Trials@uspto.gov
`571-272-7822
`
` Paper 51
`
` Date: October 21, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DAEDALUS BLUE, LLC,
`Patent Owner.
`____________
`
`IPR2021-00831
`Patent 8,671,132 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, HYUN J. JUNG, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`Dismissing-in-Part and Denying-in-Part Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.4(c)
`
`
`
`
`571-272-7822
`
` Paper 51
`
` Date: October 21, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DAEDALUS BLUE, LLC,
`Patent Owner.
`____________
`
`IPR2021-00831
`Patent 8,671,132 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, HYUN J. JUNG, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`Dismissing-in-Part and Denying-in-Part Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.4(c)
`
`
`
`
`
`IPR2021-00831
`Patent 8,671,132 B2
`
`I.
`INTRODUCTION
`Microsoft Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 15–25 of U.S. Patent No. 8,671,132 B2 (Ex. 1001, “the
`’132 patent”). Paper 1 (“Pet.”). Daedalus Blue, LLC (“Patent Owner”) filed
`a Preliminary Response. Paper 7. In accordance with Board authorization,
`Petitioner filed a Reply to the Preliminary Response (Paper 13) and Patent
`Owner filed a Sur-Reply (Paper 15).1 Upon review of these papers, we
`instituted inter partes review, pursuant to 35 U.S.C. § 314, as to claims 15–
`25 based on the challenges set forth in the Petition. Paper 17 (“Decision to
`Institute” or “Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 30, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 34, “Pet. Reply”), and Patent Owner filed a Sur-Reply
`(Paper 38, “Sur-Reply”). Patent Owner filed a Motion to Exclude (Paper 42,
`“Mot. Exc.”), Petitioner filed an Opposition (Paper 43, “Opp. Mot. Exc.”),
`and Patent Owner filed a Reply (Paper 44, “Reply Mot. Exc.”). On August
`10, 2022, we held an oral hearing. A transcript of the hearing is of record.
`Paper 50 (“Tr.”).
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 15–25 of the ’132 patent are
`unpatentable.
`
`
`1 The parties filed confidential and non-confidential versions of their briefs.
`Certain confidential party briefs and exhibits are now publicly available and
`we refer to those versions. Paper 21; Ex. 2030, 5:17–7:21.
`
`2
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`A. Related Matters
`The parties indicate that related district court litigations are Daedalus
`Blue, LLC v. Microsoft Corp., No. 6:20-cv-01152-ADA (W.D. Tex.) and
`Daedalus Blue, LLC v. Oracle Corp. et al., No. 6:20-cv-00428-ADA (W.D.
`Tex.) (terminated). Pet. 3–4; Paper 4, 2.
`
`B. The ’132 Patent
`The ’132 patent relates to “policy-based data management on a
`distributed storage system.” Ex. 1001, 1:9–10. The ’132 patent addresses
`the shortcomings that “many known distributed storage systems have no
`method of prioritizing operations” and “current distributed storage systems
`are not capable of storing data using prioritized operations within multiple
`platforms.” Id. at 1:33–34, 1:40–42. Accordingly, the ’132 patent seeks to
`provide “a data management system, method, and apparatus that prioritize
`files within the network, with clients that operate based on a plurality of
`different operating platforms.” Id. at 2:7–10.
`Figure 1, reproduced below, illustrates an embodiment with a network
`that includes a number of client workstations that may operate on multiple
`different operating system platforms. Id. at 5:19–26.
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`
`Figure 1 is a schematic block diagram of network 100 with clients
`102, 104, 106, and 108. Id. at 5:19–22. “The network 100 is preferably
`configured to bear large amounts of traffic, particularly data packets and
`messaging packets related to data storage, retrieval, and maintenance.” Id. at
`5:29–31. Clients 102, 104, 106, and 108 are connected to local area network
`(LAN) 110, along with metadata servers 120 and 125. Id. at 5:32–35.
`Storage area network (SAN) 130 includes storage pools 150, 152, 154, and
`156. Id. at 5:48–51. The storage pools “may vary in storage type,
`configuration, location, accessibility, etc.” Id. at 5:51–53.
`
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`Figure 3, reproduced below, illustrates “executable modules and data
`structures for implementing file storage and classification” in the
`embodiment shown in Figure 1. Id. at 9:12–15.
`
`
`Figure 3 is a schematic block diagram that shows executable modules
`
`and data structures residing in client 102 and metadata server 125. Id. at
`9:12–17. Client 102 communicates with metadata server 125 to request a
`pool for storing file 310 on SAN 130. Id. at 9:21–23. For assigning a
`service class and storage pool to the file, client 102 transmits file attributes
`320 of the file to the metadata server via file transmission module 300. Id. at
`9:21–30. File attributes may include file size, an access list, the user who
`created the file, lock status, and the platform for which the file is formatted.
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`Id. at 9:35–44. Based on the file attributes, file evaluation module 350
`selects a service class for file 310, as well as a storage pool. Id. at 9:45–64.
`File evaluation module 350 returns a set of file metadata 360 that includes
`storage pool and service class designations 362 and 364 for use in
`subsequent file retrieval and usage. Id. at 10:4–20. File transmission
`module 300 receives storage pool designation 362 and routes file 310 to the
`corresponding storage pool. Id. at 10:37–40.
`
`C. Illustrative Claim
`Petitioner challenges claims 15–25 of the ’132 patent. Claims 15 and
`23 are independent, and claims 16–22, 24, and 25 depend therefrom. Claim
`15 is reproduced below.
`15. A method for handling files within a policy-based data
`management system, the method comprising:
`providing a policy set comprising at least one service class
`rule;
`receiving one or more attributes of a file from one of a
`plurality of clients, the clients comprising at least two
`different computing platforms;
`applying the service class rule to the file to assign a service
`class to the file; and
`conducting operations on the file in a manner according to
`the service class.
`Ex. 1001, 16:21–31.
`
`D. Instituted Grounds of Unpatentability
`We instituted inter partes review based on the following grounds of
`unpatentability under 35 U.S.C. § 103(a)2 as follows (Dec. 6–7, 36):
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 103.
`
`6
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`Patent 8,671,132 B2
`Claim(s) Challenged
`15–21, 23–25
`22
`15–21, 23–25
`
`Reference(s)/Basis
`Gelb3,4, Tivoli5
`Gelb, Tivoli,
`Callaghan6
`Devarakonda7
`
`35 U.S.C §
`103(a)
`103(a)
`102
`II. DISCUSSION
`A. Principles of Law
`To prevail in its challenges to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). To establish
`anticipation, each and every element in a claim, arranged as recited in the
`claim, must be found in a single prior art reference. See Net MoneyIN, Inc.
`v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp.
`v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the
`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`
`
`Because the ’132 patent has an effective filing date before the effective date
`of the applicable AIA amendments, we refer to the pre-AIA versions of
`35 U.S.C. §§ 102 and 103.
`3 Petitioner also lists “in view of . . . the knowledge of a POSITA.” Pet. 9.
`Although we do not list such knowledge separately, we consider it as part of
`our obviousness analysis. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63
`(Fed. Cir. 2013).
`4 U.S. Patent No. US 5,018,060, issued May 21, 1991 (Ex. 1005, “Gelb”).
`5 “Tivoli Storage Manager: A Technical Introduction,” November 28, 2001
`(Ex. 1006, “Tivoli”).
`6 “NFS Illustrated,” 2000 (Ex. 1007, “Callaghan”).
`7 U.S. Patent No. 7,269,612 B2, filed May 31, 2002, issued Sep. 11, 2007
`(Ex. 1008, “Devarakonda”).
`
`7
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner, relying on the declaration testimony of Dr.
`Erez Zadok, argues that a person having ordinary skill in the art (“POSITA”)
`would have had “at least a bachelor’s degree in computer science, electrical
`engineering, computer engineering, or a similar discipline, along with two
`years of experience in the design, operation, or control of data management
`systems, storage systems, and/or distributed storage systems.” Pet. 13
`(citing Ex. 1003 ¶¶ 30–34).
`
`
`8 Patent Owner does not present any objective evidence of nonobviousness
`as to the challenged claims.
`
`8
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`Patent 8,671,132 B2
`Patent Owner, relying on the declaration testimony of Dr. Christopher
`Jules White, argues that a POSITA would have had “at least a bachelor’s
`degree in computer science, electrical engineering, computer engineering, or
`a similar discipline, along with two years of experience in the design,
`operation, or control of networked data management systems, and/or
`distributed systems.” PO Resp. 6 (citing Ex. 2024 ¶ 47). Patent Owner
`further argues that “Dr. White’s opinions and the arguments in this paper
`apply under either proposed level of ordinary skill in the art.” Id. at 7 (citing
`Ex. 2024 ¶ 49).
`We adopt Petitioner’s definition of the level of skill except that we
`delete the phrase “at least” to avoid ambiguity in the definition of the level
`of skill. Patent Owner’s proposed level overlaps substantially with
`Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed
`level of qualifications, the outcome would remain the same.
`
`C. Claim Construction
`In an inter partes review, “[claims] of a patent . . . shall be construed
`using the same claim construction standard that would be used to construe
`the [claims] in a civil action under 35 U.S.C. 282(b), including construing
`the [claims] in accordance with the ordinary and customary meaning of such
`[claims] as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2020); see also
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`
`“a plurality of clients”
`Independent claims 15 and 23 recite “receiving one or more attributes
`of a file from one of a plurality of clients, the clients comprising at least two
`different computing platforms.” Patent Owner contends that the limitation
`
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`Patent 8,671,132 B2
`“plurality of clients” should be construed to mean “clients in a networked
`environment.” PO Resp. 8–10. Petitioner disagrees. Pet. Reply 2–4. Patent
`Owner’s proposed construction is relevant to our discussion below regarding
`whether Gelb is analogous art, and, therefore, we consider Patent Owner’s
`claim construction argument. For the reasons that follow, we decline to
`adopt Patent Owner’s proposed construction for the limitation “plurality of
`clients.”
`Patent Owner argues that the ’132 patent “states without qualification
`or reservation that ‘the invention’ involves networked, distributed systems”
`that “dictate the meaning of the ‘plurality of clients.’” PO Resp. 8–9 (citing
`Ex. 1001, 1:7–10, 2:20–24; Ex. 2024 ¶¶ 52–53). Patent Owner further
`argues that “[a] storage area network system is an example of a distributed
`storage system, and a distributed storage system involves a networked
`environment in which clients (such as workstations and servers) are
`connected to storage resources.” Id. at 8 (citing Ex. 1001, 1:17–23, 5:22–26;
`Ex. 2024 ¶ 53). Patent Owner contends that the ’132 patent describes “that
`the problems the inventors sought to address were problems in distributed
`storage systems” and “in response to the problems and needs in the art that
`have not yet been fully solved by currently available storage area network
`systems.” Id. at 9 (citing Ex. 1001, 1:24–2:16, 2:20–24; Ex. 2024 ¶¶ 54–56).
`Patent Owner further contends that a “storage area network system is an
`example of a distributed storage system, and a distributed storage system
`involved a networked environment.” Id. (citing Ex. 1001, 1:17–20). Patent
`Owner concludes that “[b]ecause the inventors of the ’132 Patent addressed
`problems in the networked environments of distributed storage systems, the
`‘plurality of clients’ refers to clients in a networked environment.” Id. at 9–
`10 (citing Ex. 2024 ¶ 57).
`
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`IPR2021-00831
`Patent 8,671,132 B2
`We begin with the language of the independent challenged claims.
`Claim 15 recites “[a] method for handling files within a policy-based data
`management system, the method comprising.” Ex. 1001, 16:21–22. Claim
`23 recites “[a] storage device storing computer code executable by a
`processor to carry out a method comprising.” Id. at 16:61–62. The
`remaining limitations of the independent claims are the same and directed to
`(1) providing a policy set with at least one service class rule; (2) receiving
`one or more attributes of a file from one of a plurality of clients, the clients
`comprising at least two different computing platforms; (3) applying the
`service class rule to the file to assign a service class to the file; and (4)
`conducting operations on the file in a manner according to the service class.
`Id. at 16:23–31, 16:63–17:4. The involved claims do not recite a
`“distributed storage system,” a “storage area network system,” or a
`“networked, distributed system [environment].” Thus, even if Patent Owner
`were correct that an invention that involves a networked, distributed system
`environment dictates that the plurality of clients also be in the networked
`environment, the claims themselves don’t require a networked, distributed
`system environment. Indeed, the preamble of claim 23 recites “a storage
`device,” and the preamble of claim 15 recites a “data management system,”
`terms that are much broader than those the Patent Owner uses to describe
`“the invention.” PO Resp. 8–10.
`Although Patent Owner never explains what “clients in a networked
`environment” means, Dr. White testifies that “a person of ordinary skill in
`the art would have understood the ‘plurality of clients’ to refer to clients in a
`networked distributed systems environment, such that each challenged claim
`requires a networked environment where clients communicate through a
`network.” Ex. 2024 ¶ 50. But, again, there is nothing in the claims that
`
`11
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`Patent 8,671,132 B2
`recites a “networked distributed systems environment,” a “networked
`environment,” or “clients communicating through a network.” The method
`claims are directed to performing certain steps to a file from one of a
`plurality of clients. No networking or clients communicating through a
`network is claimed or even shown to be relevant to what is claimed. Indeed,
`in urging us to narrowly construe the term “plurality of clients,” Patent
`Owner does not discuss the claim language at all. PO Resp. 8–10. But, the
`name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`Cir. 1998). Here, Patent Owner fails to direct us to anything in the claim
`language itself that would support Patent Owner’s construction of “plurality
`of clients,” and we find nothing that supports the argument.
`Patent Owner also does not direct us to anything in the prosecution
`history of the application file that would support the argument for a narrow
`construction of the term “plurality of clients.” Rather, Patent Owner and Dr.
`White only discuss certain descriptions of the ’132 patent, while ignoring
`other descriptions. PO Resp. 8–10 (citing Ex. 1001, 1:7–10, 1:17–2:16,
`2:20–24, 5:22–26). For example, the ’132 patent describes that “[t]he
`described embodiments are to be considered in all respects only as
`illustrative and not restrictive. The scope of the invention is, therefore,
`indicated by the appended claims rather than by the forgoing description.”
`Ex. 1001, 14:65–15:1 (emphasis added). Claim 15 has not changed since it
`was originally filed and only the preamble of claim 23 was amended slightly
`in response to a 35 U.S.C. § 101 rejection. Ex. 1002, 38–39, 226, 235.
`Thus, the claims before us are the same (claim 15) if not very similar (claim
`23) to the claims that were originally filed as part of the specification. And,
`at the time of filing the original claims, Patent Owner chose its claims and
`specifically indicated that the scope of the invention “is indicated by the
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`Patent 8,671,132 B2
`appended claims rather than by the foregoing description.” Ex. 1001,
`14:65–15:1. The claims before us, that are the same if not very similar to the
`original claims, do not support a construction of “plurality of clients” to be
`“clients in a networked environment” such that the clients communicate
`through a network.
`The passages in the ’132 patent that Patent Owner relies on in support
`of its proposed construction are directed to, at most, networked or distributed
`storage devices accessed by clients. Id. at 1:7–10 (describing that the
`invention “relates to networking and data storage” and to a “method for
`policy-based data management on a distributed storage system”), 2:20–24
`(describing that the clients of the distributed storage system “may, in some
`cases, be servers that transmit data between the distributed storage system
`and individual computers”). Moreover, the ’132 patent describes problems
`that occurred in networked storage systems and have not been shown by
`Patent Owner to require construing the broad claims to include clients in a
`networked environment. Id. at 1:24–2:16.
`In any event, even if the disclosure in the ’132 patent relied on by
`Patent Owner were as restrictive as Patent Owner urges, which we find that
`it is not, our reviewing court has explained, “each claim does not necessarily
`cover every feature disclosed in the specification,” and “it is improper to
`limit the claim to other, unclaimed features.” Ventana Med. Sys., Inc. v.
`BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006). Furthermore,
`our reviewing court “has repeatedly cautioned against limiting the claimed
`invention to preferred embodiments or specific examples in the
`specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`(Fed. Cir. 2015); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
`875 (Fed. Cir. 2004) (noting that “it is important not to import into a claim
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`limitations that are not a part of the claim”). “[I]t is the claims, not the
`written description, which define the scope of the patent right.” Williamson,
`792 F.3d at 1346–47 (alteration in original); see also Phillips, 415 F.3d at
`1312 (noting that “[i]t is a bedrock principle of patent law that the claims of
`a patent define the invention to which the patentee is entitled the right to
`exclude”). We decline Patent Owner’s invitation to limit the claims to
`unclaimed features.
`For all of the above reasons, we decline to adopt Patent Owner’s
`construction of “plurality of clients” to mean “clients in a networked
`environment.”
`
`“computing platforms”
`Independent claims 15 and 23 recite “the clients comprising at least
`two different computing platforms.” Patent Owner contends that the
`limitation “computing platforms” should be construed to mean “operating
`systems.” PO Resp. 10–12. Petitioner disagrees and argues that “computing
`platforms” should be construed to mean “the combination of computer
`hardware and an operating system.” Pet. Reply 4–6. We understand that
`resolution of this issue is relevant only to Petitioner’s challenge based on
`Devarakonda. PO Resp. 2–3, 38–39 (arguing that Gelb alone fails to teach a
`plurality of clients but not addressing Gelb in combination with Tivoli), 55–
`59 (arguing that Devarakonda fails to disclose clients that comprise at least
`two different operating systems); Pet. Reply 15–16; Tr. 5:16–22, 7:24–8:3,
`25:22–26:23. For reasons explained below, we need not decide Petitioner’s
`challenge based on Devarakonda. Accordingly, for purposes of our
`Decision, we need not construe “computing platforms.”
`
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`Other Terms
`We need not otherwise construe any other terms in the claims. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter
`partes review).
`
`D. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli
`
`1. Gelb
`Gelb describes a need in storing computerized data “to insulate the
`application programmers from the current requirement that their respective
`programs must have some information about the physical parameters of the
`peripheral data storage.” Ex. 1005, 1:30–34. Accordingly, Gelb defines
`data classes that “are set up so as to enable a host processor to respond to
`data set parameters to implicitly select data storage units which can achieve
`the desired system operations for satisfying the data set parameters.” Id. at
`4:14–20.
`Figure 1, reproduced below, illustrates a data processing system
`embodiment that Gelb asserts “makes the data processing system easier to
`use by application programmers.” Id. at 5:55–56.
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`
`Figure 1 “shows a data processing system having a plurality of host
`processors 10 sharing a peripheral data storage system 12 via a plurality of
`input-output connections (such as I/O channels) 11.” Id. at 5:51–55.
`Figure 7, reproduced below, illustrates a flowchart for the automatic
`selection of classes that occurs between declaring a data set and requesting
`data space in system 12 for the data set. Id. at 18:23–27.
`
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`The flowchart in Figure 7 begins with step 141, which is a “machine –
`implemented selection of a data class,” after a “data-set class selection
`request is received from a user program.” Id. at 18:47–54. “Upon selection
`of a data class, the second step 142 selects a storage class.” Id. at 18:64–65.
`If a storage class is selected, the flowchart moves on to step 144, where “a
`management class is machine selected.” Id. at 19:16–18. “The machine
`selection of a management class completes the logical machine-executed
`class selection process all of which is in preparation for selection of a
`storage group of volumes,” in step 145. Id. at 19:24–42. In step 146, “the
`identifications of the selected classes and the data set are retentively stored
`within the FIG. 1 illustrated data processing system as a control record.” Id.
`at 19:44–48. “At this time the data processing system is primed for
`receiving an allocation request(s) for the data set.” Id. at 19:55–57.
`Figure 8, reproduced below, illustrates a flowchart for allocating data
`storage space in a peripheral storage device for a data set. Id. at 5:43–46.
`
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`The flowchart in Figure 8 begins with step 150, in which an allocation
`request for a data set is received from a user program. Id. at 19:59–62. In
`step 151, the pertinent control record is read to determine if a storage class
`was selected for the data set. Id. at 19:62–64. If a storage class was
`selected, the flowchart moves on to step 152, where “storage is accessed
`using the devices assigned to a storage group.” Id. at 19:68–20:2.
`
`2. Tivoli
`Tivoli provides that the “Tivoli Storage Manager is the core product
`of the Tivoli Storage Management product set” and “provides a solution for
`distributed data and storage management in an enterprise network
`environment.” Ex. 1006, 7. Tivoli describes the Tivoli Storage Manager as
`implemented as a client server software application with a server software
`component, client, and storage agent, among other products. Id. at 7–8.
`“The client software can run on different systems, including laptop
`computers, PCs, workstations, or server systems.” Id. at 8. Further, “[t]he
`storage agent software in conjunction with the server software enables the
`implementation of LAN-free backup solutions exploiting SAN
`infrastructure.” Id. Tivoli describes that the “server and client software is
`available on many different operating system platforms and can exploit
`different communication protocols.” Id. at 14.
`
`3. Discussion
`Petitioner contends that claims 15–21 and 23–25 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Gelb and Tivoli. Pet. 20–41. In
`support of its showing, Petitioner relies upon the declaration of Dr. Zadok.
`Id. (citing Ex. 1003). Patent Owner makes several arguments. PO Resp.
`12–50. In support of its arguments, Patent Owner relies upon the declaration
`
`18
`
`
`
`IPR2021-00831
`Patent 8,671,132 B2
`of Dr. White. Id. (citing Ex. 2024). For the reasons that follow, we
`conclude that Petitioner has met its burden of proving by a preponderance of
`the evidence that each of the challenged claims 15–21 and 23–25 would
`have been obvious in view of the asserted prior art.
`
`a. Whether Gelb is Analogous Art
`Patent Owner argues that Gelb is not analogous art. PO Resp. 12–34.
`The test for determining whether a prior art reference constitutes analogous
`art to the claimed invention is “(1) whether the [prior] art is from the same
`field of endeavor, regardless of the problem addressed and, (2) if the
`reference is not within the field of the inventor’s endeavor, whether the
`reference still is reasonably pertinent to the particular problem with which
`the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004). “Prior art is analogous if it is from the same field of endeavor or if it
`is reasonably pertinent to the particular problem the inventor is trying to
`solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fec. Cir.
`2015). A reference is analogous art if either of these two tests is met.
`Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir.
`2014). The Federal Circuit has indicated that the scope of analogous art is to
`be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
`Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v.
`Teleflex, Inc., 550 U.S. 398 . . . (2007), directs us to construe the scope of
`analogous art broadly . . . .”).
`Patent Owner contends that “both the specification and the claims of
`the ’132 Patent reflect that” the “field of endeavor is distributed storage
`systems.” PO Resp. 13–14 (citing Ex. 2024 ¶¶ 67–69). According to Patent
`Owner, the ’132 patent expressly states that “the invention relates to a
`
`19
`
`
`
`IPR2021-00831
`Patent 8,671,132 B2
`system and method for policy-based data management on a distributed
`storage system” and that the invention overcomes “drawbacks with existing
`storage area networks, a type of distributed storage system.” Id. at 14 (citing
`Ex. 1001, 1:6–10).
`Patent Owner argues that the claims also “reflect that the ’132
`Patent’s field of endeavor is distributed storage systems.” Id. Patent Owner
`argues that the claims include “a plurality of clients, the clients including at
`least two different computing platforms” and that based on Patent Owner’s
`proposed construction for “a plurality of clients” the “clients [are] in a
`networked environment.” Id. at 14–15. Patent Owner further argues that
`“[t]hat construction follows from the specification’s statements that ‘the
`invention’ involves distributed storage systems.” Id.
`For the reasons discussed above, we do not adopt Patent Owner’s
`construction for “plurality of clients” to mean “clients in a networked
`environment.” Thus, we disagree with Patent Owner that the claims reflect
`that the ’132 patent’s field of endeavor is distributed storage systems.
`During oral argument, Patent Owner represented that its “analogous art
`argument depends on the construction of clients in a networked environment
`. . . for the first prong.” Tr. 39:20–40:11; see also Sur-Reply 7–8 (“[t]he
`lack of clients in a networked environment takes Gelb’s single-machine
`mainframe out of the ’132 Patent’s field of endeavor of distributed storage
`systems, which involves networked computers”). Accordingly, we
`determine that Patent Owner has failed to show that Gelb is not relevant to
`the obviousness analysis and agree with Petitioner that “Gelb’s teachings
`
`20
`
`
`
`IPR2021-00831
`Patent 8,671,132 B2
`align closely to the subject matter of the ’132 Patent and therefore are
`analogous.” Pet. Reply 6.9
`For the sake of completeness, we also address Patent Owner’s
`arguments that Gelb is not reasonably pertinent to the problems the inventors
`of the ’132 patent are trying to solve. PO Resp. 21–32. Patent Owner
`argues that the ’132 patent defines distributed storage systems as the field of
`invention and consistent with that definition, all of the problems that it
`describes are “particular to distributed storage systems.” Id. at 21–22 (citing
`Ex. 1001, 1:7–2:3; Ex. 2024 ¶¶ 91–96). Patent Owner identifies four
`“distributed storage system problems.” Id. at 22. However, in doing so,
`Patent Owner defines the problems too narrowly. “[T]he reasonable-
`pertinence analysis must be carried out through the lens of a [person having
`ordinary skill in the art] who is considering turning to art outside her field of
`endeavor.” Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353,
`1360 (Fed. Cir. 2020). “Such a[n artisan]—resigned to considering art
`outside her field of endeavor—would thus not identify the problems so
`narrowly so as to rule out all such art.” Id. Patent Owner’s descriptions of
`the inventors’ problems improperly focuses on the specific components of a
`distributed storage system, effectively precluding consideration of references
`outside of what Patent Owner identifies as the ’132 patent’s field of
`endeavor. See PO Resp. 23 (“Gelb, by contrast, has nothing to do with
`distributed storage systems”).
`
`
`9 Patent Owner argues that “the petition appears to have overlooked the
`analogous art requirement.” PO Resp. 32–34. We disagree. Petitioner
`explains that both Gelb and Tivoli are generally directed to data storage
`systems that accept data from users or clients and routes the data to a storage
`device based on policies, which we find is a more accurate construction of
`the field of endeavor and reflects what is
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