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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`
`Petitioner,
`
`v.
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`
`Patent Owner
`
`Case IPR2017-01933
`Patent 8,478,799
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO
`37 C.F.R. § 42.107(a)
`
`
`
`

`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`THE PETITION IS TIME-BARRED AND INCOMPLETE ......................... 2
`Springpath is a Real Party-in-Interest ................................................... 4
`A.
`B.
`Springpath is a Privy of Petitioner ........................................................ 7
`III. BACKGROUND OF THE ’799 PATENT ...................................................11
`A.
`The ’799 Patent Discloses an Improved Computer File System ........11
`B.
`The Challenged Claims of the ’799 Patent .........................................14
`IV. OVERVIEW OF PRIOR ART ......................................................................16
`A. Muthitacharoen ....................................................................................17
`B.
`Dabek I ................................................................................................19
`C.
`Other Prior Art References ..................................................................21
`CLAIM CONSTRUCTION ..........................................................................21
`A.
`The Governing Claim Construction Standard .....................................22
`B.
`The Term “Object” Should Be Given Its Plain and Ordinary Meaning
` .............................................................................................................24
`Petitioner’s Proposed Constructions of “Namespace File System” and
`“Program Code Means Which, When Executed by a Process,
`Performs the Steps of Method Claim 19” Are Immaterial ..................25
`VI. ARGUMENT .................................................................................................26
`A. Dabek I Does Not Disclose “Objects” as Required by All Challenged
`Claims ..................................................................................................27
`B. Muthitacharoen Does Not Disclose “Objects” as Required by All
`Challenged Claims ..............................................................................33
`
`C.
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`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`C. Muthitacharoen and Dabek I Do Not Teach the “Object Store” as
`Required by All Challenged Claims ...................................................35
`VII. CONCLUSION ..............................................................................................37
`CERTIFICATE OF WORD COUNT ......................................................................39
`CERTIFICATE OF SERVICE ................................................................................40
`
`
`
`
`
`
`ii
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`

`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`TABLE OF AUTHORITIES
`
`Cases
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
`IPR2013-00453, Paper 88 (PTAB Jan. 6, 2015) ............................................5
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) .....................................................................23
`
`Azure Gaming v. MGT Gaming,
`IPR2014-01288, Paper 13 (PTAB Feb. 20, 2015) .........................................8
`
`Ericsson, Inc. v. Intellectual Ventures I LLC,
`IPR2014-00921, Paper 8 (PTAB Dec. 16, 2014) .........................................23
`
`Hewlett-Packard Co. v. Tech. Properties LTD., LLC,
`IPR2013-00217, 2013 WL 8701599 (PTAB Oct. 10, 2013) ......................... 8
`
`Hill-Rom Services, Inc. v. Stryker Corporation,
`755 F.3d 1367 (Fed. Cir. 2014) .............................................................. 22, 23
`
`Intellectual Ventures Mgmt, LLC, v. Xilinx, Inc.,
`IPR2012-00019, Paper 33 (PTAB February 10, 2014) ..........................22, 23
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014-00488, Paper 52 (PTAB March 16, 2015) ..................................5, 6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................23
`
`RPX Corp. v. VirnetX, Inc.,
`IPR2014-00171, Paper 57 (PTAB July 14, 2014) ..........................................7
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008)......................................................................................... 6
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .......................................................................23
`
`iii
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`

`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`
`Wellman, Inc. v. Eastman Chem. Co.,
`642 F.3d 1355 (Fed. Cir. 2011) .............................................................. 23, 26
`Wowza Media Sys., LLC v. Adobe Systems Inc.,
`IPR2013-00054, No. 12 (PTAB Apr. 8, 2013) ......................................22, 23
`
`ZOLL Lifecor Corp. v. Philips Elecs. N. Am. Corp.,
`IPR2013-00607, Paper 13 (PTAB March 20, 2014) ......................................5
`Statutes
`35 U.S.C. § 312(a)(2) .................................................................................... 1, 2, 4, 5
`
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`35 U.S.C. § 315(b) ............................................................................................ 1, 2, 4
`
`Regulations
`37 C.F.R. §42.100(b) ...............................................................................................22
`
`37 C.F.R. § 42.24(d) ................................................................................................39
`
`37 C.F.R. § 42.101(b) ..........................................................................................2, 11
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`
`37 C.F.R. § 42.8(b)(1) ....................................................................................... 1, 2, 4
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................... 4, 6, 8, 22
`
`
`
`
`
`
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`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`TABLE OF EXHIBITS
`
`Exhibit
`2001
`
`Description
`Springpath, Inc.’s Supplemental Corporate Disclosure Statement, Doc.
`No. 156, Hewlett Packard Enterprise Company. v. Springpath, Inc.,
`C.A. 4:15-CV-13345-TSH (D. Mass.)
`2002 Cisco Announces Intent to Acquire Springpath, Cisco Press Release
`(Aug. 21, 2017) (available at https://newsroom.cisco.com/press-
`release-content?type=webcontent&articleId=1874577) (last visited
`December 19, 2017)
`2003 Confirmed: Cisco Did Invest in SpringPath, The Register (April 13,
`2016) (available at https://www.theregister.co.uk/2016/04/13/
`cisco_invested_in_springpath/) (last visited December 19, 2017)
`2004 Kevin McLaughlin & Mark Haranas, Cisco Teams With Startup
`Springpath, Sets Sights On Total Dominance Of The Hyper-
`Convergence Market, CRN (Mar. 1, 2016) (available at
`http://www.crn.com/print/news/data-center/300079867/cisco-teams-
`with-startup-springpath-sets-sights-on-total-dominance-of-the-hyper-
`convergence-market.htm) (last visited December 19, 2017)
`Executed Summons, SimpliVity Corp. v. Springpath, Inc., C.A. 4:15-
`CV-13345-TSH (D. Mass.)
`2006 Here's Why Some Partners Think Cisco Should Acquire Hyper-
`Converged Startup Springpath Instead of Partnering With It, CRN
`(February 26, 2016) (available at http://www.crn.com/news/data-
`center/300079861/heres-why-some-partners-think-cisco-should-
`acquire-hyper-converged-startup-springpath-instead-of-partnering-
`with-it.htm) (last visited December 19, 2017)
`
`2005
`
`2007 Cisco Completes Acquisition of Springpath, Cisco Press Release –
`Overview (Sept. 22, 2017) (available at https://www.cisco.com/c/en/
`us/about/corporate-strategy-office/acquisitions/springpath.html#~tab-
`overview) (last visited December 21, 2017)
`
`2008 Cisco Completes Acquisition of Springpath, Cisco Press Release –
`FAQs (Sept. 22, 2017) (available at https://www.cisco.com/c/en/
`us/about/corporate-strategy-office/acquisitions/springpath.html#~tab-
`faqs) (last visited December 21, 2017)
`
`v
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`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`2009
`
`Letter from Christine Duh, Counsel to Springpath, to Bradley Coburn,
`Counsel to HPE (Nov. 29, 2017)
`
`2010 Dabek, Frank, et al., “Designing a DHT for Low Latency and High
`Throughput,” NSDI ’04 Proceedings of the 1st Conference on
`Symposium on Networked Systems Design and Implementation -
`Volume 1, 2004, pp. 85-98 (available at
`https://www.usenix.org/legacy/publications/library/proceedings/nsdi04/
`tech/full_papers/dabek/dabek.pdf) (last visited December 21, 2017)
`
`2011 Dabek, Frank, “A Distributed Hash Table,” Ph.D. Thesis,
`Massachusetts Institute of Technology, 2005
`(https://pdos.csail.mit.edu/papers/fdabek-phd-thesis.pdf) (last visited
`December 21, 2017)
`
`
`
`
`vi
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`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`I.
`
`INTRODUCTION
`
`Patent Owner Hewlett Packard Enterprise Company (“HPE”) submits this
`
`preliminary response pursuant to 37 C.F.R. § 42.107 to the petition filed by Cisco
`
`Systems, Inc. (“Petitioner” or “Cisco”). For the reasons below, the Board should
`
`deny institution of inter partes review.
`
`The petition must be denied because Cisco identified only itself as the real
`
`party-in-interest. Cisco failed to reveal its pending acquisition of its now wholly-
`
`owned subsidiary, Springpath, Inc.1 (“Springpath”) and failed to identify
`
`Springpath as a real party-in-interest or privy, as required by statute and regulation.
`
`See 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1). Petitioner’s failure to
`
`identify Springpath as a real party-in-interest or privy is not surprising because
`
`Springpath was time-barred pursuant to 35 U.S.C. § 315(b). Accordingly, the
`
`petition is incomplete and cannot be considered by the Board.
`
`Moreover, for at least the reasons described below, Cisco’s Petition has
`
`failed to establish the requisite “reasonable likelihood that it would prevail with
`
`respect to at least 1 of the claims challenged in the petition” of U.S. Patent No.
`
`8,478,799 (“the ’799 Patent”) (Ex. 1001). 35 U.S.C. § 314(a).
`
`
`1 Shortly after Cisco acquired Springpath, Inc., it was converted to
`Springpath LLC on September 26, 2017. See Ex. 2001.
`1
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`

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`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`The ’799 Patent fundamental teachings include an expanded use of object
`
`fingerprints for objects in an object-based file system. The Muthitacharoen (Ex.
`
`1007) and Dabek I (Ex. 1008) references, relied upon by Petitioner in all five
`
`obviousness grounds, do not teach or suggest each of the elements recited in the
`
`claims of the ’799 patent. Fundamentally, neither Muthitacharoen nor Dabek I
`
`discloses objects or an object-based file system. Rather, both Muthitacharoen and
`
`Dabek I teach the use of fixed-size blocks in block-based file systems—systems
`
`that are described and distinguished in the ’799 Patent. Because the
`
`Muthitacharoen and Dabek I references do not disclose the “object store” nor any
`
`of the file, data, metadata, inode map, or directory objects required by all
`
`challenged claims, the Board should deny institution.
`
`II. THE PETITION IS INCOMPLETE AND TIME-BARRED
`Petitioner Cisco identified only itself as the real party-in-interest, concealing
`
`its pending acquisition of its now wholly-owned subsidiary Springpath LLC, which
`
`is a real party-in-interest and/or privy of the Petitioner. Cisco’s petition is therefore
`
`incomplete, and pursuant to 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1),
`
`should not be considered by the Board. Moreover, because Springpath is a real
`
`party-in-interest and/or privy of Cisco, the petition is time-barred as it was filed
`
`more than a year past the statutory deadline for filing the petition, pursuant to 35
`
`U.S.C. § 315(b) and 37 C.F.R. § 42.101(b).
`
`2
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`Case IPR2017-01933
`U.S. Patent No. 8,478,799
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`Petitioner asserted in its mandatory notices that it was the sole real party-in-
`
`interest (“RPI”). See Pet. at 13. Petitioner also noted that Springpath is in district
`
`court litigation with Patent Owner over the ’799 Patent, and that Springpath
`
`previously filed two petitions for inter partes review, IPR2016-01779 and
`
`IPR2016-01780, both of which were denied institution by the Board. See id;
`
`Springpath, Inc. v. SimpliVity Corp., Case IPR2016-01779, slip op. at 12-14
`
`(PTAB March 22, 2017) (Paper 8) (Ex. 1040); and Springpath, Inc. v. SimpliVity
`
`Corp., Case IPR2016-01780, slip op. at 13-14 (PTAB March 21, 2017) (Paper 9)
`
`(Ex. 1041).
`
`Cisco did not disclose to the Board that it was in the process of acquiring
`
`Springpath, Inc. when it filed its petition. See Ex. 2002 at 1. Nor did Cisco disclose
`
`that its business has been tightly intertwined with Springpath since at least January
`
`2016. See Ex. 2003 at 1-2. Indeed, in 2015 Cisco led Springpath’s Series C
`
`financing round, with an option to acquire Springpath. See Ex. 2004 at 1. And
`
`lastly, Cisco failed to identify Springpath as an RPI or privy. The reason behind
`
`Cisco’s failure to disclose this information to the Board is simple: if Cisco had
`
`identified Springpath as an RPI and/or privy, Cisco would have been time-barred
`
`just as Springpath is now.
`
`Patent Owner served Springpath with a district court complaint asserting
`
`infringement of the ’799 Patent on September 15, 2015—well over one year prior
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`U.S. Patent No. 8,478,799
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`to the filing date of Cisco’s petition—thus, barring Cisco’s petition as an RPI
`
`and/or privy of Springpath’s under the provisions of § 315(b). See Ex. 2005 at 2
`
`(executed summons). Because Springpath is unquestionably an RPI and/or privy of
`
`Cisco, Cisco’s failure to identify Springpath as an RPI is fatal to this petition,
`
`pursuant to 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1).
`
`Springpath is a Real Party-in-Interest
`A.
`According to the Office Patent Trial Practice Guide, “at a general level, the
`
`‘real party-in-interest’ is the party that desires review of the patent. Thus, the ‘real
`
`party-in-interest’ may be the petitioner itself, and/or it may be the party or parties
`
`at whose behest the petition has been filed.” Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Practice Guide”). Here, Springpath is
`
`plainly the party that desires review of the ’799 Patent, but is time-barred pursuant
`
`to § 315(b). It is Springpath that is accused of infringing the ’799 Patent in the
`
`district court litigation, not Cisco. Cisco is not, and has never been, a defendant in
`
`the Springpath district court litigation. None of Cisco’s products have been
`
`accused of patent infringement in that litigation.
`
`Springpath’s desire for review of the ’799 Patent is plainly evident. It filed
`
`two petitions for inter partes review on September 14, 2016, the day before its
`
`statutory deadline. See Springpath, Inc. v. SimpliVity Corp., Case IPR2016-01779,
`
`Petition for Inter Partes Review (September 14, 2016) (Paper 3) (Ex. 1019); and
`
`4
`
`

`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
`
`Springpath, Inc. v. SimpliVity Corp., Case IPR2016-01780, Petition for Inter
`
`Partes Review (September 14, 2016) (Paper 3) (Ex. 1021). And when both of its
`
`petitions were denied institution (Exs. 1040 & 1041), Cisco commenced its gambit
`
`to secure Springpath a third bite at the apple by filing a petition without identifying
`
`Springpath as an RPI or privy.
`
`“[T]here is a rebuttable presumption that a petitioner’s identification of real
`
`parties-in-interest is accurate,” but if the Patent Owner provides sufficient rebuttal
`
`evidence, “the ultimate burden of proof remains with the petitioner to establish that
`
`it has complied with the statutory requirement of 35 U.S.C. § 312(a)(2) to identify
`
`all real parties-in-interest.” Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`
`Case IPR2014-00488, slip op. at 6-7 (PTAB March 16, 2015) (Paper 52). This is
`
`appropriate because “a petitioner is far more likely to be in possession of, or have
`
`access to, evidence relevant to the issue than is a patent owner.” Id., citing Atlanta
`
`Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, slip op. at 6–8
`
`(PTAB Jan. 6, 2015) (Paper 88).
`
`Determination of whether a non-party is a real party-in-interest is based on
`
`“the totality of the circumstances.” ZOLL Lifecor Corp. v. Philips Elecs. N. Am.
`
`Corp., IPR2013-00607, slip op. at 9 (PTAB Mar. 20, 2014) (Paper 13). The Board
`
`may consider various factors, including whether the non-party “exercised or could
`
`have exercised control over [the petitioner’s] participation in a proceeding,” the
`5
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`

`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
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`non-party’s “relationship with the petitioner,” the non-party’s “relationship to the
`
`petition itself, including the nature and/or degree of involvement in the filing,” and
`
`“the nature of the entity filing the petition.” Practice Guide at 48,759–60. The
`
`Board will make these determinations “on a case-by-case basis taking into
`
`consideration how courts have viewed the terms ‘real party-in-interest’ and
`
`‘privy.’” Id. at 48,759, citing Taylor v. Sturgell, 553 U.S. 880, 893-895 (2008). Of
`
`the six factors discussed in Taylor that bear on non-party preclusion, one is
`
`particularly relevant here:
`
`Fifth, a party bound by a judgment may not avoid its
`preclusive force by relitigating through a proxy.
`Preclusion is thus in order when a person who did not
`participate in a litigation later brings suit as the
`designated representative of a person who was a party to
`the prior adjudication. And although our decisions have
`not addressed the issue directly, it also seems clear that
`preclusion is appropriate when a non[-]party later brings
`suit as an agent for a party who is bound by a judgment.
`
`Taylor, 553 U.S. at 895 (citations omitted; emphasis added). Because Cisco is
`
`acting as Springpath’s proxy, Springpath is an RPI.
`
`Cisco’s relationship with Springpath is analogous to the RPI relationship in
`
`Medtronic, in which petitioner Medtronic was found to be acting as a proxy for its
`
`time-barred subsidiary, Cardiocom. See Medtronic at 9-13. In Medtronic, the
`
`6
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`

`

`Case IPR2017-01933
`U.S. Patent No. 8,478,799
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`subsidiary Cardiocom was accused of infringement, not the petitioner. The Board
`
`found that Medtronic “is a nominal party with no substantial interest apart from
`
`that of its subsidiary Cardiocom.” Id. at 18. Here too, Cisco is a nominal party with
`
`no substantial interest apart from its subsidiary, Springpath.
`
`The scenario here is also similar to the fact pattern in RPX Corp. v. VirnetX,
`
`Inc., IPR2014-00171, slip op. at 4–11 (PTAB July 14, 2014) (Paper 57). In RPX,
`
`the petitioner was found to have acted as a proxy for Apple Inc. because, inter alia,
`
`(1) Apple, not RPX, was accused of infringing the challenged patents and,
`
`therefore, the party with the interest in the claims being reviewed; and (2) Apple
`
`had previously filed its own petitions for inter partes review, which were denied.
`
`RPX at 4-7.
`
`Therefore, Springpath is an RPI and should have been identified as such in
`
`Cisco’s petition. Granting Cisco leave to amend its deficient petition to identify
`
`Springpath as an RPI would be futile, since the one-year statutory deadline for
`
`Cisco/Springpath to file a petition for inter partes review has long passed. The
`
`earliest date that the amended petition would be entitled to would be more than a
`
`year beyond September 16, 2016, one year after Patent Owner served the
`
`complaint against Springpath in district court. See Ex. 2005.
`
`7
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`U.S. Patent No. 8,478,799
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`Springpath Is a Privy of Petitioner
`B.
`In contrast to the real-party-in-interest analysis, privity “is more expansive,
`
`encompassing parties that do not necessarily need to be identified as a ‘real party
`
`in interest.’” Practice Guide at 48,759. The privity inquiry is equitable and flexible
`
`in nature with the ultimate goal being to determine “whether the relationship
`
`between the purported ‘privy’ and the relevant other party is sufficiently close such
`
`that both should be bound by the trial outcome and related estoppels.” Id. Such
`
`relationships are rooted in traditional common law preclusion principles. Id. at
`
`48760.
`
`The Board explained in Azure Gaming v. MGT Gaming, IPR2014-01288
`
`(Feb. 20, 2015, Paper No. 13 at 12-16) that “the privity inquiry focuses on the
`
`relationship between the parties,” rather than the non-party’s relationship to a
`
`specific proceeding. Id. at 13 (emphasis added). The Practice Guide explains that
`
`the central focus of the privity query is whether the parties’ relationship is
`
`sufficiently close that it would be fair to impose estoppel effects between the
`
`parties. See Practice Guide at 48760. Where multiple data points exist that would
`
`support a finding of privity between two entities related to the patent under review,
`
`it is appropriate to analyze the relationship in its entirety because “privity is a
`
`contextual concept.” Hewlett-Packard Co. v. Tech. Properties LTD., LLC,
`
`IPR2013-00217, 2013 WL 8701599, at *2 (PTAB Oct. 10, 2013).
`
`8
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`Case IPR2017-01933
`U.S. Patent No. 8,478,799
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`The evidence demonstrates that Cisco and Springpath were in privity prior to
`
`the filing of the petition. Within days of filing its petition, Cisco issued an August
`
`21, 2017 press release announcing its intent to acquire Springpath. See Ex. 2002 at
`
`1. Cisco stated that “[t]he acquisition is the culmination of a long-standing strategic
`
`relationship between Cisco and Springpath.” Id. Cisco’s August 21, 2017 press
`
`release states that the companies have worked together since early 2016. Id.
`
`It was reported in February 2016 that Rob Soderberry, Cisco’s Senior Vice
`
`President of Enterprise Products and Solutions, had been a Board Observer of
`
`Springpath since November 2015. See Ex. 2006 at 1. Consistent with both that
`
`timeline and Cisco’s claim of a long-standing strategic relationship with
`
`Springpath, industry media reported in March 2016 that Cisco led a Series C
`
`investment in Springpath in 2015 and executed an OEM agreement with
`
`Springpath that included an option to acquire Springpath. See Ex. 2004 at 1. Little
`
`more than a month after the filing of its petition, on September 22, 2017, Cisco
`
`announced the completion of its acquisition of Springpath. See Ex. 2007 at 1. The
`
`FAQs associated with that press release stated that “[i]n January 2016, Cisco and
`
`Springpath made a mutual commitment to each other as a preferred strategic
`
`partner in delivering the HyperFlex platform based on Springpath’s
`
`hyperconvergence software.” See Ex. 2008 at 2. Four days later, Springpath, Inc.,
`
`9
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`Case IPR2017-01933
`U.S. Patent No. 8,478,799
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`was converted to Springpath LLC. See Ex. 2001. Cisco has not updated its
`
`mandatory notices to reflect its ownership of Springpath since filing its petition.
`
`Meanwhile, in the Springpath district court litigation, Springpath has
`
`asserted that Springpath and Cisco share a common interest with respect to the
`
`’799 Patent that precedes both the petition and September 11, 2015, the date Patent
`
`Owner sued Springpath. In response to document requests seeking
`
`communications between Cisco and Springpath related to the ’799 Patent,
`
`Springpath stated the following:
`
`RFP Nos. 20 and 21. All communications Springpath
`has had with third parties, including Cisco, relating to
`this litigation and the asserted patent would have been
`made pursuant to the common interest privilege. To
`the extent that any responsive, privileged documents
`were created before the filing of the Complaint,
`Springpath will provide a privilege log consistent with
`the schedule to be agreed upon by the parties.
`Ex. 2009 at 3. (emphasis added). Ultimately, Cisco seeks to have it both ways.
`
`Springpath, as Cisco’s subsidiary, has asserted a long-standing commonality of
`
`interest between Springpath and Cisco to its advantage in the district court
`
`litigation. Cisco failed to disclose the same long-standing commonality of interest
`
`here because it is to its detriment.
`
`10
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`Case IPR2017-01933
`U.S. Patent No. 8,478,799
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`Cisco should have accurately identified Springpath as a real party-in-interest
`
`and/or privy in its mandatory notices. But because Springpath was served with the
`
`complaint asserting infringement of the ’799 Patent more than a year prior to
`
`Cisco’s filing of its petition, pursuant to 37 C.F.R. § 42.101(b), the petition is time-
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`barred and the Board should deny institution.
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`III. BACKGROUND OF THE ’799 PATENT
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`A. The ’799 Patent Discloses an Improved Computer File System
`The ’799 Patent teaches that traditional file systems sit directly on top of a
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`block store storage system. ’799 Patent at 10:40-45 (Ex. 1001). These “block
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`stores” could be implemented on a local storage device or on remote storage
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`devices. Id. at 10:41-43. Block stores are storage units, such as a hard disk drive or
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`solid-state drive identified by a logical unit number (“LUN”), that are divided into
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`“blocks” where file data that cannot fit into a single block is spread out across the
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`block store in multiple blocks. Id. at 8:59-62 (“Sometimes content can be very
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`large (many GB), and does not fit contiguously on a disk or persistent medium.
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`The content is broken up, and stored as discrete units. In the case of traditional file
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`systems, this would be blocks on disk.”).
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`Unlike traditional file systems that are stacked directly on top of a block
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`store, the computer file system claimed by the ’799 Patent is “stacked on top of a
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`lightweight object file system,” also referred to as an “object store.” See id. at
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`10:47-51. Object stores organize data into objects rather than blocks. “In practice,
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`object sizes are typically powers of 2, and range from 512 bytes (29) up to 1 MB
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`(220) or more, although there is no architectural restriction on the size of an object.”
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`Id. at 8:25-27.
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`The ’799 Patent distinguishes an “object” from a “block.” The drafters of the
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`’799 Patent knew the difference and made clear that the objects of the ’799 Patent
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`are stored in an object-based file system storage abstraction known as an “object
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`store” or “object container,” a different construct than a block store. Id. at 10:46-
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`61. For example, the ’799 Patent specification explains how the claimed object
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`store can co-exist with an existing block store in the LUN 109. It provides:
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`File systems normally sit on top of a block storage
`abstraction, implemented by block drivers 105. The
`block storage may be on a Logical Unit Number LUN
`local storage device 109, or it may be on a remote LUN
`using an iSCSI protocol. Block Drivers 105 also have
`well-defined interfaces in an operating system.
`
`In this embodiment, the new file system works alongside
`the other file systems in the kernel. The new file system is
`composed of a namespace file system 107 that is stacked
`on top of a lightweight object file system 108. The
`interface 152 between the two components may be any of
`various industry standard object interfaces such as the
`ANSI T-10 object standard.
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`The Object file system (Object Store) 108 in turn is
`partitioned such that a library of commonly used
`functions, the Digest, Indexing, Compression, Encryption
`(DICE) library 310 is abstracted out. The library 310 may
`be realized completely in software, or take advantage of a
`variety of hardware acceleration 113 techniques, one of
`which is illustrated.
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`Id. at 10:40-58 (emphasis added).
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`Object storage systems offer benefits over traditional block store
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`implementations. For example, object storage is an abstraction that allows the
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`naming and storage of files to be agnostic to the physical and logical block
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`addressing of an underlying block storage apparatus. See id. at 7:7-9.
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`The object store of the ’799 Patent may then be stacked on top of an
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`underlying block storage abstraction, such as a LUN, disk partition, or remote
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`device accessed through network protocols. See id. at 10:59-67. Figure 1 of the
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`’799 Patent, reproduced below, demonstrates the basic structure of the claimed file
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`system. It highlights the object store 108, block storage abstraction (Block Drivers
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`105), and an underlying storage device for file system data (LUN 109):
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`
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`Id. at Fig. 1 (annotated).
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`The Challenged Claims of the ’799 Patent
`B.
`Cisco has challenged claims 1-22 and 26-36 of the ’799 Patent. Cisco does
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`not challenge claims 23-25. Each challenged claim requires a namespace file
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`system accessing an object store that stores file, data, metadata, inode map and
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`directory objects. Each of these objects has a globally unique object fingerprint
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`derived from the content of the respective object.
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`Claim 1 is exemplary:
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`1. A computer file system for naming and storing of files on one or more
`computer storage devices, the system comprising:
`a namespace file system accessing an object store, the system including
`a memory and a hardware processor in communication with the
`memory, the processor for executing program instructions for
`accessing the object store using object fingerprints, the object store
`holding files, data and metadata as objects, each object having a
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`globally unique object fingerprint derived from the content of the
`object and used to access the object store, wherein:
`each file object comprising a mapping of object fingerprints for the data
`objects or metadata objects of the file and the file object having its
`own object fingerprint derived from the fingerprints of the objects in
`the file, and wherein the object store further includes:
`an inode map object comprising a mapping of file system inode numbers
`and object fingerprints enabling the inode numbers to stay constant
`while the object fingerprints change as the file content changes; and
`directory objects, each directory object comprising a mapping of inode
`numbers and file names;
`wherein each of the inode map object and directory object has its own
`object fingerprint derived from the content of the respective object.
`
`
`Id. at 32:35-60 (claim 1) (emphasis added).
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`19. A method comprising:
`a namespace file system accessing an object store, the object store
`holding files, data and metadata as objects, each object having an
`object fingerprint which is globally unique and derived from its
`content and used to access the object store;
`and each file object comprising a mapping of object fingerprints for the
`data objects or metadata objects of the file, and the file object having
`its own object fingerprint derived from the fingerprints of the objects
`in the file; and maintaining in the object store an inode map object
`comprising a mapping of file system inode numbers and object
`fingerprints enabling the inode numbers to stay constant while the
`object fingerprints change as the file content changes;
`and maintaining in the object store directory objects, each directory
`object comprising a mapping of inode numbers and file names;
`wherein each of the inode map object and directory object has its own
`object fingerprint derived from the content of the respective object.
`
`
`Id. at 33:50 – 34:9 (claim 19) (emphasis added).
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`Challenged dependent claims 2-18 depend from claim 1, and challenged
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`dependent claims 20-22 and 26 depend from independent claim 19. Challenged
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`Independent claim 27 is directed to “a computer program embodied in a non-
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`transitory machine readable storage device comprising program code means,
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`which, when executed by a process, performs the steps of method claim 19.” Id. at
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`34:29-32. Challenged dependent claims 28-36 depend from claim 27. Therefore, if
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`Petitio