Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`
`v.
`
`
`DAEDALUS BLUE, LLC
`Patent Owner
`
`_________________________
`
`
`Case IPR2021-00831
`
`U.S. Patent No. 8,671,132
`Title: SYSTEM, METHOD, AND APPARATUS FOR POLICY-BASED DATA
`MANAGEMENT
`Filing Date: 03/14/2003
`Issue Date: 03/11/2014
`
`_________________________
`
`
`DAEDALUS BLUE, LLC’S UNOPPOSED MOTION TO EXPUNGE
`EXHIBITS 2012-2017
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`U.S. Patent No. 8,671,132
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`
`v.
`
`
`DAEDALUS BLUE, LLC
`Patent Owner
`
`_________________________
`
`
`Case IPR2021-00831
`
`U.S. Patent No. 8,671,132
`Title: SYSTEM, METHOD, AND APPARATUS FOR POLICY-BASED DATA
`MANAGEMENT
`Filing Date: 03/14/2003
`Issue Date: 03/11/2014
`
`_________________________
`
`
`DAEDALUS BLUE, LLC’S UNOPPOSED MOTION TO EXPUNGE
`EXHIBITS 2012-2017
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`Introduction ...................................................................................................... 1
`
`Page
`
`II.
`
`Procedural History ........................................................................................... 1
`
`III. Governing Laws, Rules, and Precedent ........................................................... 4
`
`IV. There is good cause to expunge Exhibits 2012-2017. ..................................... 5
`
`V.
`
`Conclusion ....................................................................................................... 9
`
`i
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`
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
`
`
`Exhibit No.
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`Description
`Declaration of Professor Jules White, Ph.D.
`Declaration of David Pease, Ph.D.
`Declaration of Linda Duyanovich.
`Order Governing Proceedings, Daedalus Blue, LLC v. Microsoft
`Corp., Case No. 6:20-CV-1152-ADA, Dkt. No. 23 (W.D. Tex.
`June 30, 2021).
`Microsoft Corporation’s Notice of Filing Petitions for Inter
`Partes Review, Daedalus Blue, LLC v. Microsoft Corp., Case
`No. 6:20-cv-1152-ADA, Dkt. No. 19 (W.D. Tex. May 7, 2021).
`Defendant’s Invalidity Contentions, Daedalus Blue, LLC v.
`Microsoft Corp., Case No. 6:20-cv-1152-ADA.
`Chart C-1 from Defendant’s Invalidity Contentions, Daedalus
`Blue, LLC v. Microsoft Corp., Case No. 6:20-cv-1152-ADA.
`Chart C-2 from Defendant’s Invalidity Contentions, Daedalus
`Blue, LLC v. Microsoft Corp., Case No. 6:20-cv-1152-ADA.
`Chart C-6 from Defendant’s Invalidity Contentions, Daedalus
`Blue, LLC v. Microsoft Corp., Case No. 6:20-cv-1152-ADA.
`Chart C-7 from Defendant’s Invalidity Contentions, Daedalus
`Blue, LLC v. Microsoft Corp., Case No. 6:20-cv-1152-ADA.
`Microsoft Computer Dictionary, Fifth Edition, Definition for
`‘main frame,’ 2002.
`IBM, “Storage Tank, Initial Programming Functional
`Specifications, Version 1.1,” dated April 26, 2001.
`PROTECTIVE ORDER MATERIAL.
`IBM, “Storage Tank, Initial Programming Functional
`Specifications, Version 1.2,” dated June 11, 2001.
`PROTECTIVE ORDER MATERIAL.
`IBM, “IBM Storage Tank: Storage Tank Strategy, Product
`Positioning,” dated September 17, 2001. PROTECTIVE
`ORDER MATERIAL.
`IBM, “Storage Tank: Development Review,” dated February 11,
`2002. PROTECTIVE ORDER MATERIAL.
`IBM, “Storage Tank: Release 1: High Level Design, Version
`Draft 0,” dated February 19, 2002. PROTECTIVE ORDER
`MATERIAL.
`IBM, “Storage Tank Development Schedule,” dated February
`2002. PROTECTIVE ORDER MATERIAL.
`
`ii
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`
`
`Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
`
`
`Exhibit No.
`2018
`
`2019
`
`2020
`2021
`2022
`2023
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`Description
`Defendant’s Revised Proposed Claim Constructions, Daedalus
`Blue, LLC v. Microsoft Corp., Case No. 6:20-cv-1152-ADA,
`dated August 11, 2021.
`Defendant’s Disclosure of Extrinsic Evidence, Daedalus Blue,
`LLC v. Microsoft Corp., Case No. 6:20-cv-1152-ADA, dated
`August 3, 2021.
`U.S. Patent No. 6,154,776 to Martin (“Martin”).
`U.S. Patent No. 6,167,445 to Gai (“Gai”).
`U.S. Patent No. 6,212,562 to Huang (“Huang”).
`Declaration of Michael Flynn-O’Brien.
`Declaration of Christopher Jules White, Ph.D. (cited as “White
`POR Decl.”).
`Deposition Transcript of Erez Zadok, Ph.D. (cited as “Zadok
`Dep. Tr.”).
`Paulo Verissimo & Luis Rodrigues, DISTRIBUTED SYSTEMS FOR
`SYSTEMS ARCHITECTS (2001).
`Excerpt from Gelb’s Storage Group ACS Routine with line
`numbers added.
`Supplemental Declaration of Christopher Jules White, Ph.D.
`SERVED AS SUPPLEMENTAL EVIDENCE; NOT FILED.
`Springer Link Purchase Receipt for Paulo Verissimo & Luis
`Rodrigues, DISTRIBUTED SYSTEMS FOR SYSTEMS ARCHITECTS
`(2001). SERVED AS SUPPLEMENTAL EVIDENCE; NOT
`FILED.
`Transcript of Conference Call in Case IPR2021-00831 (July 1,
`2022).
`
`
`All citations to specific pages of exhibits follow the pagination added to those
`exhibits per 37 C.F.R. § 42.63(d)(2)(i).
`
`iii
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`
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`I.
`
`Introduction
`
`
`
`With the Board’s email authorization of May 23, 2024, Patent Owner
`
`Daedalus Blue, LLC moves to expunge sealed Exhibits 2012-2017. This motion is
`
`unopposed: counsel for Daedalus Blue have conferred with counsel for Petitioner
`
`Microsoft Corporation, who confirmed that Microsoft does not oppose the
`
`expungement of Exhibits 2012-2017.
`
`Exhibits 2012-2017 are confidential IBM software development documents
`
`that Daedalus Blue cited in its preliminary response in an attempt to antedate the
`
`Devarakonda reference. After institution, however, Daedalus Blue contended that
`
`a particular claim limitation distinguished the challenged claims over Devarakonda,
`
`and did not renew its attempt to antedate Devarakonda in its patent owner response.
`
`Indeed, neither party cited any of Exhibits 2012-2017 in their post-institution
`
`briefing. Nor did the Board cite any of Exhibits 2012-2017 in its final written
`
`decision, which in any event did not reach whether the claims would have been
`
`unpatentable over Devarakonda.
`
`Under those circumstances, and as explained further below, there is good
`
`cause to expunge Exhibits 2012-2017.
`
`II.
`
`Procedural History
`
`In its preliminary response, Daedalus Blue sought to antedate the
`
`Devarakonda reference. (Paper 7, at 20-22, 39-40; Paper 8, at 20-22, 39-40.) With
`
`1
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`that preliminary response, Daedalus Blue submitted the Declaration of David Pease,
`
`Ph.D. (Ex. 2002), the Declaration of Linda Duyanovich (Ex. 2003), and confidential
`
`software development documents (Exs. 2012-2017) as evidence of prior conception
`
`and diligence toward reduction to practice.
`
`Daedalus Blue concurrently moved to enter a protective order and seal both
`
`its preliminary response and the Pease and Duyanovich declarations. (Paper 6.) In
`
`connection with that motion, Daedalus Blue filed public redacted versions of its
`
`preliminary response and the Pease and Duyanovich declarations. (Paper 8; Ex.
`
`2002; Ex. 2003.) Daedalus Blue then moved to seal Exhibits 2012-2017. (Paper 10.)
`
`Microsoft later moved to seal its preliminary reply and filed a public redacted version
`
`of its preliminary reply in connection with that motion. (Paper 12; Paper 14.)
`
`Daedalus Blue then filed a sealed version and a public redacted version of its
`
`preliminary sur-reply. (Paper 15; Paper 16.)
`
`The Board entered a public decision to institute in which it briefly discussed
`
`the public redacted versions of the Pease and Duyanovich declarations and their
`
`citations to Exhibits 2012-2017. (Paper 17, at 21-23.) The decision to institute did
`
`not reveal the contents of any of Exhibits 2012-2017, however. (Id.)
`
`Shortly after institution, the Board addressed the parties’ motions to seal.
`
`Although the Board denied Daedalus Blue’s motion to seal its preliminary response
`
`and the Pease and Duyanovich declarations, and denied Microsoft’s motion to seal
`
`2
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`U.S. Patent No. 8,671,132
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`its preliminary reply, the Board entered the model protective order and granted
`
`Daedalus Blue’s motion to seal Exhibits 2012-2017. (Paper 20; Paper 21.)
`
`After institution, Daedalus Blue contended that Devarakonda lacked one of
`
`the challenged claims’ limitations, but Daedalus Blue did not renew its attempt to
`
`antedate Devarakonda. (Paper 30, at 55-59.) Thus, Daedalus Blue’s patent owner
`
`response did not cite or rely on any of Exhibits 2012-2017. (Id.) Nor did Microsoft’s
`
`reply (Paper 34); nor did Daedalus Blue’s sur-reply (Paper 38).
`
`On a conference call after Daedalus Blue filed its sur-reply, counsel for
`
`Daedalus Blue confirmed that Exhibits 2012-2017 should remain sealed. (Ex. 2030,
`
`at 7:6-9.) The Board advised that pursuant to its standard practice, any sealed
`
`exhibits would be unsealed within 45 days after all appeals absent a motion to
`
`expunge, which it invited Daedalus Blue to file “at a later time.” (Id. at 7:10-15.)
`
`In its final written decision, the Board held the challenged claims unpatentable
`
`over the Gelb, Tivoli, and Callaghan references. (Paper 51.) The Board did not
`
`reach the Devarakonda reference. (Id. at 14, 51.) As the parties’ post-institution
`
`briefing did not cite or rely on Exhibits 2012-2017—and as the Board did not reach
`
`the Devarakonda reference in any event—the Board’s final written decision did not
`
`cite or rely on any of Exhibits 2012-2017. (Paper 30; Paper 34; Paper 38; Paper 51.)
`
`Daedalus Blue appealed the Board’s final written decision. (Paper 52.) The
`
`Federal Circuit affirmed on March 13, 2024 in a non-precedential opinion, Daedalus
`
`3
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`Blue v. Vidal, No. 23-1313 (Fed. Cir. Mar. 13, 2024) (non-precedential). The
`
`Federal Circuit entered its mandate on May 20, 2024. Daedalus Blue contacted the
`
`Board for authorization to file this motion on May 22, 2024, and the Board
`
`authorized this motion by email on May 23, 2024. As of this motion’s filing date,
`
`Exhibits 2012-2017 remain under seal as “Parties and Board Only” in P-TACTS.
`
`III. Governing Laws, Rules, and Precedent
`
`A party seeking to maintain the confidentiality of information filed under seal
`
`may move to expunge the information from the record before that information
`
`becomes public. 37 C.F.R. § 42.56; Consolidated Trial Practice Guide (Nov. 2019)
`
`at 22. “The rule balances the needs of the parties to submit confidential information
`
`with the public interest in maintaining a complete and understandable file history for
`
`public notice purposes. The rule encourages parties to redact sensitive information,
`
`where possible, rather than seeking to seal entire documents.” Consolidated Trial
`
`Practice Guide (Nov. 2019) at 22.
`
`That said, expunging an entire exhibit is appropriate where the exhibit is not
`
`necessary to understand the proceeding and where publicly releasing the exhibit
`
`would be harmful. That approach still leaves the public with a complete and
`
`understandable file history—as the exhibit was not necessary for the public to
`
`understand the proceeding—while avoiding any harm from disclosing the exhibit.
`
`For example, in EIS GmbH v. Novoluto GmbH, the Board granted the patent owner’s
`
`4
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`unopposed motion to expunge its highly confidential sales information, which the
`
`Board did not disclose or rely on in its final written decision. Case IPR2020-00007,
`
`Paper 48 (PTAB Nov. 6, 2023). And in Hytera Communications Corp. Ltd. v.
`
`Motorola Solutions, Inc., the Board sua sponte expunged confidential source code
`
`exhibits supporting the patent owner’s prior conception and reduction to practice
`
`because the Board’s final written decision did not reach those issues and did not rely
`
`on that source code. Case IPR2018-00128, Paper 47, at 35-36 (PTAB May 9, 2019).
`
`IV. There is good cause to expunge Exhibits 2012-2017.
`
`Exhibits 2012-2017 are confidential. In its order granting Daedalus Blue’s
`
`motion to seal Exhibits 2012-2017, the Board held that there was good cause to seal
`
`them because “the information sought to be sealed per its motion contains
`
`confidential information that third party IBM ‘maintains as confidential business and
`
`technical information.’” (Paper 21, at 2-3.) As of this motion’s filing date, Exhibits
`
`2012-2017 remain confidential and sealed as “Parties and Board Only” in P-TACTS.
`
`Exhibits 2012-2017 consist of third-party IBM’s confidential software
`
`development documents whose disclosure would be harmful. As discussed in
`
`Daedalus Blue’s prior motion to seal, disclosing Exhibits 2012-2017 would be
`
`harmful to a third party. (Paper 10, at 3-4.) In particular, Exhibits 2012-2017 include
`
`content that third party IBM asserts is highly sensitive proprietary technical and
`
`business information, including highly detailed specifications, internal presentation
`
`5
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`and discussion documents, and other materials relating to IBM’s research and
`
`development of a heterogeneous virtual file system in the late-1990s and early-
`
`2000s, known first as Storage Tank, then SAN File System, and whose features were
`
`ultimately incorporated into IBM’s General Parallel File System (or “GPFS”), now
`
`known as IBM Spectrum Scale. The information reflected in Exhibits 2012-2017
`
`contains information relating to IBM’s original Storage Tank project, including
`
`highly detailed information on the design, development, functionality, and operation
`
`of the Storage Tank product, and IBM’s internal strategic and business practices, as
`
`well as its development processes, strategy, and staffing.
`
`As also discussed in Daedalus Blue’s motion to seal Exhibits 2012-2017, third
`
`party IBM consented to Exhibits 2012-2017 being submitted in this proceeding only
`
`under the protection of the default Protective Order. (Paper 10, at 2-3.) Thus,
`
`Daedalus Blue understands that IBM believes that broad unprotected disclosure of
`
`this information would provide the public at-large with direct insight into third-party
`
`IBM’s closely held technological advancements, as well as third-party IBM’s
`
`strategic business considerations, to third-party IBM’s detriment. Daedalus Blue
`
`further understands that third-party IBM continues to safeguard this information as
`
`confidential and that the Exhibits 2012-2017 have not been made public.
`
`The table below addresses each of Exhibits 2012-2017:
`
`6
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`2014
`
`2015
`
`2013
`
`Exhibit Confidential Information Whose Disclosure Would Be Harmful
`2012
`IBM, Storage Tank, Initial Programming Functional Specifications,
`Version 1.1, dated April 26, 2001.
`
`This highly detailed technical specification contains confidential
`information relating to IBM’s research and development of its
`proprietary Storage Tank project.
`IBM, Storage Tank, Initial Programming Functional Specifications,
`Version 1.2, dated June 11, 2001.
`
`This highly detailed technical specification contains confidential
`information relating to IBM’s research and development of its
`proprietary Storage Tank project.
`IBM, IBM Storage Tank: Storage Tank Strategy, Product Positioning,
`dated September 17, 2001.
`
`This internal presentation contains highly sensitive, confidential
`information relating to IBM’s research and development of its
`proprietary Storage Tank project as well as IBM’s strategic and
`business practices.
`IBM, Storage Tank: Development Review, dated February 11, 2002.
`
`This internal presentation contains highly sensitive, confidential
`information relating to IBM’s research and development of its
`proprietary Storage Tank project, along with IBM’s development
`processes, testing, strategy, staffing, performance, and internal strategy
`and protocols, as well as IBM’s strategic and business practices.
`IBM, “Storage Tank: Release 1: High Level Design,” Version Draft
`0,” dated February 19, 2002.
`
`This highly detailed technical specification contains confidential
`information relating to IBM’s research and development of its
`proprietary Storage Tank project, as well as IBM’s development,
`strategic, and business practices.
`IBM, Storage Tank Development Schedule, dated February 2002.
`
`This internal work schedule contains confidential information relating
`to IBM’s research and development of its proprietary Storage Tank
`project, along with IBM’s development processes, staffing, testing,
`and strategy.
`
`2016
`
`2017
`
`7
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`
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`Expunging Exhibits 2012-2017 will still leave the public with a complete
`
`and understandable file history. To start, high-level discussions of Exhibits 2012-
`
`2017 that explain those exhibits’ relevance without revealing their confidential
`
`contents are available to the public in each of the following:
`
`-
`
`-
`
`-
`
`-
`
`-
`
`-
`
`-
`
`The unsealed version of the preliminary response (Paper 7, at 20-22);
`
`Daedalus Blue’s motion to seal Exhibits 2012-2017 (Paper 10, at 3-4);
`
`The unsealed version of Microsoft’s preliminary reply (Paper 13, at 5-
`
`8);
`
`The unsealed version of Daedalus Blue’s preliminary sur-reply (Paper
`
`15, at 5-8);
`
`The unsealed versions of the Pease and Duyanovich declarations
`
`(Ex. 2002; Ex. 2003);
`
`The Board’s decision to institute (Paper 17, at 21-23); and
`
`This motion.
`
`Those publicly available high-level discussions suffice to provide the public with a
`
`complete and understandable record of this proceeding’s preliminary phase, even
`
`without the underlying confidential Exhibits 2012-2017.
`
`As for this proceeding’s trial phase, neither party cited or relied on any of
`
`Exhibits 2012-2017 in their post-institution briefing. (Paper 30; Paper 34; Paper 38.)
`
`Nor did the Board cite or rely on any of Exhibits 2012-2017 in its final written
`
`decision; indeed, it did not reach Devarakonda in that decision. (Paper 51, at 14,
`
`8
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`U.S. Patent No. 8,671,132
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`51.) Thus, the public does not need Exhibits 2012-2017 to understand any phase of
`
`this proceeding, including the Board’s final written decision.
`
`In sum, Exhibits 2012-2017 consist of third-party confidential business and
`
`technical information; disclosing Exhibits 2012-2017 would be harmful; and none
`
`of Exhibits 2012-2017 is necessary for the public to understand this proceeding. For
`
`those reasons, there is good cause to expunge sealed Exhibits 2012-2017.
`
`V. Conclusion
`
`Because there is good cause to expunge sealed Exhibits 2012-2017, the Board
`
`should grant this unopposed motion and expunge sealed Exhibits 2012-2017.
`
`Dated: June 5, 2024
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kkm-ptab@mcnishpllc.com
`MCNISH PLLC
`254 Commercial Street, Suite 245
`Portland, ME 04101
`Telephone: (207) 800-3400
`Fax: (207) 800-3401
`
`Lead Counsel for Patent Owner
`Daedalus Blue, LLC
`
`9
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6(e), the undersigned certifies that on June 5, 2024,
`complete copies of the foregoing and all accompanying papers and exhibits were
`served by filing them in P-TACTS and emailing them to Microsoft’s counsel at the
`following address(es):
`
`
`
`Don Daybell (Reg. No. 50,877)
`D2DPTABDocket@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`T: 949-567-6700; F: 949-567-6710
`
`Jared Bobrow (pro hac vice)
`PTABDocketJ3B3@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`T: 650-614-7400; F: 650-614-7401
`
`Microsoft-Daedalus_OHS_Only@orrick.com
`
`
`
`Dated: June 5, 2024
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kkm-ptab@mcnishpllc.com
`MCNISH PLLC
`254 Commercial Street, Suite 245
`Portland, ME 04101
`Telephone: (207) 800-3400
`Fax: (207) 800-3401
`
`Lead Counsel for Patent Owner
`Daedalus Blue, LLC
`
`
`
`
`
`
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