`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Microsoft Ex. 1036, p. 1
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Instituted Grounds
`
`• 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.
`
`• Claims 15-21, 23-25 as anticipated by Devarakonda.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`Microsoft Ex. 1036, p. 2
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Dispute Summary
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`Microsoft Ex. 1036, p. 3
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Disputed Issues – Claim Construction
`
`• “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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`Microsoft Ex. 1036, p. 4
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Disputed Issues – Prior Art Status of Gelb and Tivoli
`
`• Gelb is analogous art.
`
`• Tivoli was a printed publication before the critical date of the ’132 Patent.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`Microsoft Ex. 1036, p. 5
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Disputed Issues – Motivation to Combine
`
`• A POSITA would have been motivated to combine Gelb with Tivoli.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`Microsoft Ex. 1036, p. 6
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Disputed Issues – Prior Art Teachings and Disclosures
`
`• 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).
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`Microsoft Ex. 1036, p. 7
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Disputed Issues – Motion to Exclude
`
`• Exs. 1006, 1010, and 1029 are admissible.
`
`• Exs. 1006, 1010, and 1029 are not hearsay or, alternatively, fall within hearsay exceptions.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`Microsoft Ex. 1036, p. 8
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Dispute 1 – Construction of “Plurality of Clients”
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`Microsoft Ex. 1036, p. 9
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`Microsoft Ex. 1036, p. 10
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`The Plain Meaning is Not Limited to a Networked Environment
`
`• 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:
`
`
`
`IPR2021-00831IPR2021-00831
`
`Ex. 1001 (132 Patent), 1:6-10; Paper 34 (Reply), 3;
`see also Ex. 1001 (132 Patent), 2:20-24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`Microsoft Ex. 1036, p. 11
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Patent Owner Attempts to Improperly Read Limitations into the Claims
`
`• 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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`Microsoft Ex. 1036, p. 12
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Microsoft Did Not Take an Inconsistent Position in District Court
`
`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.
`
`Paper 34 (Reply), 3.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`Microsoft Ex. 1036, p. 13
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Dispute 2 – Construction of “Computing Platform”
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`Microsoft Ex. 1036, p. 14
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`Microsoft Ex. 1036, p. 15
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`Microsoft Ex. 1036, p. 16
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`Ex. 1027 (Zadok Reply Dec.), ¶¶ 49-51; Paper 34 (Reply), 4-5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`Microsoft Ex. 1036, p. 17
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`Microsoft Ex. 1036, p. 18
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`IPR2021-00831IPR2021-00831
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`See Ex. 1007 (Callaghan), 9.
`
`19
`
`Microsoft Ex. 1036, p. 19
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Dispute 3 – Gelb Is Analogous Art
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`Microsoft Ex. 1036, p. 20
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`Paper 30 (Response), 16.
`
`Microsoft Ex. 1036, p. 21
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`Microsoft Ex. 1036, p. 22
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`Microsoft Ex. 1036, p. 23
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`Microsoft Ex. 1036, p. 24
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Dispute 4 – Tivoli Was a Printed Publication by the
`Critical Date of the ’132 Patent
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`Microsoft Ex. 1036, p. 25
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`Microsoft Ex. 1036, p. 26
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`Microsoft Ex. 1036, p. 27
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`Microsoft Ex. 1036, p. 28
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Dispute 5 – A POSITA Would Have Been Motivated
`to Combine Gelb with Tivoli
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`Microsoft Ex. 1036, p. 29
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`Paper 17 (Institution
`Decision), 18.
`
`Microsoft Ex. 1036, p. 30
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`Microsoft Ex. 1036, p. 31
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`Ex. 1006 (Tivoli), 14; Paper 34 (Reply), 19-20; Paper 1
`(Petition), 38-41; Ex. 1003 (Zadok Dec.) ¶¶ 207-208.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`Microsoft Ex. 1036, p. 32
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`• 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.
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`Microsoft Ex. 1036, p. 33
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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)
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`Microsoft Ex. 1036, p. 34
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`Microsoft Ex. 1036, p. 35
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`Microsoft Ex. 1036, p. 36
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`Microsoft Ex. 1036, p. 37
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`Microsoft Ex. 1036, p. 38
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`Dispute 7 – Gelb in View of Tivoli and Callaghan
`Teaches Translating DOS File Names to UNIX (Claim 22)
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`Microsoft Ex. 1036, p. 39
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`Microsoft Ex. 1036, p. 40
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`Microsoft Ex. 1036, p. 41
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`Ex. 1006 (Tivoli), 15-16.
`
`Microsoft Ex. 1036, p. 42
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`Microsoft Ex. 1036, p. 43
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`Microsoft Ex. 1036, p. 44
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`* * *
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`Ex. 1003 (Zadok Dec.),
`¶ 221, Paper 1
`(Petition), 45.
`
`Microsoft Ex. 1036, p. 45
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`Microsoft Ex. 1036, p. 46
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`* * *
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`Ex. 1003 (Zadok Dec.), ¶¶ 219-222; Paper 1 (Petition), 44-45.
`
`Microsoft Ex. 1036, p. 47
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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.
`
`Ex. 1007 (Callaghan), 10; Ex. 1027
`(Zadok Reply Dec.), ¶¶ 56-57; Paper
`34 (Reply), 23-24.
`
`
`
`IPR2021-00831IPR2021-00831
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`Microsoft Ex. 1036, p. 48
`Microsoft v. Daedalus Blue
`IPR2021-00831
`
`
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
