit Gelb’s teachings in Fig. 1 of a
`
`multiple-machine system sharing a data storage system. Pfizer, Inc. v. Apotex,
`
`Inc., 480 F.3d 1348, 1370 (Fed. Cir. 2007) (“the teaching of a prior art patent is not
`
`limited to its preferred embodiment”).1
`
`1 Patent Owner also points to various alleged “IBM mainframe technologies” in
`
`Gelb. These too are merely preferred embodiments. Additionally, Patent Owner
`
`8
`
`

`

`2.
`
`Gelb’s storage system is a distributed storage system
`
`Even if the plurality of host processors in Gelb were somehow a mainframe
`
`and not a distributed system, Gelb is still analogous art because Gelb’s storage
`
`system is a distributed system. As noted above, Patent Owner and its expert state
`
`that the field of “distributed storage systems involves systems that include multiple
`
`machines.” Gelb’s storage system is depicted in FIG. 5:
`
`Gelb describes its storage system as “hierarchical peripheral data storage”
`
`that includes “cached DASD subsystem(s) 45,” “medium-performance DASD(s)
`
`provides no evidentiary support that these technologies were limited solely to IBM
`
`mainframes. IBM also sold distributed systems before the filing date of the ’132
`
`Patent. EX1030, EX1031.
`
`9
`
`

`

`46,” various “tape subsystems(s)” 48 and 49, as well as other systems such as
`
`“automatic data media library … 55.” These are all separate devices, interfacing
`
`with the host processors via channels 38. Gelb, Fig. 5, 16:60-17:15. This is the
`
`same as the ’132 patent. ’132 Patent, 6:10-48 (describing storage devices as
`
`including disk drives, tape drive systems, etc. interfacing with computers via a
`
`SAN); EX1027, ¶31.
`
`A plurality of host processors interfacing with a plurality of devices in a data
`
`storage system “via a plurality of input-output connections” (Gelb, 5:53-55) is a
`
`networked storage system. EX1027, ¶¶29-31; EX1028, 7 (definition of network:
`
`“A group of computers [Gelb’s host processors] and associated devices [Gelb’s
`
`storage devices] that are connected by communications facilities [Gelb’s
`
`channels].”).
`
`Patent Owner’s cases are not to the contrary. In re Clay rejected a reference
`
`that was allegedly analogous art merely because it was from the same industry as
`
`the patent. Wang Labs., Inc. v. Toshiba Corp., 966 F.2d 656, 659 (Fed. Cir. 1992).
`
`Wang rejected a reference that was allegedly analogous art because it related to
`
`memories, without regard to type of memory. 993 F.2d. 858, 864 (Fed. Cir. 1993).
`
`Here, Gelb’s system is not merely in the same industry. Gelb is a multiprocessor
`
`distributed system interfacing with a data storage system having multiple storage
`
`10
`
`

`

`devices over a plurality of connections, just like the ’132 patent. Compare Gelb,
`
`Fig. 4 with ‘132 Patent, Fig. 4.
`
`3.
`
`Gelb is reasonably pertinent to the problems addressed by
`the ’132 Patent
`
`The analogous art test is satisfied by showing that a reference is either in the
`
`same field or is reasonably pertinent. Wyers v. Master Lock Co., 616 F.3d 1231,
`
`1237 (Fed. Cir. 2010). Even if Gelb were somehow not in the same field as the
`
`’132 Patent, Gelb is analogous art because it is reasonably pertinent to at least one
`
`of the ’132 Patent’s problems. As the Federal Circuit recently reaffirmed, a prior
`
`art reference qualifies as reasonably pertinent as long as it addresses “at least one
`
`problem faced by the inventors.” Ethicon LLC v. Intuitive Surgical, Inc., No.
`
`2021-1601, slip op. at 8 (Fed. Cir. May 19, 2022), ECF No. 57. It is irrelevant that
`
`there may be other problems identified in the patent. Id., 10.
`
`Patent Owner readily concedes that one of the problems the ’132 Patent
`
`sought to solve was:
`
`“[t]he inability of existing distributed storage systems to
`accommodate varied storage scenarios, including that they did not
`permit a user to automatically select between multiple storage options
`and that they did not address files with varying storage or
`performance requirements or equipment with varying capacities and
`performance levels.”
`
`11
`
`

`

`POR, 22, citing ’132 Patent, 1:47-2:3. Gelb addresses the same problem, namely
`
`that prior art storage access methods did not permit programmers to write code that
`
`would allow users to automatically select the appropriate storage devices based on
`
`“high or logical level” concepts, such as “data sets, data bases and the like.” Gelb,
`
`1:33-37, 60-65, 2:19-21; 18:23-26; EX1027, ¶¶40-42. Like the ’132 Patent, Gelb
`
`improved prior art systems that did not allow users to select from multiple storage
`
`devices using higher level or logical concepts such as performance, file sizes and
`
`formats, and availability and reliability. Compare Gelb 1:30-46 (observing that
`
`prior art systems could not allocate storage based on “data set considerations” such
`
`as “desired performance, indications of size, need for availability and reliability
`
`levels”) with ’132 Patent 1:47-2:3 (observing that known systems did not account
`
`for different storage requirements such as “accessibility, disaster recoverability,
`
`retrieval speed, retrieval consistency, and storage format”). Both Gelb and the
`
`’132 patent devised the same solution—a system of classifying files and assigning
`
`them to higher-level or logical storage volumes based on these classifications.
`
`Compare Gelb, 4:14-20 (“data related classes” allow host processors to “implicitly
`
`select data storage units which can achieve the desired system operations for
`
`satisfying the data set parameters”) with ’132 Patent, 2:45-49 (a “policy set”
`
`includes “policies … designed to select a service class and/or storage pool for a file
`
`based on attributes of the file”); EX1027, ¶¶43.
`
`12
`
`

`

`B.
`
`Tivoli Is A Printed Publication
`
`Petitioner conclusively established that Tivoli is a printed publication
`
`accessible to the public before the ’132 Patent filing date. Pet., 16-17. The Board
`
`agreed, finding that Patent Owner had not explained why Petitioner’s showing was
`
`insufficient. Inst. Dec., 13 n.8. Tivoli was posted on IBM’s Redbook repository as
`
`of November 28, 2001. EX1011.2 The touchstone of public accessibility for
`
`repository documents is whether such documents could be located by a reasonably
`
`diligent search. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039,
`
`Paper 29, at 10-11 (PTAB Dec. 20, 2019). This can be satisfied by showing that
`
`the repository was keyword-searchable. In re Lister, 583 F.3d 1307, 1315-16 (Fed.
`
`Cir. 2009); Haas Automation, Inc. v. Olati LLC, IPR2021-00146, Paper 29, at 24-
`
`25 (PTAB May 13, 2022) (library database with keyword searching capabilities
`
`held publicly accessible).
`
`The IBM Redbook repository was keyword searchable, allowing any
`
`interested users to obtain a “hit list of IBM Redbooks, Redpieces, Redpapers and
`
`Residencies” simply by entering “[a] quick keyword search.” EX1029. Patent
`
`2 The Wayback Machine is a well-accepted repository for publicly accessible
`
`documents. BMW of N. Am., LLC v. Stragent, LLC, IPR2017-00677, Paper 32, at
`
`45 (PTAB June 13, 2018).
`
`13
`
`

`

`Owner points to no affirmative evidence to rebut Petitioner’s showing, nor does it
`
`suggest that Tivoli was not publicly accessible. POR, 34-37. At most, it merely
`
`contends that IBM’s website might have been unknown to POSITAs. Id., 36. But
`
`as Petitioner’s expert testified, Tivoli was a popular storage management software
`
`system on the market before the filing date of the ’132 Patent. EX1003, ¶110. It
`
`was equally well-known that Tivoli was an IBM product. EX1011. Thus, a
`
`POSITA wishing to learn more about Tivoli would have looked to IBM’s website.
`
`Hulu, IPR2018-01039, Paper 29, at 10-11. Such a person would have used the
`
`website’s keyword search capabilities to locate this Redpaper. Nothing more is
`
`required. In re Lister, 583 F.3d at 1315-16; Haas Automation, IPR2021-00146,
`
`Paper 29, at 24-25.
`
`C.
`
`Claims 15-21 And 23-25 Are Obvious Over Gelb In View Of
`Tivoli
`
`Gelb in view of Tivoli teaches every limitation of claims 15-21 and 23-25.
`
`Pet. 20-35. A POSITA would have been motivated to combine Tivoli’s teachings
`
`with Gelb. Pet. 35-41. The Board agreed, instituting review on all challenged
`
`claims. Inst. Dec. 18-19. None of Patent Owner’s arguments are sufficient to
`
`sustain the challenged claims.
`
`1.
`
`Gelb in view of Tivoli teaches the “clients comprising at
`least two different computing platforms” limitation.
`
`14
`
`

`

`Claims 15 and 23 recite “receiving one or more attributes of a file from one
`
`of a plurality of clients, the clients comprising at least two different computing
`
`platforms.” ’132 Patent, claims 15 and 23. Patent Owner alleges that Gelb fails to
`
`teach this limitation because 1) Gelb’s user application programs (i.e., clients) do
`
`not comprise an operating system and 2) these programs cannot be the claimed
`
`“clients” because Gelb does not involve a networked environment. POR, 38-39.
`
`As discussed above in Section II.A, the “plurality of clients” are not limited
`
`to “networked” clients. And as discussed in Section II.B, “computing platforms”
`
`are not limited to “operating systems.” Thus, under the proper claim constructions,
`
`Patent Owner’s arguments are misplaced.
`
`Even if the claims were limited to “networked” clients having different
`
`“operating systems,” Gelb in view of Tivoli still teaches this limitation. As set
`
`forth in the Petition, Tivoli teaches the use of Tivoli Storage Manager client
`
`software running on a variety of different hardware computing platforms. Pet. 24,
`
`citing Tivoli, 8, Fig. 2. These clients ran on different hardware architectures.
`
`Tivoli, 16 (clients include Intel, DEC Alpha, and PowerPC architectures). These
`
`clients also comprise different operating systems, including UNIX, Windows, and
`
`Macintosh amongst others. Pet. 25, citing Tivoli, 15-16; EX1027, ¶48. Patent
`
`Owner does not dispute any of these teachings. Patent Owner instead focuses
`
`solely on Gelb, improperly attacking one reference in isolation rather than the
`
`15
`
`

`

`asserted combination. Inst. Dec., 16; In re Keller, 642 F.2d 413, 426 (CCPA
`
`1981). There is no dispute that Gelb in view of Tivoli teaches all limitations of
`
`claims 15 and 23 even under Patent Owner’s incorrect claim constructions.
`
`2.
`
`A POSITA would have been motivated to combine Gelb
`with Tivoli
`
`A motivation to combine references can be shown in a variety of ways. All
`
`that is required is a showing of some reason that would have prompted a POSITA
`
`to make the proposed combination. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`418 (2007). Petitioner laid out a clear case that a POSITA would have been
`
`motivated to combine Gelb with Tivoli. The Petition explained that these
`
`references were a natural combination because they were both directed to policy-
`
`based data storage systems. Pet. 35-36, Gelb, 4:25-43, 18:23-46; Tivoli, 20. The
`
`Petition then went into detail as to exactly why and how a POSITA would have
`
`been motivated to use the teachings of Tivoli to modify Gelb to facilitate a
`
`plurality of clients of different computing platforms, which is the element
`
`Petitioner relies on Tivoli to provide. Pet. 37-41.
`
`In attempting to rebut this showing, Patent Owner first contends that Gelb is
`
`not in the field of distributed systems. As discussed above, this contention is
`
`incorrect. Supra, Section III.A; EX1027, ¶¶10-12. Even if it were correct, Gelb is
`
`still analogous art because it is reasonably pertinent to at least one problem the
`
`’132 Patent sought to solve. Section III.A., supra.