Trials@uspto.gov
`571-272-7822
`
` Paper 17
`
`
`
` Entered: November 1, 2021
`
`
`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.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`

`

`IPR2021-00831
`Patent 8,671,132 B2
`
`INTRODUCTION
`I.
`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 8 (“Prelim. Resp.”). In accordance with
`Board authorization, Petitioner filed a Reply to the Preliminary Response
`(Paper 14, “Pet. Reply”) and Patent Owner filed a Sur-Reply (Paper 16,
`“Sur-reply”).1
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). Upon consideration of the Petition, the Preliminary Response, and
`the evidence of record, we determine that Petitioner has established a
`reasonable likelihood of prevailing with respect to the unpatentability of at
`least one claim of the ’132 patent. Accordingly, for the reasons that follow,
`we institute an inter partes review of claims 15–25 of the ’132 patent.
`
`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.) (“the
`underlying litigation”) and Daedalus Blue, LLC v. Oracle Corp. et al., No.
`6:20-cv-00428-ADA (W.D. Tex.) (terminated). Pet. 4; Paper 4, 2.
`Petitioner also indicates that U.S. Patent Nos. 8,381,209 and 8,572,612,
`
`
`1 The parties filed confidential and non-confidential versions of their briefs.
`This Decision refers to the non-confidential (public) versions.
`
`2
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`IPR2021-00831
`Patent 8,671,132 B2
`which are asserted in the underlying litigation, are also subject to inter
`partes reviews. Pet. 4.
`
`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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`IPR2021-00831
`Patent 8,671,132 B2
`
`
`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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`IPR2021-00831
`Patent 8,671,132 B2
`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 a 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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`IPR2021-00831
`Patent 8,671,132 B2
`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. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 15–25 are unpatentable based on the
`following grounds (Pet. 9):
`
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`IPR2021-00831
`Patent 8,671,132 B2
`Claim(s) Challenged
`15–21, 23–25
`22
`15–21, 23–25
`
`
`
`35 U.S.C §
`103(a)2
`103(a)
`102
`
`Reference(s)/Basis
`Gelb3, Tivoli4
`Gelb, Tivoli,
`Callaghan5
`Devarakonda6
`
`II. DISCUSSION
`A. Claim Construction
`In this inter partes review, claims are 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). 37 C.F.R. § 42.100(b) (2020). The claim
`construction standard includes construing 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 id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`
`“computing platforms”
`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
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. The ’132 patent was
`filed on March 14, 2003. Ex. 1001, code (22). Because the filing date is
`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 U.S. Patent No. US 5,018,060, issued May 21, 1991 (Ex. 1005, “Gelb”).
`4 “Tivoli Storage Manager: A Technical Introduction,” June 15, 2001 (Ex.
`1006, “Tivoli”).
`5 “NFS Illustrated,” 2000 (Ex. 1007, “Callaghan”).
`6 U.S. Patent No. 7,269,612 B2, filed May 31, 2002, issued Sep. 11, 2007
`(Ex. 1008, “Devarakonda”).
`
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`Patent 8,671,132 B2
`different computing platforms.” Patent Owner contends that the limitation
`“computing platform[]” should be construed to mean “the operating system
`of the claimed client workstation or server.” Prelim. Resp. 12. Patent
`Owner argues that claim 22 “makes this clear when it recites a subset” of
`“computing platforms.” Id. Patent Owner further directs attention to the
`Specification of the ’132 patent in support of its proposed construction. Id.
`at 13–14 (citing Ex. 1001, 1:40–46, 2:6–16, 2:28–32, 3:25–27, 5:19–29,
`9:21–29).
`Although Petitioner does not propose a construction for “computing
`platforms,” it appears to us that Petitioner construes the limitation the same
`as Patent Owner. Pet. 25 (“Tivoli explains that the client software supports a
`variety of . . . operating systems, including UNIX, Windows, and
`Macintosh.”); id. at 52 (“The client applications on an application server can
`be run on different operating systems.”); see also Ex. 1003 ¶¶ 152 (Zadok
`declaration) (“Tivoli discloses that the client software supports a number of
`computing platforms (operating systems)”), 235. At this juncture of the
`proceeding and based on the current record, we adopt Patent Owner’s
`proposed construction because the proposed construction is reasonable in
`light of the Specification of the ’132 patent and is not, at this time,
`apparently contested by Petitioner. Accordingly, we adopt Patent Owner’s
`proposed construction for “computing platform[]” to mean “the operating
`system of the claimed client workstation or server.”
`For purposes of this Decision, we need not expressly construe any
`other claim term. 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
`
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`Patent 8,671,132 B2
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`B. Principles of Law
`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).
`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;7 and (4) when in evidence, objective
`
`
`7 Relying on the testimony of Dr. Erez Zadok, Petitioner offers an
`assessment as to the level of ordinary skill in the art at the time of the ’132
`patent. Pet. 13 (citing Ex. 1003 ¶¶ 30–34). For example, Dr. Zadok states
`that a person having ordinary skill in the art would have had “at least a four-
`year degree in computer science, electrical engineering, computer
`engineering, or a related field and about two years of relevant experience in
`the design, operation, and management of data storage systems.” Ex. 1003
`
`9
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`Patent 8,671,132 B2
`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli
`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). In support of its arguments, Patent Owner relies upon
`the declaration of Dr. White. Prelim. Resp. (citing Ex. 2001).
`
`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.
`
`
`¶ 32. Patent Owner does not propose an alternative assessment. See Prelim.
`Resp. 15. To the extent necessary, and for purposes of this Decision, we
`accept the assessment offered by Petitioner as it is consistent with the ’132
`patent and the asserted prior art.
`
`
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`Patent 8,671,132 B2
`
`
`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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`Patent 8,671,132 B2
`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 devices for a data set. Id. at 5:43–46.
`
`
`
`12
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`Patent 8,671,132 B2
`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
`Tivoli8 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
`
`
`8 Petitioner argues that Tivoli was published on June 15, 2001 and was
`publicly available at least on November 28, 2001, and is prior art under 35
`U.S.C. § 102(b). Pet. 8, 15–17; Ex. 1003 ¶ 110; Ex. 1010; Ex. 1011 (Tivoli
`Redbooks entry and Hall affidavit). Patent Owner withdrew its contention
`that it can antedate Tivoli. Sur-reply 6 n.1. Patent Owner, however, argues
`that “Petitioner has not provided sufficient evidence to prove that Tivoli was
`published and publicly accessible by June 15, 2001.” Prelim. Resp. 23 n.4.
`Patent Owner at this time provides no reasons why Petitioner’s showing with
`respect to a November 28, 2001 date is insufficient. Id. We preliminarily
`determine that Petitioner has shown sufficiently that Tivoli was published
`and publicly available at least on November 28, 2001. Pet. 8, 15–17; Ex.
`1003 ¶ 110; Ex. 1010; Ex. 1011.
`
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`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
`The preamble of claim 15 recites “[a] method for handling files within
`a policy-based data management system.” Ex. 1001, 16:21–22. Petitioner
`contends that, to the extent the preamble is limiting, Gelb teaches the recited
`limitations because it “relates to ‘computer-controlled peripheral data
`storage’ and ‘the global management of data storage’ in a ‘data storage
`system.’” Pet. 20 (quoting Ex. 1005, 1:9–11, 5:19–21). Petitioner further
`contends that Gelb’s data management system is “policy-based” because it
`teaches “automatic class selection,” and that it is for “handling files.” Id. at
`20–21 (citing Ex. 1005, 4:25–43, 18:23–52, Figs. 6, 7).
`Claim 15 recites “providing a policy set comprising at least one
`service class rule.” Ex. 1001, 16:23–24. Petitioner contends Gelb teaches
`this limitation. Pet. 21. In particular, Petitioner contends that “Gelb teaches
`three ‘service classes’ assigned to each file (‘data set’): data class, storage
`class, and management class.” Id. (citing Ex. 1005, 4:25–43). Petitioner
`further contends that “Gelb teaches a ‘policy set’ comprising multiple
`service class rules.” Id. at 23 (citing Ex. 1003 ¶¶ 131, 143–144; Ex. 1005,
`11:53–57).
`Claim 15 recites “receiving one or more attributes of a file from one
`of a plurality of clients, the clients comprising at least two different
`computing platforms.” Ex. 1001, 16:25–27. Petitioner contends the
`combination of Gelb and Tivoli teaches this limitation. Pet. 23. In
`particular, Petitioner contends that Gelb teaches a user providing “attributes
`
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`of a file” before the system receives a file. Id. at 23–24 (citing Ex. 1003
`¶¶ 145–147; Ex. 1005, 4:44–49; 18:12–14, 18:47–59). Petitioner further
`contends “Gelb teaches that a ‘plurality of clients,’ i.e., user application
`programs, may provide files to Gelb’s storage system.” Id. at 24 (citing Ex.
`1003 ¶ 148; Ex. 1005, 15:56–57, Fig. 4). In addition, Petitioner contends
`that Tivoli teaches “a plurality of clients,” to the extent clients are client
`computers. Id. (citing Ex. 1003 ¶ 149; Ex. 1006, 8, Fig. 2). Accordingly,
`Petitioner contends “Gelb combined with Tivoli teaches ‘receiving one or
`more attributes of a file from one of a plurality of clients.’” Id. at 25 (citing
`Ex. 1003 ¶ 151). Further, Petitioner contends that Tivoli also teaches that
`the clients comprise “at least two different computing platforms.” Id. (citing
`Ex. 1003 ¶¶ 152–153; Ex. 1006, 15–16, Table 3).
`Petitioner provides reasons to combine Gelb and Tivoli. Id. at 35–41.
`For example, Petitioner contends that “a POSITA9 would have been
`motivated to implement the design of Tivoli’s Storage Manager Server and
`client software in Gelb to create a system in which the system administrator
`aspect of the storage system and the client/application programmer aspect of
`the storage system are located on different computers” which would increase
`flexibility “where the users of the storage system may be located at different
`computers within a network.” Id. at 38–39 (citing Ex. 1003 ¶ 205).
`Petitioner further asserts that a “POSITA would have further recognized that
`allowing the client software to support different operating systems would
`make Gelb’s system even more flexible.” Id. at 39 (citing Ex. 1003 ¶ 207).
`Patent Owner argues that neither Gelb nor Tivoli teaches “receiving
`one or more attributes of a file from one of a plurality of clients, the clients
`
`
`9 A person of ordinary skill in the art.
`
`15
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`comprising at least two different computing platforms.” Prelim. Resp. 23.
`In particular, Patent Owner argues that “Gelb does not disclose or render
`obvious a networked system, much less one with distributed heterogeneous
`client workstation or servers comprising different operating systems.” Id. at
`24. Rather, Patent Owner argues, “Gelb teaches a non-distributed single-
`machine single-operating system mainframe with peripheral storage devices
`attached.” Id. (citing Ex. 1005, Figs. 4, 5). Patent Owner further argues that
`although Petitioner relies on Tivoli for teaching “‘one of a plurality of
`clients,’ it is not clear whether Petitioner is also relying upon Tivoli for the
`‘receiving one or more attributes of a file’ portion of this limitation,” and in
`any case, “Tivoli does not disclose, and certainly does not teach, ‘receiving
`one or more attributes of a file.’” Id. at 25 (citing Pet. 24–25; Ex. 2001
`¶ 44).
`
`Patent Owner’s argument that Gelb fails to describe a networked
`system is misplaced as claim 15 does not recite “a networked system.”
`Moreover, Patent Owner’s arguments attacking each reference individually
`are unavailing, because the challenge is based on the combined teachings of
`Gelb and Tivoli as set forth in the Petition. See In re Keller, 642 F.2d 413,
`426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
`references individually where, as here, the rejections are based on
`combinations of references.”). For instance, Patent Owner argues that Gelb
`fails to teach “at least two different computing platforms.” Prelim.
`Resp. 23–25. Petitioner, however, relies on Tivoli to teach client computers
`that operate on different computer platforms, such as UNIX and Windows.
`Pet. 24–25 (citing Ex. 1006, 15–16). Accordingly, Patent Owner’s
`arguments attacking Gelb for not teaching the same is unavailing. Similarly,
`Patent Owner’s argument that Tivoli does not disclose or teach “receiving
`
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`one or more attributes of a file” (Prelim. Resp. 25–26) is also misplaced, as
`Petitioner relies on Gelb to teach “receiving one or more attributes of a file.”
`Pet. 23–24.
`Patent Owner also argues that “Petitioner has not shown that a
`POSITA would have been motivated to modify Gelb in view of Tivoli in the
`manner proposed (i.e., by changing the system architecture of Gelb) or that
`such a combination would have been simple, straightforward, and yielded
`predictable results.” Prelim. Resp. 26–39 (citing Ex. 2001). At this juncture
`of the proceeding, we determine that Patent Owner’s arguments do not
`undermine Petitioner’s reasons for combining Gelb and Tivoli.
`In particular, Dr. White’s testimony on the matter is based on a rigid
`view of Gelb or Tivoli alone without considering what the combined
`teachings of Gelb and Tivoli would have suggested to a person having
`ordinary skill in the art. For example, Dr. White testifies that Gelb fails to
`teach how its “‘administrative component’ would manage cross-platform
`differences or nuances.” Ex. 2001 ¶ 36. Dr. White also testifies that “Tivoli
`does not provide a POSITA with guidance on network protocols or message
`formats that would have been needed to modify Gelb to build a distributed
`system with multiple clients comprising different operating systems.” Id.
`¶ 43. Such teachings or guidance, however, need not come from Gelb or
`Tivoli alone, but rather may be based on the knowledge of a person having
`ordinary skill in the art at the time of the invention. Based on the current
`record, we determine that it would have been reasonable to implement the
`design of Tivoli’s Storage Manager Server and client software in Gelb to
`create a system in which the system administrator aspect of the storage
`system and the client/application programmer aspect of the storage system
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`are located on different computers within a network, thereby increasing
`flexibility. Pet. 38–39 (citing Ex. 1003 ¶ 205).
`Claim 15 recites “applying the service class rule to the file to assign a
`service class to the files.” Ex. 1001, 16:28–29. Petitioner contends Gelb
`teaches this limitation. Pet. 25. In particular, Petitioner contends that Gelb
`teaches applying a set of service class rules to the parameters received with a
`file and assigning a data class, storage class, and management class to the
`file. Id. at 25–26 (citing Ex. 1003 ¶¶ 154–158; Ex. 1005, 12:14–41).
`Finally, claim 15 recites “conducting operations on the file in a
`manner according to the service class.” Ex. 1001, 16:30–31. Petitioner
`contends that Gelb teaches this limitation. Pet. 26. In particular, Petitioner
`contends that Gelb teaches a Data Facility Hierarchical Storage Manager
`(DFHSM) conducts operations on a file according to a service class. Id. at
`26–27 (citing Ex. 1003 ¶¶ 159–161; Ex. 1005, 7:64–66; 8:37–42; 16:56–59;
`20:7–14).
`We have reviewed Petitioner’s showing for independent claim 23, and
`dependent claims 16–21, 24, and 25, and find such showing sufficiently
`persuasive at this stage of the proceeding. Id. at 27–35. Patent Owner does
`not contest those claims separately. See generally Prelim. Resp.
`We conclude that, based on the totality of the arguments and evidence
`currently in the record, Petitioner has sufficiently shown for purposes of
`institution that Gelb and Tivoli teach or suggest each limitation of claims
`15–21 and 23–25, and that a person of ordinary skill in the art would have
`had reason to combine the references in the manner Petitioner proposes.
`Accordingly, we determine the information presented shows a reasonable
`likelihood that Petitioner would prevail in establishing that at least one of the
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`challenged claims 15–21 and 23–25 would have been obvious over Gelb and
`Tivoli.
`
`D. Asserted Obviousness of Claim 22 over Gelb, Tivoli, and Callaghan
`Petitioner contends claim 22 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Gelb, Tivoli, and Callaghan. Pet. 41–46.
`
`1. Callaghan
`Callaghan describes that the NFS protocol “is a network protocol that
`makes files stored on a file server accessible to any computer on a network.”
`Ex. 1007, 7. Callaghan asserts that “[t]he implementation of NFS by PC
`clients is an interesting case study in the success of NFS as a cross-platform
`protocol,” where PC clients include those using “DOS-derived operating
`systems: Windows 95, Windows NT, and OS/2.” Id. at 9. Certain naming
`conventions in DOS, however, “can create problems for DOS clients that
`access files on a UNIX or Windows server.” Id. at 10. Accordingly, the
`DOS client uses an algorithm to map UNIX names to DOS equivalents.” Id.
`Also, Callaghan describes that “DOS supports only a small set of file
`attributes compared with the POSIX set of 13 or so file attributes provided in
`the NFS fattr structure.” Id. at 11. So, “[s]ome of the NFS attributes like
`file size and mtime have DOS equivalents,” while “[o]thers have no mapping
`or an indirect mapping.” Id. at 11–12.
`
`2. Discussion
`Claim 22 depends from claim 15 and recites “wherein 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,
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`16:56–60. Petitioner asserts that Tivoli teaches that the clients’ computing
`platforms include at least Windows, AIX, Linux, Solaris, Unix, Mac OS,
`OS/2, DOS, HP, IRIX, and OS/390. Pet. 41 (citing Ex. 1006, 15–16,
`Tables 2, 3). Petitioner further contends that the Tivoli Storage Server may
`run on UNIX platforms such as Solaris and AIX. Id. (citing Ex. 1006, 14;
`Ex. 1003 ¶ 212). Petitioner relies on Callaghan to teach “translating the one
`or more attributes” of the file. Id. at 42–44 (citing Ex. 1007, 9–12; Ex. 1003
`¶¶ 213–217). Petitioner provides reasons for combining Callaghan with
`Gelb and Tivoli. Id. at 44–46.
`We have reviewed Petitioner’s showing for dependent claim 22 and
`find such showing sufficiently persuasive at this stage of the proceeding.
`Pet. 41–46. Patent Owner does not contest claim 22 separately. See
`generally Prelim. Resp.
`We conclude that, based on the totality of the arguments and evidence
`currently in the record, Petitioner has sufficiently shown, for purposes of
`institution, that Gelb, Tivoli, and Callaghan teach or suggest the limitations
`of claim 22, and that a person of ordinary skill in the art would have had
`reason to combine the references in the manner Petitioner proposes.
`Accordingly, we determine the information presented shows a reasonable
`likelihood that Petitioner would prevail in establishing that challenged claim
`22 would have been obvious over Gelb, Tivoli, and Callaghan.
`
`E. Asserted Anticipation of Claims 15–21 and 23–25 by Devarakonda
`Petitioner contends that claims 15–21 and 23–25 are unpatentable
`under 35 U.S.C. § 102 as anticipated by Devarakonda. Pet. 46–69.
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`
`1. Devarakonda as Prior Art
`Patent Owner contends that the ’132 patent is entitled to a priority
`date no later than April 26, 2001. Prelim. Resp. 20–22. In particular, Patent
`Owner asserts that “the inventions of the ’132 Patent were conceived no
`later than April 26, 2001, and thereafter diligently reduced to practice,
`including through the filing of the ’132 Patent on March 14, 2003.” Id. at 21
`(citing Ex. 2002 ¶¶ 8–25; Ex. 2003 ¶¶ 11–22).10 As a result, Patent Owner
`asserts that Devarakonda, which has a filing date of May 31, 2002, is not
`prior art. Id. at 39–40.
`Conception
`To demonstrate prior conception, Patent Owner must show that the
`inventors had “a definite and permanent idea of the complete and operative
`invention.” See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
`1367, 1376 (Fed. Cir. 1986). Conception must include every feature of the
`claimed invention. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).
`In support of its showing of conception, Patent Owner relies on the
`declarations of two of the named inventors of the ’132 patent (Exs. 2002
`(Declaration of Dr. David Pease) and 2003 (Declaration of Linda
`Duyanovich)), along with Exhibit 2012. Patent Owner argues that Dr. Pease
`identifies exemplary portions of Exhibit 2012 for each of the limitations of
`the challenged claims. Prelim. Resp. 21 (citing Ex. 2002 ¶ 18; Ex. 2012).
`At this juncture of the proceeding, neither Patent Owner nor Dr. Pease
`explain how the disjunctive block citations of Exhibit 2012 support the
`assertion of a prior conception. For example, it is not enough to cite
`
`10 Patent Owner filed confidential and non-confidential versions of Exhibits
`2002 and 2003. This Decision refers to the non-confidential (public)
`versions.
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`disjunctive blocks of pages from a document to show conception of the
`claimed invention. Here, the challenged claims are method claims.