Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`
`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 PATENT OWNER SUR-REPLY
`
`
`
`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 PATENT OWNER SUR-REPLY
`
`
`
`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.
`
`Claim Construction .......................................................................................... 1
`
`A.
`
`Claims 15-21 and 23-25: “a plurality of clients, the clients comprising
`at least two different computing platforms” .......................................... 1
`
`1.
`
`The claimed “plurality of clients” are clients in a networked
`environment. ............................................................................... 1
`
`2.
`
`The claimed “computing platforms” are operating systems. ...... 5
`
`III. Ground 1: Microsoft failed to prove that Claims 15-21 and 23-25 would have
`been obvious over Gelb in view of Tivoli. ...................................................... 7
`
`A. Microsoft failed to prove that Gelb is analogous art. ............................ 7
`
`1.
`
`2.
`
`Gelb is not in the same field as the ’132 Patent. ......................... 8
`
`Gelb is not reasonably pertinent to the problems addressed by the
`’132 Patent. ...............................................................................11
`
`B. Microsoft failed to prove that Tivoli qualifies as a prior art printed
`publication. ..........................................................................................12
`
`C. Microsoft failed to prove that every limitation of the challenged claims
`would have been obvious over Gelb in view of Tivoli. ......................14
`
`1.
`
`2.
`
`Claims 15-21 and 23-25: “receiving one or more attributes of a
`file from one of a plurality of clients, the clients comprising at
`least two different computing platforms” .................................14
`
`Claim 18: “assigning the storage pool to the file comprises
`applying the storage pool rule to the characteristics of the
`available storage pools to assign the storage pool to the file” ..18
`
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`Page
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`IV. Ground 2: Microsoft failed to prove that Claim 22 would have been obvious
`over Gelb in view of Tivoli and Callaghan. ..................................................19
`
`V. Ground 3: Microsoft failed to prove that Devarakonda anticipates Claims 15-
`21 and 23-25 because Devarakonda does not disclose “receiving one or more
`attributes of a file from one of a plurality of clients, the clients comprising at
`least two different computing platforms.” .....................................................21
`
`VI. Conclusion .....................................................................................................24
`
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`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018) .......................................................................13
`
`Adidas AG v. Nike, Inc.,
`963 F.3d 1355 (Fed. Cir. 2020) .....................................................................18
`
`Circuit Check Inc. v. QXQ Inc.,
`795 F.3d 1331 (Fed. Cir. 2015) ....................................................................... 8
`
`CVI/Beta Ventures, Inc. v. Tura LP,
`112 F.3d 1146 (Fed. Cir. 1997) ....................................................................... 2
`
`Edwards Lifescis. LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) ....................................................................... 7
`
`Eon Corp. IP Hldgs. v. Silver Spring Networks, Inc.,
`815 F.3d 1314 (Fed. Cir. 2016) ....................................................................... 2
`
`Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) .....................................................................16
`
`Horizon Pharma, Inc. v. Dr. Reddy’s Labs., Inc.,
`839 F. App’x 500 (Fed. Cir. 2021) (non-precedential) ................................... 6
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) .....................................................................13
`
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) .....................................................................12
`
`In re: Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .....................................................................14
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .....................................................................19
`
`iii
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`Page(s)
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`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005) ....................................................................... 2
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) .....................................................................16
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................4, 7
`
`Regents Univ. Minn. v. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ......................................................................... 2
`
`Smith & Nephew, Inc. v. Hologic, Inc.,
`721 F. App’x 943 (Fed. Cir. 2018) (non-precedential) .................................12
`
`Tokai Corp. v. Easton Enter., Inc.,
`2009 WL 10669246 (C.D. Cal. Oct. 23, 2009) .............................................20
`
`TriVascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ....................................................................... 2
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .............................................................. 15, 20
`
`Statutes
`
`35 U.S.C. § 316(e) ...................................................................................................14
`
`Regulations
`
`37 C.F.R. § 42.51(b)(1)(iii) ........................................................................................ 4
`
`37 C.F.R. § 42.100(b) ................................................................................................ 4
`
`Administrative Decisions
`
`Haas Automation, Inc. v. Olati LLC,
`Case IPR2021-00146, Paper 29 (PTAB May 13, 2022) ...............................13
`
`Kayak Software Corp. v. Int’l Bus. Machs. Corp.,
`Case CBM2016-00076, Paper 16 (PTAB Dec. 15, 2016).............................14
`
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`Other Authorities
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`Page(s)
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`Consolidated Trial Practice Guide (Nov. 2019) ............................................. 4, 8, 19
`
`
`All emphases in quotations are added unless otherwise noted.
`
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`Exhibit No.
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`PATENT OWNER’S EXHIBIT LIST
`
`
`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.
`
`vi
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`
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`
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`Exhibit No.
`2017
`
`2018
`
`2019
`
`2020
`2021
`2022
`2023
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`Description
`IBM, “Storage Tank Development Schedule,” dated February
`2002. PROTECTIVE ORDER MATERIAL.
`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 YET
`FILED.
`Springer Link Purchase Receipt for Paulo Verissimo & Luis
`Rodrigues, DISTRIBUTED SYSTEMS FOR SYSTEMS ARCHITECTS
`(2001). SERVED AS SUPPLEMENTAL EVIDENCE; NOT
`YET FILED.
`
`
`All citations to specific pages of exhibits follow the pagination added to those
`exhibits per 37 C.F.R. § 42.63(d)(2)(i).
`
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`I.
`
`Introduction
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`
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`Microsoft’s reply fails to fix the problems with its petition: its failure to prove
`
`that Gelb (Ex. 1005) is analogous art; its failure to prove up Tivoli (Ex. 1006) as a
`
`printed publication; its failure to establish a motivation to combine the
`
`fundamentally different Gelb and Tivoli; its failure to present any logically
`
`defensible reading of Gelb’s code for Claim 18; its failure to establish a motivation
`
`to combine Callaghan (Ex. 1007) with Gelb and Tivoli for Claim 22; and its failure
`
`to establish that Devarakonda (Ex. 1008) anticipates any challenged claim. Instead,
`
`Microsoft used its reply to launch untimely new theories on nearly all those topics—
`
`showing how weak its petition was all along. The Board should disregard those new
`
`theories, if not Microsoft’s entire reply. But even if the Board reaches them, they
`
`fail to establish unpatentability. The Board should uphold the challenged claims.
`
`II. Claim Construction
`
`A. Claims 15-21 and 23-25: “a plurality of clients, the clients
`comprising at least two different computing platforms”
`
`1.
`
`The claimed “plurality of clients” are clients in a networked
`environment.
`
`The ’132 Patent explains that (1) “the invention” and “the present invention”
`
`involve clients interacting with distributed storage systems in a networked
`
`environment; and (2) the problems the inventors sought to solve were in distributed
`
`storage systems—a networked environment. (POR at 8-10; ’132 Patent at 1:7-10,
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`1:17-2:27; White POR Decl. ¶¶ 32, 51-57.) Microsoft’s argument that the “plurality
`
`of clients” need not be in a networked environment is mistaken. (Reply at 2-4.)
`
`Microsoft’s first mistake is treating the Board’s preliminary construction as
`
`final. (Reply at 2-3.) But “the Board is not bound by any findings made in its
`
`Institution Decision,” and the Board is free to change its mind on a full record.
`
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The full record
`
`here shows that the “plurality of clients” are clients in a networked environment.
`
`(POR at 8-10; ’132 Patent at 1:7-10, 1:17-2:27, White POR Decl. ¶¶ 51-57.)
`
`Microsoft then tries to divorce the ordinary meaning of “a plurality of clients”
`
`from the specification. (Reply at 3-4.) But an “[o]rdinary meaning is not something
`
`that is determined ‘in a vacuum.’” Eon Corp. IP Hldgs. v. Silver Spring Networks,
`
`Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016) (quoting Medrad, Inc. v. MRI Devices
`
`Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). Rather, an ordinary meaning must
`
`account for how the patent describes “the present invention” and the problems to be
`
`solved. Regents Univ. Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013);
`
`CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1160 (Fed. Cir. 1997). (POR at
`
`8-10.) And the ’132 Patent’s description of “the present invention” and the problems
`
`to be solved shows that the “plurality of clients” are clients in a networked
`
`environment. (Id.; ’132 Patent at 1:7-10, 1:17-2:27, White POR Decl. ¶¶ 51-57.)
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`So does the specification’s consistent description that disclosed “clients” are
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`in a networked environment, contrary to Microsoft’s argument that the ’132 Patent
`
`has distributed storage systems without networked clients. (Reply at 3-4.) Taking
`
`passages out of context, Microsoft overlooks that “[t]he invention relates to
`
`networking and data storage” (’132 Patent at 1:7-10), that the inventors sought to
`
`provide for “managing data in a network according to predetermined policies” (id.
`
`at 2:4-6), and, most crucially, that the inventors sought to address a need to
`
`“prioritize files within the network, with clients that operate based on a plurality of
`
`different operating platforms.” (Id. at 2:6-10.) And against the specification’s
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`consistent statements that the ’132 Patent’s clients are in a networked environment,
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`Microsoft cited no example in which the claimed “plurality of clients” are not in a
`
`networked environment. (POR at 8; ’132 Patent at Fig. 1, 1:7-2:16, 2:20-24, 5:21-
`
`26, White POR Decl. ¶¶ 51-57.) The specification’s consistent reference to clients
`
`in a networked environment confirms that the claimed “plurality of clients” are in a
`
`networked environment. In re Smith Int’l, 871 F.3d 1375, 1383 (Fed. Cir. 2017).
`
`Microsoft’s argument that the claimed “plurality of clients” need not be clients
`
`in a networked environment because no express lexicography or disavowal ignores
`
`Federal Circuit law. (Reply at 1-4.) Consistent statements about a term in the
`
`specification inform the ordinary meaning of that term when it appears in the
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`claims—even in the absence of express lexicography or disavowal. In re Smith Int’l,
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`871 F.3d at 1383. Although In re Smith Int’l was a BRI case, its holding applies
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`with equal if not greater force under the Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`
`Cir. 2005) (en banc) approach that governs here. 37 C.F.R. § 42.100(b). And
`
`between (1) the specification’s consistent statements that its clients are in networked
`
`environments; and (2) the inventors’ stated goal of addressing issues for clients of
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`storage area networks and other distributed storage systems, ordinarily skilled
`
`artisans would have understood that the ’132 Patent’s “plurality of clients” are
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`clients in a networked environment. (POR at 8-10; ’132 Patent at Fig. 1, 1:7-10,
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`1:17-2:27, White POR Decl. ¶¶ 51-57.)
`
`Finally, contrary to Microsoft’s reply arguments that the claimed “plurality of
`
`clients” need not be in a networked environment, Microsoft’s technical tutorial in
`
`the related litigation1 argued that “[t]he ’132 Patent relates to storing and handling
`
`files in a networked computer system.”2 That argument cannot be squared with
`
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`1 Daedalus Blue, LLC v. Microsoft Corp., No. 6:20-cv-1152-ADA (W.D. Tex.).
`
`2 Because that technical tutorial contains an argument inconsistent with Microsoft’s
`
`reply, Microsoft should have made that tutorial of record as routine discovery under
`
`37 C.F.R. § 42.51(b)(1)(iii). Because Microsoft did not do so, Daedalus Blue intends
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`to request authorization to file that tutorial with the Board. See Consolidated Trial
`
`Practice Guide (Nov. 2019), at 48.
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`Microsoft’s reply argument that the claimed “clients” need not be in a networked
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`environment. But even without that tutorial, the intrinsic record shows that the
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`claimed “plurality of clients” are clients in a networked environment.
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`2.
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`The claimed “computing platforms” are operating systems.
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`The inventors sought to provide distributed storage systems that could serve
`
`clients of different operating systems; the specification equates computing platforms
`
`with operating systems; and Claims 8 and 22 recite that computing platforms are
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`operating systems: “wherein the at least two different computing platforms are
`
`selected from the group consisting of Windows, AIX, Linux, Solaris, Unix, Mac OS,
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`OS/2, DOS, HP, IRIX, and OS/390.” (POR 10-12; ’132 Patent at 1:40-43, 2:6-16,
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`5:19-29, Claims 8 and 22; White POR Decl. ¶¶ 58-60.) Against all the intrinsic
`
`evidence showing that the claimed “computing platforms” are operating systems,
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`Microsoft’s arguments to the contrary fall flat. (Reply at 4-6.)
`
`To start, Microsoft’s citations to out-of-context specification snippets ignore
`
`both Claims 8 and 22 (discussed above) and the specification as a whole. (Reply at
`
`4 (citing ’132 Patent at 9:25-27, 14:31-32).) The specification explains that a file
`
`“may be formatted according to a variety of different computing platforms, since
`
`multiple platforms may coexist within the network 100.” (’132 Patent at 9:25-28.)
`
`It also discusses “the types of computing platforms that are in use within the network
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`100.” (Id. at 14:31-32.) But the multiple computing platforms “within the network
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`100” are operating systems, such as “Windows™ based,” “Solaris™ based,” “based
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`on AIX®,” or “Linux-based.” (Id. at 5:21-29; POR at 11.) And one of the inventors’
`
`goals was to provide a distributed storage system that could serve clients with
`
`different operating systems. (’132 Patent at 1:40-43, 2:6-16.) Placed in the context
`
`of Claims 8 and 22 and the entire specification, the cited portions of the specification
`
`show that (1) the claimed “computing platforms” are operating systems; and (2) the
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`claimed “plurality of clients” are clients in a networked environment.
`
`Citing Horizon Pharma, Inc. v. Dr. Reddy’s Labs., Inc., 839 F. App’x 500,
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`504 (Fed. Cir. 2021) (non-precedential), Microsoft
`
`tries
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`to separate
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`the
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`specification’s term “operating system” from the claim term “computing platforms”
`
`just because their words do not match verbatim. (Reply at 5-6; ’132 Patent at 5:22-
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`29.) But Horizon Pharma is neither controlling nor apposite. In Horizon Pharma,
`
`the Court addressed whether two ordinary English words that the specification did
`
`not use interchangeably (“target” and “produce”) had different meanings. 839 F.
`
`App’x at 504. By contrast, the ’132 Patent’s specification uses the terms “platform”
`
`and “computing platform” interchangeably with “operating system.” (’132 Patent
`
`at 1:40-46, 2:6-16, 5:21-29, 9:25-28, 10:56-59, 14:31-32.) Because “[t]he
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`interchangeable use of the two terms is akin to a definition equating the two,” the
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`specification’s interchangeable use of those terms shows that the claimed
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`“computing platforms” are operating systems. Edwards Lifescis. LLC v. Cook Inc.,
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`582 F.3d 1322, 1329 (Fed. Cir. 2009).
`
`Microsoft’s extrinsic evidence is inferior to the intrinsic record and cannot
`
`change the meaning of a claim term. Phillips, 415 F.3d at 1318-19. That extrinsic
`
`evidence also has its own problems. Dr. Zadok’s reply testimony that “computing
`
`platforms” could also encompass different hardware platforms (such as Intel,
`
`PowerPC, and DEC Alpha) contradicts the Tivoli and Callaghan references on
`
`which he opined, which both use “platform” to refer to operating systems. (Ex. 1027
`
`¶¶ 44-51; but see Tivoli at 14-16, 27; Callaghan at 9.) And even Microsoft’s
`
`dictionary recognizes that an everyday use of “platform” is to refer to an operating
`
`system. (Ex. 1028, at 9.) The claimed “computing platforms” are operating systems.
`
`III. Ground 1: Microsoft failed to prove that Claims 15-21 and 23-25 would
`have been obvious over Gelb in view of Tivoli.
`
`A. Microsoft failed to prove that Gelb is analogous art.
`
`Microsoft’s backhanded argument that Gelb is analogous art because Gelb
`
`purportedly teaches certain claim limitations fails. (Reply at 6.) Gelb lacks “a
`
`plurality of clients, the clients comprising at least two different computing
`
`platforms.” Gelb’s application programs—the purported “plurality of clients”—are
`
`not clients in a networked environment, and do not comprise any operating system.
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`(POR at 38-39; White POR Decl. ¶¶ 111-112; Petition at 24.) The lack of clients in
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`a networked environment takes Gelb’s single-machine mainframe out of the ’132
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`Patent’s field of endeavor of distributed storage systems, which involves multiple
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`networked computers. (’132 Patent at 1:7-10, 2:20-24, 5:21-26; White POR Decl.
`
`¶¶ 32, 53, 57, 68-69; POR at 4, 13-15.) And both that deficiency and Gelb’s lack of
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`a “plurality of clients” that comprises at least two different operating systems are
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`among the reasons Gelb would have been irrelevant to the distributed storage system
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`problems the inventors sought to solve. (POR at 21-32.)
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`That backhanded argument and a high-level backgrounder on Gelb are the
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`petition’s only analogous art arguments. (Petition at 13-14.) The Board should
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`reject Microsoft’s remaining analogous art arguments, all raised for the first time in
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`reply. Establishing a reference as analogous art is an essential part of any
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`obviousness case, Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir.
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`2015), and a petitioner cannot present an essential part of its obviousness case for
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`the first time in reply. Consolidated Trial Practice Guide (Nov. 2019), at 74. But
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`even if the Board reaches Microsoft’s untimely reply arguments, they lack merit.
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`1.
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`Gelb is not in the same field as the ’132 Patent.
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`Microsoft does not contest
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`that mainframes with
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`their centralized
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`architectures lie outside the field of distributed storage systems. (Reply at 6-11.)
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`And with good reason: its reply evidence confirms that. One textbook states that
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`“[d]istributed systems need radically different software than centralized systems
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`8
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`do.” (Ex. 1032, at 6.) Another contrasts distributed operating systems and
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`centralized operating systems. (Ex. 1033, at 6.)
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`Instead, Microsoft tried to rewrite the ’132 Patent, Gelb, and the patent owner
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`response to shoehorn Gelb into the field of distributed storage systems. But the ’132
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`Patent defines its field of distributed storage systems to involve multiple computers
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`in a networked environment. (’132 Patent at 1:7-10, 2:20-24; 5:21-26; White POR
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`Decl. ¶¶ 32, 53, 57, 68-69; POR at 4, 13-15.) And Gelb’s centralized mainframe
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`involves neither multiple computers nor a networked environment, as discussed.
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`Microsoft’s claim that Gelb’s host processors make it a multi-machine
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`distributed storage system misses the mark. (Reply at 6-8.) A single mainframe can
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`include multiple host processors. (Gelb at 1:51-56; White POR Decl. ¶¶ 27, 29.)
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`And a mainframe is a single machine. (White POR Decl. ¶ 26; Ex. 1032, at 7 (“This
`
`observation fit the mainframe technology of its time quite well, and led most
`
`organizations to buy the largest single machine they could afford.”).)
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`Confirming that ordinarily skilled artisans would have understood Gelb as a
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`single-machine mainframe, Gelb discusses IBM mainframe technologies and the
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`mainframe programming language called Job Control Language throughout its
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`specification. (Gelb at Fig. 4, Fig. 5, 1:49-59, 6:8-40, 10:25-39, 11:51-57, 15:64-
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`16:59; POR at 15; White POR Decl. ¶¶ 71-72.) Missing the forest for the trees,
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`Microsoft contends that those mainframe technologies are only embodiments.
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`9
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`(Reply at 8-9.) But ordinarily skilled artisans would have understood from those
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`mainframe technologies that Gelb as a whole reflects a centralized mainframe
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`approach. (POR at 15; White POR Decl. ¶¶ 71-73.) And Microsoft’s references to
`
`other irrelevant IBM systems do not compensate for its failure to prove that Gelb
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`discloses a distributed storage system. (Reply at 8 n.1; Ex. 1030; Ex. 1031.)
`
`Even if the Board finds that Gelb involves multiple computers—which it does
`
`not—Gelb lacks networking between those computers, contrary to Microsoft’s
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`arguments. (Reply at 9-11.) And the ’132 Patent’s definition of the field of
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`distributed storage systems requires networking. (’132 Patent at 1:7-10, 2:20-24;
`
`5:21-26; White POR Decl. ¶¶ 32, 53, 57, 68-69; POR at 4, 13-15.) Microsoft’s
`
`extrinsic-evidence-based argument that distributed storage systems need not involve
`
`a network does not and cannot overcome the ’132 Patent’s intrinsic definition of its
`
`field of endeavor to involve networked computers. (Reply at 9-11.)
`
`Likewise, Microsoft’s argument that Gelb’s directly connected peripheral
`
`storage makes Gelb purportedly “distributed” founders on the ’132 Patent’s
`
`definition of its field of endeavor. (Reply at 9-11.) As discussed, the ’132 Patent
`
`explains that its distributed storage systems are in a networked environment. And it
`
`describes networks as “LANs, WANs, and SANs, and combinations thereof” whose
`
`components can be connected by intermediate components such as “switches,
`
`routers, hubs, and bridges.” (’132 Patent at 6:60-7:1.) Even Microsoft’s reply
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`10
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`evidence differentiates between directly connected devices as in Gelb and networked
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`devices.
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` (Ex. 1031, at 2 (differentiating between “direct attach” and
`
`“communication link”).) Gelb lies outside the ’132 Patent’s field of endeavor.
`
`2.
`
`Gelb is not reasonably pertinent to the problems addressed
`by the ’132 Patent.
`
`The petition did not identify any problems addressed by the inventors of the
`
`’132 Patent to which Gelb would have been reasonably pertinent. And Microsoft’s
`
`reply alleged only one problem to which Gelb would have been reasonably pertinent:
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`“[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
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`storage or performance requirements or equipment with varying capacities and
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`performance levels.” (Reply at 11-12 (quoting POR at 22).) But Gelb would not
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`have been reasonably pertinent even to that problem.
`
`As discussed, Gelb is not a distributed storage system, but a centralized
`
`mainframe system. And “[d]istributed systems need radically different software
`
`than centralized systems do.” (Ex. 1032, at 6.) So whatever Gelb did to simplify
`
`mainframe application programming languages in the context of its centralized
`
`mainframe system would have been inapposite to problems in distributed storage
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`systems for that reason alone. (POR at 29; White POR Decl. ¶¶ 105-108.)
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`11
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`Even if Microsoft had proven that Gelb’s routines and the ’132 Patent’s
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`policies are similar—which it did not—that still wouldn’t be enough to establish
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`reasonable pertinence. (Reply at 12; but see POR at 30-32.) Even if a reference and
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`a patent arrive at similar solutions to their respective problems, that does not
`
`establish that the reference is reasonably pertinent to a problem addressed in the
`
`patent. In re Oetiker, 977 F.2d 1443, 1446-47 (Fed. Cir. 1992); Smith & Nephew,
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`Inc. v. Hologic, Inc., 721 F. App’x 943, 949 (Fed. Cir. 2018) (non-precedential).
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`And Gelb’s goal of simplifying mainframe application programming is orthogonal
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`to the problems the inventors of the ’132 Patent targeted. (POR at 29-32; White
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`POR Decl. ¶ 108.)
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`B. Microsoft failed to prove that Tivoli qualifies as a prior art printed
`publication.
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`Microsoft’s petition presented two theories on Tivoli’s alleged publication
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`date: (1) that Tivoli was “created or updated on June 15, 2001” based on inadmissible
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`hearsay; and (2) that the Internet Archive’s automated web crawlers purportedly
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`captured Tivoli. (Petition at 15-16.) After Daedalus Blue exposed both theories as
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`inadequate (POR at 34-37), Microsoft’s reply launched a new theory: that Tivoli was
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`in the IBM Redbook Repository and that that repository was keyword-searchable.
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`(Reply at 13-14.) The Board should reject Microsoft’s new theory about Tivoli’s
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`alleged publication date: it is not only untimely, but also inadequate.
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`12
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`Microsoft’s new theory overreads In re Lister as a categorical rule that
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`keyword searching guarantees public accessibility. 583 F.3d 1307, 1315-16 (Fed.
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`Cir. 2009). (Reply at 13-14.) At most, In re Lister held on its facts that a reference
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`in a keyword-searchable database could be publicly accessible if “several searches
`
`using a variety of keyword combinations” could have surfaced it. Id. at 1315. Even
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`then, the database would have needed to make the reference accessible as of the
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`critical date. Id. at 1316. And Haas Automation, Inc. v. Olati LLC did not lower the
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`bar; instead, the Board held the petitioner to the burdens outlined in In re Lister.
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`Case IPR2021-00146, Paper 29, at 24-26 (PTAB May 13, 2022).
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`Microsoft, however, did not meet those burdens. Even assuming that Tivoli
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`was in the IBM Redbook Repository as of the critical date—as Microsoft did,
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`without evidence—Microsoft failed to establish that any keyword search would have
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`led a searcher exercising only reasonable diligence to Tivoli. First, Microsoft needed
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`to show that the cited keyword search capabilities were reliable as of the critical date.
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`Distinguishing In re Lister, the Federal Circuit’s decision in Acceleration Bay, LLC
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`v. Activision Blizzard Inc. affirmed a Board decision that a reference was not publicly
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`accessible where evidence showed that the keyword search at issue was unreliable
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`as of the critical date. 908 F.3d 765, 773-74 (Fed. Cir. 2018). Second, Microsoft
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`needed to show that any search that surfaced Tivoli would not have also surfaced an
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`unreasonable number of references to pick through en route to Tivoli. Id. at 773.
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`13
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`Microsoft did not offer even attorney argument on search reliability or the
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`number of references surfaced by any repository search. Instead, it tried to shift the
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`burden of persuasion to Daedalus Blue. (Reply at 13-14.) But 35 U.S.C. § 316(e)
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`assigns IPR petitioners a burden of persuasion that never shifts to the patent owner.
`
`In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375-77 (Fed. Cir. 2016). And
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`it’s not the Board’s job to patch the holes in a petitioner’s case, even one that might
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`have superficial appeal at first glance. Id.; Kayak Software Corp. v
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