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`IPR2021-00831IPR2021-00831
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`1
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`Microsoft Ex. 1036, p. 1
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Instituted Grounds
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`• Claims 15-21, 23-25 as obvious over Gelb in view of Tivoli.
`
`• Claim 22 as obvious over Gelb in view of Tivoli and Callaghan.
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`• Claims 15-21, 23-25 as anticipated by Devarakonda.
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`2
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`Microsoft Ex. 1036, p. 2
`Microsoft v. Daedalus Blue
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`Dispute Summary
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`IPR2021-00831IPR2021-00831
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`3
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`Microsoft Ex. 1036, p. 3
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Disputed Issues – Claim Construction
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`• “plurality of clients” has its plain and ordinary meaning and need not be construed (all
`claims).
`
`Paper 34 (Reply), 2-4.
`• “computing platform” means the combination of computer hardware and an operating
`system (all claims).
`
`Paper 34 (Reply), 4-6.
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`4
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`Microsoft Ex. 1036, p. 4
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Disputed Issues – Prior Art Status of Gelb and Tivoli
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`• Gelb is analogous art.
`
`• Tivoli was a printed publication before the critical date of the ’132 Patent.
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`5
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`Microsoft Ex. 1036, p. 5
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Disputed Issues – Motivation to Combine
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`• A POSITA would have been motivated to combine Gelb with Tivoli.
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`6
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`Microsoft Ex. 1036, p. 6
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Disputed Issues – Prior Art Teachings and Disclosures
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`• Gelb in view of Tivoli teaches “a plurality of clients” “comprising at least two different
`computing platforms” (claims 15, 23).
`
`• Gelb in view of Tivoli teaches “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” (claim 18).
`
`• Gelb in view of Tivoli and Callaghan teaches translating DOS file names to UNIX (claim 22).
`
`• Devarakonda discloses a “a plurality of clients” “comprising at least two different
`computing platforms” (claims 15, 23).
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`7
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`Microsoft Ex. 1036, p. 7
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Disputed Issues – Motion to Exclude
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`• Exs. 1006, 1010, and 1029 are admissible.
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`• Exs. 1006, 1010, and 1029 are not hearsay or, alternatively, fall within hearsay exceptions.
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`8
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`Microsoft Ex. 1036, p. 8
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Dispute 1 – Construction of “Plurality of Clients”
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`9
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`Microsoft Ex. 1036, p. 9
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Patent Owner’s Proposed Re-Draft of “Plurality of Clients”
`
`Claim Language (excerpted)
`“plurality of clients”
`
`Patent Owner’s Re-Drafted
`Claim Language (excerpted)
`plurality of clients in a networked
`environment
`
`Paper 30 (Response), 8-10.
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`10
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`Microsoft Ex. 1036, p. 10
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`The Plain Meaning is Not Limited to a Networked Environment
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`• As the Board found during institution, the claims do not require “a networked system.”
`Paper 30 (Response), 8-10.
`
`Paper 17 (Institution Decision), 16.
`• The specification suggests, at most, that storage devices may be networked, not that
`clients must be networked. For example:
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`
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`Ex. 1001 (132 Patent), 1:6-10; Paper 34 (Reply), 3;
`see also Ex. 1001 (132 Patent), 2:20-24.
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`11
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`Microsoft Ex. 1036, p. 11
`Microsoft v. Daedalus Blue
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`Patent Owner Attempts to Improperly Read Limitations into the Claims
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`• A claim is given its ordinary meaning unless patentee: 1) acts as his own lexicographer, or
`2) disavows the full scope of a claim term.
`Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); Paper 34 (Reply), 1-2.
`
`• “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.”
`
`Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (emphasis added)
`(internal citation omitted); Paper 34 (Reply), 1-2.
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`12
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`Microsoft Ex. 1036, p. 12
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Microsoft Did Not Take an Inconsistent Position in District Court
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`Patent Owner asserts that a Microsoft statement in District Court is inconsistent with its
`position in this proceeding.
`
`Paper 38 (Sur-Reply), 4-5.
`
`• The statement is not inconsistent with Microsoft’s position that the ‘132 Patent may
`encompass networked storage devices, which are part of a “computer system.” Nothing in
`the statement requires networked clients.
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`Paper 34 (Reply), 3.
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`13
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`Microsoft Ex. 1036, p. 13
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Dispute 2 – Construction of “Computing Platform”
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`14
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`Microsoft Ex. 1036, p. 14
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Patent Owner’s Proposed Narrowing of “Computing Platform”
`
`Claim Language
`(excerpted)
`“computing platform”
`
`Petitioner’s Construction
`(excerpted)
`“computing platform” is
`the combination of
`computer hardware and
`an operating system
`Paper 34 (Reply), 4-6.
`
`Patent Owner’s
`Construction (excerpted)
`“computing platform” is
`only the operating system
`Paper 30 (Response), 10-12.
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`15
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`Microsoft Ex. 1036, p. 15
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`The Plain Meaning Includes Hardware and an Operating System
`
`• The Microsoft Computer Dictionary defines “platform” as encompassing both hardware
`and the operating system.
`
`Ex. 1028 (Microsoft Dictionary), 8-9; Paper 34
`(Reply), 4; Ex. 1027 (Zadok Reply Dec.), ¶¶ 45-47.
`• Dr. Zadok opined that “[a] POSITA would have understood that the plain meaning of
`‘platform’ in this context included computing hardware.”
`Ex. 1027 (Zadok Reply Dec.), ¶ 45; Paper 34 (Reply), 4.
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`16
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`Microsoft Ex. 1036, p. 16
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`The Specification Makes Clear that “Computing Platform” Is Not Limited to
`the Operating System
`• The specification refers to “computing platform” twice, both times in the context of
`translating and formatting files. The passages say nothing about operating systems.
`Paper 34 (Reply), 4; Ex. 1001 (132 Patent), 9:25-27, 14:31-32; Ex. 1027 (Zadok Reply Dec.), ¶ 47.
`
`• Translating and formatting files
`can be required when computing
`hardware is different (e.g., 32-bit
`vs 64-bit processors or “little-
`endian” vs “big-endian”
`processors).
`
`Paper 34 (Reply), 4-5; Ex. 1027
`(Zadok Reply Dec.), ¶¶ 47-51.
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`Ex. 1027 (Zadok Reply Dec.), ¶¶ 49-51; Paper 34 (Reply), 4-5.
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`17
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`Microsoft Ex. 1036, p. 17
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`The Specification Makes Clear that “Computing Platform” Is Not Limited to
`the Operating System
`• The specification uses the term “operating system platform,” not “computing platform,”
`to refer to the operating system of a platform.
`
`Paper 34 (Reply), 5.
`
`Ex. 1001 (132 Patent), 5:22-29; Paper 34 (Reply), 5.
`• This shows that the patentee knew the difference between “computing platform” and
`“operating system” and chose the former for the claims.
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`18
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`Microsoft Ex. 1036, p. 18
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Microsoft’s Construction Is Consistent with the Prior Art
`Patent Owner argues that a construction of “computing platform” as the combination of
`hardware and an operating system is inconsistent with Tivoli and Callaghan.
`Paper 38 (Sur-Reply), 7.
`• Patent Owner misrepresents Tivoli, which shows that the same operating system “NT 4.0”
`may operate on different PC “platforms.”
`See Paper 1 (Petition), 25; Ex. 1003 (Zadok Dec.), ¶¶ 152-153; Ex. 1027 (Zadok Reply Dec.), ¶ 48; Ex. 1006 (Tivoli), 15-16.
`
`• Nowhere does Callaghan equate “platform” and “operating system.” At most it suggests
`that PC clients which use different operating systems would be different “platforms,” which
`is consistent with Microsoft‘s proposed construction.
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`See Ex. 1007 (Callaghan), 9.
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`19
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`Microsoft Ex. 1036, p. 19
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Dispute 3 – Gelb Is Analogous Art
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`20
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`Microsoft Ex. 1036, p. 20
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Gelb Is in the Same Field of Distributed Storage Systems
`
`• Gelb is a distributed storage system
`because it describes multiple
`machines (i.e., multiple host
`processors) that share a peripheral
`data storage system using a plurality
`of input/output connections.
`See Paper 34 (Reply), 6-8; Ex. 1005 (Gelb),
`5:19-21, 5:51-56, Fig. 1.
`• Gelb’s plurality of host processors
`meets Patent Owner’s own definition
`of a distributed storage system.
`See Paper 34 (Reply), 6-8.
`
`Ex. 1005 (Gelb), Fig. 1; Paper 34 (Reply), 7.
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`21
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`Paper 30 (Response), 16.
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`Microsoft Ex. 1036, p. 21
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Gelb Is in the Same Field of Distributed Storage Systems
`
`• A text by one of the world’s foremost authorities on distributed systems confirms that
`“distributed systems” encompass Gelb’s multiprocessor system.
`See Paper 34 (Reply), 7-8; Ex. 1027 (Zadok Reply Dec.), ¶¶ 14-19.
`
`Ex. 1033 (Goscinski), 5; Paper 34 (Reply), 8.
`• Evidence on which Patent Owner’s expert relies acknowledges that “[d]istributed systems
`have many different facets which are very hard to capture by a single definition.”
`Ex. 2026 (Verissimo), 22; Ex. 1027 (Zadok Reply Dec.), ¶ 21; Paper 34 (Reply), 8.
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`22
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`Microsoft Ex. 1036, p. 22
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Gelb Is in the Same Field of Distributed Storage Systems
`
`• In addition, Gelb is analogous art because its storage system is a distributed system that
`includes a collection of separate storage devices.
`
`Paper 34 (Reply), 9-11.
`
`Ex. 1005 (Gelb), Fig. 5;
`Paper 34 (Reply), 9.
`
`• Gelb describes a distributed (and also networked) storage system: a group of computers
`(Gelb’s multiple host processors) and associated devices (Gelb’s shared storage devices)
`that are connected by communication facilities (Gelb’s input/output channels).
`Paper 34 (Reply), 10; Ex. 1027 (Zadok Reply Dec.), ¶¶ 29-31; Ex. 1028 (Microsoft Dictionary), 7.
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`23
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`Microsoft Ex. 1036, p. 23
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Gelb Is Pertinent to a Problem Addressed by the ’132 Patent
`
`• Gelb is analogous for another independent reason: it is pertinent to a problem that the
`’132 Patent addresses.
`
`Paper 34 (Reply), 11-12.
`• Patent Owner acknowledges that a problem targeted by the ‘132 Patent is that prior art
`systems “did not address files with varying storage or performance requirements or
`equipment with varying capacities and performance levels.”
`Paper 30 (Response), 22; Paper 34 (Reply), 11-12; Ex. 1001 (132 Patent), 1:47-2:3.
`
`• This problem is very similar to a problem identified by Gelb. Indeed, Gelb seeks to
`improve prior art systems that do not store data based on “data set considerations” like
`“desired performance, indication of size, need for availability and reliability levels.”
`Ex. 1005 (Gelb), 1:30-46; Ex. 1027 (Zadok Reply Dec.), ¶ 42; Paper 34 (Reply), 11-12.
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`24
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`Microsoft Ex. 1036, p. 24
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Dispute 4 – Tivoli Was a Printed Publication by the
`Critical Date of the ’132 Patent
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`IPR2021-00831IPR2021-00831
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`25
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`Microsoft Ex. 1036, p. 25
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Tivoli Was Publicly Available on the Web on Nov. 28, 2001
`
`• Tivoli was published as a part of IBM’s well-known and publicly disseminated Redbook series.
`Tivoli’s copyright page states it was “created or updated on June 15, 2001.”
`Paper 1 (Petition), 16-17; Paper 34 (Reply), 13-14; Ex. 1006 (Tivoli), 2; Ex. 1010 (IBM Redbooks).
`• Internet Archive’s Wayback Machine
`shows that Tivoli was available online
`at IBM’s Redbook repository on
`November 28, 2001. The Internet
`Archive provided an affidavit as to
`the accuracy of the Internet Archive’s
`records, explaining that the URL
`indicates the date and time at which
`the record was made.
`Paper 1 (Petition), 16-17; Paper 34
`(Reply), 13-14; Ex. 1011 (Hall Dec.).
`
`* * *
`
`Ex. 1011 (Hall Dec.), 1, 4.
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`26
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`Microsoft Ex. 1036, p. 26
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`A PHOSITA Would Have Easily Located Tivoli
`
`• IBM’s Redbook archive as of Nov.
`28, 2001 was keyword
`searchable, allowing a PHOSITA
`to locate Tivoli.
`
`Paper 34 (Reply), 13-14.
`
`• A PHOSITA would have known
`about Tivoli because it was a
`popular storage management
`software system available before
`the filing date of the ‘132 Patent.
`Paper 34 (Reply), 13-14; Ex. 1003
`(Zadok Dec.), ¶ 110.
`
`Ex. 1029 (IBM Redbooks Site Search), 1; Paper 34 (Reply), 13-14.
`
`Ex. 1003 (Zadok Dec.), ¶ 110.
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`27
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`Microsoft Ex. 1036, p. 27
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Patent Owner’s Sur-Reply Mischaracterizes the Law
`Patent Owner argues that Petitioner was required to prove that IBM database searches are
`reliable and that searching would not have produced an “unreasonable” number of results.
`Paper 38 (Sur-Reply), 13; see Acceleration Bay, LLC v.
`Activision Blizzard Inc., 908 F.3d 765, 773-74 (Fed. Cir. 2018).
`
`• This is incorrect. Acceleration Bay simply found that when keyword searching in a specific
`database is shown to be unreliable at finding the reference, such database searching cannot
`be relied upon for public access.
`Acceleration Bay, LLC v. Activision Blizzard Inc. 908 F.3d 765, 773-74 (Fed. Cir. 2018).
`
`• Patent Owner cites no evidence that IBM’s widely-used Redbook database search functionality
`was unreliable or otherwise would not have worked properly to allow a user to find Tivoli, “a
`popular storage management software system … at the time of the alleged invention.”
`Paper 38 (Sur-Reply), 13-14 (citing to no evidence); Ex. 1003 (Zadok Dec.), ¶ 110.
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`28
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`Microsoft Ex. 1036, p. 28
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Dispute 5 – A POSITA Would Have Been Motivated
`to Combine Gelb with Tivoli
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`29
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`Microsoft Ex. 1036, p. 29
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`The Petition Articulated Detailed Motivations to Combine
`
`• The Petition provided six pages of detailed motivations to combine. Tivoli and Gelb are
`both IBM disclosures, are both directed to policy-based data storage systems, and are
`both systems that include an administration component and client component.
`Paper 1 (Petition), 35-41; Ex. 1003 (Zadok Dec.), ¶¶ 198-211.
`• A POSITA would have been motivated to combine Tivoli and Gelb to improve the usability
`of Gelb, accommodate for a wider variety of clients, and allow for the acceptance of data
`from a wider variety of user applications.
`
`Paper 1 (Petition), 35-41; Ex. 1003 (Zadok Dec.), ¶¶ 198-211.
`• The Board recognized that Petitioner had provided motivations to combine.
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`30
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`Paper 17 (Institution
`Decision), 18.
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`Microsoft Ex. 1036, p. 30
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Patent Owner Mischaracterizes the Law and Ignores the Petition
`Patent Owner argues that the Petition was required
`to “establish a reason to select” Gelb.
`Paper 30 (Response), 41-42; Paper 38 (Sur-Reply), 15-16.
`• Patent Owner relies on WBIP, LLC v. Kohler Co., a case in which the Federal Circuit
`reviewed a jury verdict “in the light most favorable to the verdict” of non-obviousness.
`Paper 30 (Response), 41-42; Paper 38 (Sur-Reply), 15-16; WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1325 (Fed. Cir. 2016).
`• WBIP found substantial evidence for the jury’s findings as to objective indicia of non-
`obviousness that created a higher bar for obviousness. Here, in contrast, Patent Owner
`has presented zero evidence of any objective indicia of non-obviousness.
`
`Paper 34 (Reply), 20 n.3.
`• The Petition provided reasons for using Gelb, including that Gelb is an IBM patent (i.e., a
`significant technology company with data storage solutions) that “describes various IBM
`storage system products.”
`
`Paper 1 (Petition), 13-14, 35-38; Ex. 1003 (Zadok Dec.), ¶¶ 100-109, 198-201.
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`31
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`Microsoft Ex. 1036, p. 31
`Microsoft v. Daedalus Blue
`IPR2021-00831
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`Patent Owner’s Arguments Improperly Assume Bodily Incorporation
`Patent Owner argues that integrating teachings from Tivoli into Gelb would require a
`“ground-up redesign” of Gelb.
`Paper 30 (Response), 42-45; Paper 38 (Sur-Reply), 15-18.
`• Patent Owner’s argument implicitly assumes bodily incorporation of Tivoli into Gelb. This is
`improper.
`Paper 34 (Reply), 19; Paper 30 (Response), 43.
`“The test for obviousness is not whether the features of a secondary reference may be bodily
`incorporated into the structure of the primary reference.”
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (citation omitted).
`• Petitioner’s combination posits modifying Gelb’s software solution with the behavior disclosed
`in Tivoli. Tivoli teaches doing exactly this.
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`Ex. 1006 (Tivoli), 14; Paper 34 (Reply), 19-20; Paper 1
`(Petition), 38-41; Ex. 1003 (Zadok Dec.) ¶¶ 207-208.
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`Tivoli Does Not Add a Redundant Feature to Gelb
`Patent Owner argues that the proposed combination adds a feature from Tivoli that is
`already present in Gelb.
`
`Paper 30 (Response), 40.
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`• Patent Owner is incorrect. Gelb discloses a system with a plurality of user application
`program clients that provide files to Gelb’s storage system. Tivoli describes a plurality of
`client computers.
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`Paper 1 (Petition), 23-25, 35-41; Ex. 1003 (Zadok Dec.), ¶¶ 145-153, 198-211; Paper 34 (Reply), 16-17.
`
`• The proposed combination modifies Gelb with Tivoli’s teaching such that a user or user
`program in Gelb can send files and file attributes using a variety of client computers
`running client software. This feature is not found in Gelb.
`Paper 1 (Petition), 23-25, 35-41; Ex. 1003 (Zadok Dec.), ¶¶ 145-153, 198-211; Paper 34 (Reply), 16-17.
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`Dispute 6 – Gelb in View of Tivoli Teaches
`“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” (Claim 18)
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`Gelb Teaches Applying a Storage Pool Rule to the Characteristics of the
`Available Storage Pools to Assign the Storage Pool to the File
`• Gelb discloses applying storage pool rules to characteristics of those pools in order to
`assign a storage pool to a file in at least two ways.
`• First, Gelb discloses a storage pool rule of assigning the “LARGE” storage group—used
`to store sets with large files—to the files in a set when that set contains files over a
`defined size.
`
`Ex. 1005 (Gelb), 15:32-51 (excerpted); Paper 1 (Petition), 28-30; Ex. 1003 (Zadok
`Dec.), ¶¶ 169-173; Paper 34 (Reply), 21-22; Ex. 1027 (Zadok Reply Dec.), ¶¶ 52-55.
`- Gelb discloses applying this rule to the storage pool characteristic that the "LARGE" storage
`group is used to store sets with large files (i.e., sets with files over 9999999KB).
`Paper 1 (Petition), 28-30; Ex. 1005 (Gelb), 10:43-47; Ex. 1003 (Zadok Dec.), ¶¶ 169-173;
`Paper 34 (Reply), 21-22; Ex. 1027 (Zadok Reply Dec.), ¶¶ 52-55.
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`Gelb Teaches Applying a Storage Pool Rule to the Characteristics of the
`Available Storage Pools to Assign the Storage Pool to the File
`• Second, Gelb discloses a storage pool rule of assigning the “VIO” or “PRIMARY” storage
`group—used to store small temporary data sets—”based on VIO MAXSIZE in VIO storage
`group.”
`
`Ex. 1005 (Gelb), 15:32-51 (excerpted); Paper 1 (Petition), 28-30; Ex. 1003 (Zadok
`Dec.), ¶¶ 169-173; Paper 34 (Reply), 22-23; Ex. 1027 (Zadok Reply Dec.), ¶¶ 52-55.
`
`- Gelb discloses applying this rule to the storage pool characteristic that the VIO or PRIMARY
`storage group is used to store “small temporary data sets.”
`Paper 1 (Petition), 28-30; Ex. 1005 (Gelb), 10:43-46; Ex. 1003 (Zadok Dec.), ¶¶ 169-173; Paper 34
`(Reply), 22-23; Ex. 1027 (Zadok Reply Dec.), ¶¶ 52-55.
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`Patent Owner’s Arguments Ignore Gelb’s Express Disclosures
`Patent Owner argues that what the Petition describes as characteristics of
`the storage groups are characteristics of files or file sets.
`Paper 30 (Response), 45-50; Paper 38 (Sur-Reply), 18-19.
`• But Gelb itself states that there are four types of storage groups with the characteristics
`as described in the Petition and shown in Gelb’s source code.
`
`Ex. 1005 (Gelb), 10:43-47; Paper 1 (Petition), 28-30; Paper 34 (Reply),
`22; Ex. 1003 (Zadok Dec.), ¶ 169; Ex. 1027 (Zadok Reply Dec.), ¶ 52.
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`Patent Owner’s Arguments Ignore the Complementary Nature of File and
`Storage Pool Characteristics
`Patent Owner argues that what the Petition describes as characteristics of
`the storage groups are characteristics of files or file sets.
`Paper 30 (Response), 45-50; Paper 38 (Sur-Reply), 18-19.
`• Patent Owner’s argument ignores that storing files in storage pools designed to store a
`certain type of file necessarily means that the storage pool and the files destined for that
`storage pool have characteristics which coincide.
`
`• Dr. Zadok explained this duality with
`a hypothetical:
`
`Ex. 1027 (Zadok Reply Dec.), ¶¶ 52-55;
`Paper 34 (Reply), 21-23.
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`Dispute 7 – Gelb in View of Tivoli and Callaghan
`Teaches Translating DOS File Names to UNIX (Claim 22)
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`The Petition Showed Gelb in View of Tivoli and Callaghan Teaches Claim 22
`
`• Claim 22 requires: “… the computing platforms are selected from the group consisting of
`Windows, AIX, Linux, Solaris, Unix, Mac OS, OS/2, DOS, HP, IRIX, and OS/390, wherein the
`method further comprises translating the one or more attributes.”
`
`Ex. 1001 (132 Patent), Claim 22.
`
`• The Petition explained, and Patent Owner does not dispute, that:
`- Gelb teaches files having attributes such as file names;
`- Tivoli's computing platforms include DOS-derived and UNIX systems; and
`- Callaghan teaches translating a file name from DOS to UNIX
`Paper 1 (Petition), 42-43; Ex. 1003 (Zadok Dec.), ¶ 216; Paper 34 (Reply), 23.
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`Gelb Teaches Files Having Attributes Such as File Names
`
`• Gelb shows that files received by the system from user applications include “parameters
`… such as in the data set name (DSN).”
`Ex. 1005 (Gelb), 18:56-59; see also id., 4:16-24; Paper 1 (Petition), 43; Ex. 1003
`(Zadok Dec.), ¶ 216; Paper 34 (Reply), 23.
`
`• Patent Owner has not disputed this.
`
`See Paper 30 (Response), 50-55; Paper 38 (Sur-Reply), 19-21.
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`Tivoli’s Computing Platforms Include DOS-Derived and Unix Systems
`
`• Patent Owner does not dispute that Tivoli shows that its computing platforms, which
`communicate with each other, include DOS-derived and UNIX systems.
`Ex. 1006 (Tivoli), 14-16; Paper 1 (Petition), 41-43; Ex. 1003 (Zadok Dec.), ¶¶ 212-213, 216; Paper 34 (Reply), 23;
`See Paper 30 (Response), 50-55; Paper 38 (Sur-Reply), 19-21.
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`Ex. 1006 (Tivoli), 15-16.
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`Tivoli’s Computing Platforms Include DOS-Derived and Unix Systems
`
`• Windows 95, Windows 98, Windows NT, and OS/2 included and/or were derived from
`DOS.
`
`Ex. 1006 (Tivoli), 14-16; Paper 1 (Petition), 41-43; Ex. 1003 (Zadok Dec.), ¶¶ 212-213, 216; Paper 34 (Reply), 23;
`See Paper 30 (Response), 50-55; Paper 38 (Sur-Reply), 19-21.
`
`Ex. 1027 (Zadok Reply Dec.), ¶ 56;
`Paper 34 (Reply), 23-24; Ex. 1006
`(Tivoli), 16.
`
`Ex. 1027 (Zadok Reply Dec.), ¶ 57;
`Ex. 1007 (Callaghan), 9; Paper 34
`(Reply), 23-24.
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`Callaghan Teaches Translating a File Name from DOS to Unix
`
`• Callaghan acknowledged that DOS-based and UNIX systems would require resolving
`differences in (i.e., translating) file naming and attributes:
`
`Ex. 1007 (Callaghan), 9; Paper 1 (Petition), 41-43; Ex. 1003 (Zadok Dec.),
`¶¶ 212-217; Paper 34 (Reply), 23-24; Ex. 1027 (Zadok Reply Dec.), ¶¶ 56-60.
`
`• This, too, Patent Owner does not dispute.
`
`See Paper 30 (Response), 50-55; Paper 38 (Sur-Reply), 19-21.
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`Motivation to Combine Callaghan
`
`• As explained in the Petition and by Dr. Zadok, a POSITA would have been motivated to
`combine Callaghan because it discloses details of how to implement the Gelb and Tivoli
`systems so they are able to communicate with a wider range of systems.
`See Paper 1 (Petition), 44-46; Ex. 1003 (Zadok Dec.), ¶ 221.
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`Ex. 1003 (Zadok Dec.),
`¶ 221, Paper 1
`(Petition), 45.
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`Motivation to Combine Callaghan
`
`• Patent Owner acknowledges that Tivoli discloses communication between Windows,
`UNIX, and Macintosh systems but argues that this suggests a POSITA would not have
`combined Callaghan with Gelb and Tivoli.
`
`See Paper 30 (Response), 53-55; Paper 38 (Sur-Reply), 20-21.
`
`• Patent Owner misses the point. Gelb and Tivoli indeed show communication between
`systems operating on disparate hardware and operating systems but do not provide
`details of how data may be communicated or translated between the systems.
`See Paper 34 (Reply), 24.
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`Motivation to Combine Callaghan
`
`• For example, Tivoli suggests it may “utilize” NFS systems for communication but does not
`detail how to implement an NFS system. Callaghan provides such details.
`See Paper 1 (Petition), 44-45; Ex. 1003 (Zadok Dec.) ,¶¶ 219-221; Paper 34 (Reply), 24.
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`Ex. 1003 (Zadok Dec.), ¶¶ 219-222; Paper 1 (Petition), 44-45.
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`Patent Owner Misapprehends Windows’ DOS Underpinnings
`Patent Owner argues that Tivoli does not disclose DOS clients.
`Paper 30 (Response), 52-53; Paper 38 (Sur-Reply), 21.
`
`• This is incorrect. Patent Owner fails to recognize that at least Windows 95 and Windows 98
`(disclosed in Tivoli) included DOS.
`
`Ex. 1027 (Zadok Reply Dec.), ¶ 56; Paper 34 (Reply), 23-24.
`• Even Callaghan recognizes that Windows 95, NT, and OS/2 (all disclosed in Tivoli) are “DOS-
`derived” and have similar file name and attribute peculiarities that require translating.
`Ex. 1007 (Callaghan), 9; Ex. 1027 (Zadok Reply Dec.), ¶ 57; Paper 34 (Reply), 23-24
`
`Ex. 1007 (Callaghan), 9; Ex. 1027
`(Zadok Reply Dec.), ¶ 57; Paper 34
`(Reply), 23-24.
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`Ex. 1007 (Callaghan), 10; Ex. 1027
`(Zadok Reply Dec.), ¶¶ 56-57; Paper
`34 (Reply), 23-24.
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`Patent Owner Misapprehends Windows’ DOS Underpinnings
`Patent Owner argues that Callaghan’s teachings would have provided no benefit because
`Tivoli discloses Windows, not DOS.
`Paper 30 (Response), 52-53; Paper 38 (Sur-Reply), 21.
`
`• First, Patent Owner’s argument ignores that because DOS is a part of versions of Windows
`supported in Tivoli, Tivoli must at least accommodate for DOS for compatibility.
`Paper 1 (Petition), 41-43; Ex. 1003 (Zadok Dec.), ¶¶ 212-216; Paper 34
`(Reply), 23-24; Ex. 1027 (Zadok Reply Dec.), ¶¶ 56-57.
`• Second, Patent Owner ignores that Callaghan states that it applies (i.e., would be beneficial as
`applied) to “DOS-der