IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DAEDALUS BLUE LLC,
`
`Plaintiff
`
`vs.
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`C.A. No. 6:20-cv-01152-ADA
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`JURY TRIAL DEMANDED
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT
`NOS. 7,177,886, 7,437,730, 8,381,209, 8,572,612, and 8,671,132
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Agreed Scheduling Order (D.E. 20, Ex. A), Defendant Microsoft
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`Corporation ( “Microsoft” or “Defendant”) hereby serve the following Preliminary Invalidity
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`Contentions for the asserted claims of U.S. Patent Nos. 7,177,886 (the “’886 Patent,”), 7,437,730
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`(the “’730 Patent,”), 8,381,209 (the “’209 Patent,”), 8,572,612 (the “’612 Patent”), and
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`8,671,132 (the “’132 Patent”). In addition, based on its investigation to date, Microsoft hereby
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`produces the prior art references on which these Preliminary Invalidity Contentions are based,
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`technical documents sufficient to show the operation of the accused products, and summary
`
`annual sales information for the accused products for two years preceding the filing of the
`
`Complaint.
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`Microsoft also incorporates by reference Patent Trial and Appeal Board Case Nos.
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`IPR2021-0830 (’612 Patent), IPR2021-00831 (’132 Patent) and IPR 2021-00832 (’209 Patent),
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`including the petition, supporting declaration, and exhibits, into these Preliminary Invalidity
`
`Contentions.
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`II.
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`PLAINTIFF’S INFRINGEMENT CONTENTIONS ARE DEFICIENT.
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`Plaintiff Daedalus Blue LLC’s (“Daedalus’s” or “Plaintiff’s”) Preliminary Infringement
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`Contentions (“PICs”) are deficient in numerous respects.
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`First, in an apparent attempt to expand the scope of the accused products identified in the
`
`Complaint, Daedalus identifies several new categories of products in its PICs. Daedalus alleges
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`that these new products infringe the patents-in-suit because they purportedly “implement or run
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`on” Microsoft’s cloud-based services, including Azure. See, e.g., Daedalus Blue PICs at 3-6;
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`Appendix A at 1; Appendix B at 1; Appendix C at 1; Appendix D at 1. For example, Daedalus’s
`
`PICs allege that at least the following additional products not mentioned in the complaint
`
`infringe the patents-in-suit:
`
`Patent
`’886 Patent
`
`’730 Patent
`
`’209 Patent
`
`’612 Patent
`
`’132 Patent
`
`New Products
`SQL Server 2012
`Azure SQL Databases,
`SQL Server on Azure Virtual Machines
`Azure SQL Managed Instances
`Office365
`Azure
`Microsoft Teams
`SharePoint Online
`Office Online
`Xbox Live Services
`Office365
`Microsoft Teams
`SharePoint Online
`Office Online
`Office365
`Xbox Live
`Office365
`Microsoft Teams
`SharePoint Online
`Office Online
`Xbox Live Services
`Microsoft Xbox
`Azure Data Lake Storage
`
`However, Daedalus fails to explain how these newly accused products infringe the
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`patents-in-suit. See Hr’g Tr. at 16:6-20, Slingshot Printing, LLC v. HP, Inc., Case No. W-19-cv-
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`364, (W.D. Tex. Feb. 7, 2020) (each accused product must be charted in PICs or an explanation
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`as to why the charted products are representative must be given.) Crucially, Daedalus does not
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`explain where in these newly accused products each element of the asserted claim(s) is found, as
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`required by the Court’s OGP 3.3. See OGP 3.3, Section 2 (requiring that plaintiff identify
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`“where in the accused product(s) each element of the asserted claim(s) are found”). Because
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`Microsoft is unable to discern which features of these newly accused products might be relevant
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`to any issue in this case, and because Daedalus’s contentions fail to comply with the disclosure
`
`requirements, Microsoft cannot fully evaluate Daedalus’s “read” of the claims onto these
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`additional products or provide information about them.
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`Second, Daedalus’s PICs and the appendices thereto include a lengthy recitation of
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`purported “features” of the accused products. Many of these “features” are recited in such
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`vague, broad, and overly general terms that Microsoft is unable to discern which features of the
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`accused Azure and SQL Server products may be implicated by these recitations. Examples of
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`the “features” recited by Daedalus which are unduly vague, broad, and general include:
`
`“vertical scaling”
`“front end”
`“computer throttling”
`“elastic VMs”
`“Microsoft data centers”
`“Azure Cloud Services”
`“Windows Azure cloud operating system”
`“Azure storage”
`“managed disks”
`“host virtual machine operating system”
`“guest virtual machine operating system”
`“virtualization technology”
`“hypervisor”
`“hypervisor firewall rules”
`“Azure resource access management tools”
`“virtual machine manager”
`“load balancer”
`“API”
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`
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`-3-
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`“virtual machines”
`“resource management”
`“virtual network interface cards”
`“PowerShell”
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`Microsoft will attempt to interpret these features as best as it is able in order to provide
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`the technical documentation set forth in OGP 3.3. However, all of these terms are so vague and
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`general that Microsoft is unable to identify aspects of the charted products that may reasonably
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`correlate to these alleged “features.”
`
`Finally, many of Daedalus’s allegations are made solely on “information and belief.” See
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`PICs at 3, Appendix A at 1, 7, 13, 16, 23, 24, 32, 33, 36, 50, 56, 66, 67, 68, 72, 73, 76, 78;
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`Appendix B at 2, 3, 6, 7, 28, 37, 38, 48, 55, 60, 61, 63, 64, 66, 68, 70, 71, 72, 77, 80, 81, 98, 104,
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`107; Appendix C at 4, 8, 9, 16, 31, 42, 47, 48, 51, 54, 56, 61, 70, 73, 84; Appendix D at 9, 12;
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`Appendix E at 1, 13, 14, 16, 17, 20, 22, 25, 28, 30, 59, 61. Such bare allegations are improper.
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`See Fenner Investments, Ltd. v. Juniper Networks, Inc., 236 F.R.D. 309, 310 (E.D. Tex. 2006)
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`(holding that a “party's theories of infringement must be sufficiently particular to provide notice
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`of infringement beyond what is provided by the language of the patent claims themselves”); see
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`also Solannex, Inc. v. MiaSole, Inc., Case No. 11-cv-00171, 2013 WL 1701062, at *3 (N.D. Cal.
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`Apr. 18, 2013) (holding that a plaintiff cannot satisfy its PIC obligations by responding with
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`“nothing more than a conclusion based ‘on information and belief’ that something exists or
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`occurs”); Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1025 (N.D. Cal.
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`2010) (“[A]ll courts agree that the degree of specificity under [the local rule governing a
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`plaintiff’s PICS] must be sufficient to provide reasonable notice to the defendant why the
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`plaintiff believes it has a reasonable chance of proving infringement [and] must be sufficient to
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`raise a reasonable inference that all accused products infringe.”) (internal citations omitted).
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`Here, Daedalus merely parrots the language of the claims and alleges on information and
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`belief that the accused products meet the recited limitation. See, e.g., PICs, Appx. A, at 7 (“On
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`information and belief, to which further discovery will provide evidence, in the regular course of
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`its business, including with regard to its Cloud based services, such as Office365, and Azure,
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`Microsoft makes and uses a critical database server that includes a primary server and at least a
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`secondary server.”). Daedalus is required to investigate its allegations of infringement under
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`Rule 11 before bringing this litigation. That includes evaluating, at a minimum, publicly
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`accessible information about the accused products. Moreover, Daedalus is required by the
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`Court’s OGP 3.3 to identify those features of the accused products that it believes read on the
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`limitations of the asserted claims. If, after its required Rule 11 investigation Daedalus is still
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`unable to identify a feature of the accused product that reads on each limitation of an asserted
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`claim, then its assertion of infringement of that claim is improper and should be withdrawn.
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`At a minimum, for each assertion that relies on “information and belief,” Daedalus must:
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`1. Clearly admit that it does not currently have the ability to identify any feature of
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`the accused product that it believes corresponds to those claim limitations where
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`its allegations are founded on “information and belief”;
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`2. Explain in detail the scope of the required Rule 11 investigation it conducted,
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`including identifying with particularity each document it reviewed as part of that
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`investigation and each conclusion about infringement of each asserted claim by
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`each accused feature of each accused product that it came to as a result of such
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`investigation;
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`3. On a limitation by limitation basis, provide a full and complete explanation of the
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`basis for the beliefs it formed that the accused product functions in the manner it
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`asserts for each of the limitations for which it relies on information and belief; and
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`4. On a limitation by limitation basis, provide a full and complete disclosure of the
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`information that its Rule 11 investigation relied upon that caused it to come to
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`those beliefs.
`
`See AntiCancer, Inc. v. Pfizer Inc., Case No. 11-cv-107, 2012 WL 13180610, at *4 (S.D. Cal.
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`June 1, 2012) (“[A]t a minimum, a plaintiff is required to include in its infringement contentions
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`all facts known to it, including those discovered in its pre-filing inquiry, and any publicly
`
`available information which, if utilized, would provide more information to Defendants
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`regarding the plaintiff's infringement claims”) (internal citations omitted), citing Linex v. Techs.,
`
`Inc. v. Belkin Int’l, Inc., 628 F. Supp. 2d 703, 709 (E.D. Tex. 2008)). Until such time as
`
`Daedalus provides the above information, Microsoft is not obligated to provide any technical
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`documentation as to any “information and belief” limitations. See Hr’g Tr. at 13:2-14:10,
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`Slingshot Printing, (limiting scope of disclosure of technical information to those components
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`sufficiently documented in the Plaintiff’s PICs); Shared Memory Graphics, 812 F. Supp. 2d at
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`1027 (staying discovery from defendants until plaintiff submits PICs which are compliant with
`
`the rules.) Nor is Microsoft obligated to provide invalidity contentions as to any claim which
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`relies in whole or in part on these deficient contentions. Geovector Corp. v. Samsung Elec. Co.
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`Ltd., Case No. 16-cv-02463, 2017 WL 76950, at *8 (N.D. Cal. Jan. 9, 2017) (staying defendant’s
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`obligation to serve invalidity contentions until plaintiff meets the burden of providing
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`infringement contentions compliant with the patent local rules).
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`III. RESERVATIONS
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`This document, and the information and documents that Microsoft produces in
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`connection with these Preliminary Invalidity Contentions, are preliminary and subject to further
`
`revision. In addition to these contentions being “Preliminary” (see D.E. 20, Ex. A), Microsoft
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`expressly reserves the right to amend, supplement, or modify these contentions should Plaintiff
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`amend, supplement, or modify its Infringement Contentions, provide any new or additional
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`information or documents that relate to its Infringement Contentions, or seek to modify or amend
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`the accused products at issue in this case or the theories on which it is alleging infringement.
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`Further, because Microsoft has not yet completed its search for and analysis of relevant prior art,
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`Microsoft reserves the right to revise, amend, and/or supplement the information provided
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`herein, including identifying and relying on additional prior art patents, publications, products,
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`systems, or uses, should Microsoft’s further search and analysis yield additional information.
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`Moreover, Microsoft reserves the right to revise its contentions concerning the invalidity of the
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`asserted claims depending upon the Court’s construction of the asserted claims, any findings as
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`to the priority date of the asserted claims, and/or positions that Plaintiff or its expert witness(es)
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`may take concerning claim construction, infringement, and/or invalidity issues. Microsoft further
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`reserves the right to modify, amend, or supplement these contentions as discovery proceeds. For
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`example, Microsoft has not yet deposed the named inventors of the patents-in-suit and Plaintiff
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`has not produced any documents relating to the conception or actual reduction to practice, if any,
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`of the alleged inventions claimed in the patents-in-suit.
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`Prior art not included in these Preliminary Invalidity Contentions, whether known or not
`
`known to Microsoft, may become relevant. In particular, Microsoft is currently unaware of the
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`extent, if any, to which Plaintiff will contend that limitations of the asserted claims are not
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`disclosed in the prior art identified by Microsoft. To the extent that such an issue arises,
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`Microsoft reserves the right to identify additional teachings or disclosures in the same references
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`or in other references that disclose or teach the allegedly missing limitation or that would have
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`made the addition of the allegedly missing limitation to the disclosed method and/or system
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`obvious.
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`Microsoft’s claim charts in Exhibits A-1 through E-5 cite to particular teachings and
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`disclosures in the prior art and apply them to the limitations of the asserted claims. However,
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`persons having ordinary skill in the art (“POSITAs”) generally may view an item of prior art in
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`the context of other publications, literature, products, and understanding. As such, the cited
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`portions are only examples of teachings and disclosures, and Microsoft reserves the right to rely
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`on uncited portions of the prior art references and on other publications and expert testimony as
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`aids in understanding and interpreting the cited portions, as providing context thereto, and as
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`additional evidence that a claim limitation was known, disclosed, taught, or obvious. Microsoft
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`further reserves the right to rely on uncited portions of the prior art references, other
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`publications, other products, systems, and uses, and testimony to establish the bases and
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`motivations for combinations of certain cited references that render the asserted claims obvious.
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`The references discussed in the claim charts in Exhibits A-1 through E-5 or elsewhere
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`identified may disclose the elements of the asserted claims explicitly, impliedly, or inherently,
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`and may be relied upon to show the state of the art in the relevant time frame. Microsoft’s
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`proposed obviousness arguments or obviousness combinations are provided in the alternative to
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`Microsoft’s anticipation contentions and are not to be construed to suggest that any reference
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`included in the combinations is not by itself anticipatory.
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`To the extent that these Preliminary Invalidity Contentions reflect constructions of claim
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`terms that may be consistent with or implicit in Plaintiff’s Preliminary Infringement Contentions,
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`no inference is intended or should be drawn that Microsoft agrees with such claim constructions.
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`These Preliminary Invalidity Contentions are not intended to reflect Microsoft’s claim
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`construction positions, which will be disclosed in due course in accordance with this Court’s
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`Scheduling Order. Moreover, Microsoft’s Preliminary Invalidity Contentions, including the
`
`attached claim charts, may reflect alternative positions as to claim construction and claim scope.
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`Nothing in this document should be construed as an admission that Microsoft agrees with
`
`Plaintiff’s assertions or claim constructions or that any claim is valid, enforceable, or infringed.
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`Microsoft also reserves all its rights to revise or amend its contentions under 35 U.S.C.
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`§ 112, including for indefiniteness, lack of written description, or non-enablement, in light of the
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`Court’s claim constructions, testimony of the named inventors, or other subsequent
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`developments. Accordingly, nothing stated herein shall be construed as a waiver of any argument
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`available under 35 U.S.C. § 112.
`
`Where Microsoft cites to a particular figure in a reference, the citation should be
`
`understood to encompass the caption and description of the figure and any text relating to the
`
`figure. Similarly, where Microsoft cites to particular text that refers to a figure, the citation
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`should be understood to include the figure and caption as well.
`
`To the extent a prior art reference is identified as part of one or more combinations of
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`references under 35 U.S.C. § 103, Microsoft reserves the right to chart that reference
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`independently under 35 U.S.C. § 102 at a later date, should circumstances so dictate. Further, in
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`many instances where a particular contention calls for combining references, any one of a
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`number of references could be combined. The inclusion of certain exemplary combinations of
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`prior art references does not exclude other combinations.
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`Moreover, as certain prior art references are described in multiple related patents or
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`publications with similar or identical specifications or disclosures, to the extent that Microsoft
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`has identified a citation in one reference, Microsoft reserves the right to rely on parallel or
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`similar citations in related patents or publications. Persons of ordinary skill in the art would read
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`a prior art reference and understand a prior art invention as a whole and in the context of other
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`publications and known technologies. Therefore, to understand and interpret any specific
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`statement or disclosure of a prior art reference, such persons may rely on other information
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`within the reference or invention, along with other publications and known technologies.
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`Microsoft reserves the right to establish what was known to POSITAs through other
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`publications, products, and/or testimony. Microsoft also reserves the right to rely on uncited
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`portions of the prior art references, other publications, and testimony to establish that a person of
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`skill in the art would have been motivated to combine certain of the cited references so as to
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`render the claims obvious.
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`In addition to the prior art identified below and the accompanying invalidity claim charts,
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`Microsoft also incorporates by reference any invalidity contentions, identified prior art, or
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`invalidity claim charts disclosed by any party to any other litigation or U.S. Patent & Trademark
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`Office proceeding involving the asserted patents or any related patent. Microsoft further reserves
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`the right to prove the invalidity of the asserted claims on bases other than those required to be
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`disclosed in these disclosures and contentions, including, but not limited to, 35 U.S.C. § 102(f).
`
`IV.
`
`INVALIDITY OF THE ’886 PATENT
`A.
`
`Invalidity Contentions Based On The Prior Art
`1.
`
`Background of the Prior Art
`
`As shown below, the asserted claims (claims 1-3, 6, 7, 10) of the ’886 Patent, and each of
`
`the elements of the asserted claims, were well known in the art prior to the date of the alleged
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`inventions. Examples of these disclosures and embodiments are identified in the following
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`sections and in the attached Invalidity Claim Charts in Exhibits B-1 through B-4.
`
`2.
`
`Identification of the Prior art References and Products
`
`Subject to the reservations of rights above, Microsoft identifies prior art that anticipates
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`and/or renders obvious one or more of the asserted claims of the ’886 Patent. The prior art
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`references and products identified are also relevant to show the state of the art and reasons and
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`motivations for making improvements, additions, modifications, and combinations.
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`The following prior art references and products anticipate and/or render obvious the
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`asserted claims of the ’886 Patent and/or illustrate the state of the art at the time of the alleged
`
`invention:
`
`Ex. No.
`Prior Art Ref.
`Ex. B-1 U.S. Patent Publication No.
`2005/0114285 (“Cincotta”)
`Ex. B-2 U.S. Patent No. 5,544,347
`(“Yanai”)
`Ex. B-3 U.S. Patent No. 6,691,139
`(“Ganesh”)
`Ex. B-4 U.S. Patent No. 6,185,601
`(“Wolff”)
`
`Country of
`Origin
`
`Filing Date
`
`Publication or
`Issue Date
`
`United States Nov. 7, 2002 May 26, 2005
`
`United States Apr. 23, 1993
`
`Aug. 6, 1996
`
`United States
`
`Jan. 31, 2001
`
`Feb. 10, 2004
`
`United States Apr. 15, 1998
`
`Feb. 6, 2001
`
`3.
`
`Anticipation and Obviousness
`
`Subject to Microsoft’s reservation of rights, Microsoft contends that the asserted claims
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`of the ’886 Patent are invalid based on anticipation and obviousness.
`
`The references in the table below, alone or in combination with one or more other
`
`references in this table and/or the knowledge of one skilled in the art, anticipate or render
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`obvious the asserted claims of the ’886 Patent.
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`Prior Art Reference
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`Cincotta
`Yanai
`Ganesh
`Wolff
`
`Bates No.
`MSFTDB0000309 - 321
`MSFTDB0000206 - 215
`MSFTDB0000299 - 308
`MSFTDB0000216 - 298
`
`In addition, Microsoft incorporates by reference each and every prior art reference of
`
`record in the prosecution of the ’886 Patent and any related patent or application, the statements
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`made therein by the applicant, as well as the prior art discussed in the specification.
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`The cited portions of each prior art reference are exemplary and representative of the
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`content of the reference, and should be understood in the context of the reference as a whole, as
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`understood by a POSITA. To the extent a prior art reference is deemed not to anticipate or
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`render obvious a claim as noted in the attached charts for failing to disclose, teach, or suggest
`
`one or more limitations of a claim, that claim would nonetheless have been obvious to POSITAs
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`at the time of the invention over the reference itself or by the combination of the reference with
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`one or more other references disclosing the missing claim limitations or the knowledge of a
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`POSITA.
`
`i.
`
`Prior Art Combinations
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`The asserted claims of the ’886 Patent are obvious based on one or more combinations of
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`the prior art references above. Exemplary combinations include:
`
`•
`
`•
`
`•
`
`•
`
`Cincotta + Knowledge of a POSITA
`
`Cincotta + Yanai
`
`Cincotta + Yanai + Ganesh
`
`Cincotta + Yanai + Ganesh + Wolff
`
`The section below provides motivations to combine the prior art references above. These
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`obviousness combinations are provided in the alternative to Microsoft’s anticipation and single-
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`reference obviousness contentions and are not to be construed to suggest that any reference
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`included in the combination is not itself anticipatory or would not render the asserted claims
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`obvious in light of the knowledge of a POSITA.
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`4.
`
`Motivation to Combine
`
`A POSITA would have been motivated to combine the preceding references (see Section
`
`IV.A.3) for the following reasons. Teachings, suggestions, motivations and/or reasons to modify
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`any of the references and/or to combine any two or more of the references can come from many
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`sources, including the prior art, common knowledge, common sense, predictability, expectations,
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`industry trends, design incentives or need, market demand or pressure, market forces,
`
`obviousness to try, the nature of the problem faced, and/or knowledge possessed by a POSITA.
`
`Although a patent claim may be invalidated based on a teaching-suggestion-motivation
`
`(“TSM”) rationale—i.e., that some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior-art reference or to combine prior-art reference
`
`teachings to arrive at the claimed invention—the Supreme Court identified additional rationales
`
`in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). The following of these rationales apply
`
`here:
`
`(A) the asserted claims combine prior-art elements according to known methods
`to yield predictable results;
`
`(B) the asserted claims involve the simple substitution of one known element for
`another to obtain predictable results;
`
`(C) the asserted claims involve the use of a known technique to improve similar
`devices (methods, or products) in the same way;
`
`(D) the asserted claims apply a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
`
`(E) the asserted claims involve combinations of prior-art references that would
`have been “obvious to try”’—a person of ordinary skill in the art could have
`reached the asserted claims by choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
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`(F) the asserted claims are simply variations of work from one field of endeavor
`or a different one that would have been prompted based on design incentives or
`other market forces because the variations were predictable to one of ordinary
`skill in the art.
`
`See KSR, 550 U.S. at 414-18 (rejecting the Federal Circuit’s “rigid” application of the
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`teaching, suggestion, or motivation to combine test, and instead espousing an “expansive and
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`flexible” approach); see also Department of Commerce, Patent and Trademark Office,
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`Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the
`
`Supreme Court Decision in KSR International Co. v. Teleflex Inc., 72 Fed. Reg. 57,526 (Oct.
`
`10, 2007). Indeed, the Supreme Court held that a POSITA is “a person of ordinary creativity,
`
`not an automaton” and “in many cases a person of ordinary skill in the art will be able to fit
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`the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 42021.
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`Thus, even in the absence of a specific teaching, suggestion, or motivation to combine
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`references, the asserted claims here are obvious and therefore invalid. Each of the cited
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`references or devices is in the same field (i.e., database design and database systems), making it
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`obvious for someone of ordinary skill in the art to identify and combine elements from these
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`references. One of ordinary skill in the art would have recognized that improvements could be
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`achieved by combining or modifying prior-art references that describe such improvements. Each
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`of the above prior-art references describes devices or methods that were known to offer such
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`improvements, and, accordingly, one of ordinary skill in the art would have been motivated to
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`combine or modify the references as identified in each of the combinations above. Indeed, given
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`that the references are in the same field, one of ordinary skill would have readily, with
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`predictable results, taken teachings from one reference and applied them to other references.
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`Furthermore, because each prior art reference concerns databases and database mirroring,
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`balancing, and replication using known techniques, common industry knowledge supplied a
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`reason to combine the above references with each other. Databases, database mirroring, and
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`database replication were known and long-explored concepts in database design for years prior
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`to the ’886 Patent’s filing. And because mirroring of databases had long been used for providing
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`fault-tolerant data storage, a POSITA at the time of the ’886 Patent’s filing would have had
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`extensive knowledge not only about database mirroring, but about tracking database transactions
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`to ensure they were properly stored in other databases including mirrors. They would also have
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`known about replicating databases to other sites, including remote sites, and the importance of
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`ensuring that the replicated data was first mirrored to preserve accuracy of the database contents
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`and resilience of the entire database system. Therefore, it would have been common sense
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`among those of ordinary skill in the art to integrate all these preexisting features together,
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`thereby simplifying the mirroring and replication process and improving database efficiency.
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`The combination would have yielded predictable results, and would simply have reflected a
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`known alternative to one of ordinary skill in the art for mirroring and replicating databases.
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`The discussion below, which provides additional reasons to combine the above
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`references, should not be construed as an admission that there is any value to the alleged
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`invention of the ’886 Patent. As discussed previously, these contentions are based in part on
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`how Plaintiff is apparently construing the asserted claims in its Infringement Contentions, which
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`is an incorrect and overbroad interpretation of the alleged invention of the ’886 Patent.
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`Accordingly, to the extent the below refers to benefits of certain elements or industry trends
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`towards these elements, this is not an admission that the alleged invention of the ’886 Patent
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`provides any benefits. To the contrary, properly construed and compared to the prior art, the
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`’886 Patent provides no benefits. Likewise, to the extent the below refers to substituting
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`elements, this is not an admission that the elements subject to the substitution are in any way
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`similar, e.g., perform the same function, in the same way, to reach the same result.
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`The various elements of the asserted claims were well known in the prior art at the time
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`of the alleged invention, and the combination was obvious to one of skill in the art. The
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`combination simply (a) combines prior-art elements according to known methods to yield
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`predictable results; (b) involves the simple substitution of one known element for another to
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`obtain predictable results; (c) involves the use of a known technique to improve similar devices
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`(methods, or products) in the same way; (d) applies a known technique to a known device
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`(method, or product) ready for improvement to yield predictable results; (e) involves
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`combinations of prior-art references that would have been “obvious to try” – a POSITA could
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`have reached the asserted claims by choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success; and/or (f) would have been prompted by
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`known work, based on design incentives or other market forces, because such variations were
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`predictable to one of ordinary skill in the art.
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`Moreover, the Supreme Court has stated that a motivation to combine may be simply
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`“common sense” and that “familiar items may have obvious uses beyond their primary purposes,
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`and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents
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`together like pieces of a puzzle.” KSR, 550 U.S. at 420. Indeed, the Supreme Court held that it is
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`sufficient that a combination of elements was “obvious to try,” holding that, “[w]hen there is a
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`design need or market pressure to solve a problem and there are a finite number of identified,
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`predictable solutions, a person of ordinary skill has good reason to pursue the known options
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`within his or her technical grasp.” Id. at 421. Here, all the claim elements are common sense
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`and are easily fit together by one of ordinary skill in the art.
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`While not necessary, a motivation to combine may also be found in the references
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`themselves. One of ordinary skill in the art would have been motivated to combine a reference
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`that refers to, or otherwise explicitly invites combination with, another reference. Where the
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`references cited herein have such an explicit invitation to combine, that invitation would have
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`motivated one of skill in the art to combine any such references.
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`Example Combinations: Cincotta + Yanai + Ganesh (+ Wolff)
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`It would have been obvious to a POSITA at the time of the alleged invention to adapt
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`Cincotta’s system controller in view of Yanai’s teaching of an indexing functionality. The
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`POSITA would have reasonably expected success in programming the controller of Cincotta to
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`index database transactions that were applied and logged at the secondary database instance, as
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`Yanai discloses. The POSITA would have further been motivated to do so “in order to achieve
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`optimum data mirroring performance.” Yanai at 7:17-19. “Since data