IPR2021-00174
`U.S. Patent No. 7,870,225
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`MICROSOFT CORPORATION and HP INC.,
`Petitioners
`
`
`v.
`
`
` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`
`
`
`Case IPR2021-00174
`U.S. Patent 7,870,225
`
`
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`
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`
`
`__________________
`
`
`SynKloud Technologies, LLC’s Patent Owner Preliminary Response Pursuant
`To 37 C.F.R. § 42.107(a)
`
`
`
`
`
`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................4
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`A.
`
`B.
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`Prior Art Storage Systems ....................................................................................................4
`
`The ’225 Patent: Mr. Han-Gyoo Kim Invents A Disk System Directly Attached
`to a Network And Recognized As A Local Disk To A Host. ..............................................5
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`III. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW .....................................................7
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`IV. CLAIM CONSTRUCTION. ....................................................................................................8
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`a.
`
`b.
`
`V.
`
`A.
`
`virtual host bus adapter (independent claim 1). ...........................................................10
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`enumerating NAD that are available over the network (independent claim 1). ..........12
`
`THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR PROPOSED
`UNPATENABILITY GROUNDS AGAINST ANY CLAIM. .........................................16
`
`The Petitioners Failed To Show That Any Claim Of The ’225 Patent Is
`Anticipated By Jewett. .......................................................................................................16
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`1.
`
`Jewett Does Not Disclose A “virtual host bus adapter,” As Recited in
`Independent Claim 1. .............................................................................................17
`
`i.
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`Jewett’s Host Drivers ...................................................................................................17
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`2.
`
`3.
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`4.
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`Jewett Does Not Disclose A “device driver … creating a virtual host bus
`adapter,” As Recited in Independent Claim 1. .......................................................19
`
`Jewett Does Not Disclose “the virtual host bus adapter controlling the
`NAD in a way indistinguishable from the way as a physical host bus
`adapter device controls device so that the host recognizes the NAD,” As
`Recited in Independent Claim 1. ............................................................................22
`
`Jewett Does Not Disclose A “device driver enumerating NAD that are
`available over the network, not directly attached to the host internal
`system bus,” As Recited in Independent Claim 1. .................................................22
`
`B.
`
`The Petitioners Failed To Show That Any Claim Of The ’225 Patent Would Have
`Been Obvious. ....................................................................................................................25
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`1.
`
`Petitioners Failed To Show That Any Claim Of The ‘225 Patent Would
`Have Been Obvious Over Jewett Alone. ...............................................................28
`
`
`
`ii
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
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`2.
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`3.
`
`4.
`
`Petitioners Failed To Show That Claim 1 Of The ’225 Patent Would Have
`Been Obvious Over Jewett In Combination With The Secondary
`References. .............................................................................................................29
`
`Petitioners Failed To Show That Dependent Claims 5-12 Of The ’225
`Patent Would Have Been Obvious Over Jewett In Combination With The
`Secondary References. ...........................................................................................34
`
`Petitioners Failed To Show That Dependent Claim 6 Would Have Been
`Obvious. .................................................................................................................36
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`a.
`
`Dependent Claim 6: Registering ............................................................................36
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`i.
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`ii.
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`Registering in the ’225 Patent ...........................................................................36
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`Petitioners’ Theories Regarding Registering ....................................................38
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`iii.
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`Petitioners’ First Registering Theory Using Mounting Is Unavailing. .............38
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`viii.
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`Petitioners’ Second Registering Theory Using Device Files Is Unavailing .....42
`
`ix.
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`The Claimed “registering” Would Not Have Been Taught By The Combination
`Of Jewett and The Secondary References. ........................................................44
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`5.
`
`Petitioners Failed To Show That Dependent Claims 7-12 Of The ’225
`Patent Would Have Been Obvious Over Jewett In Combination With The
`Secondary References. ...........................................................................................45
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`C.
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`The Petitioners Failed To Set Forth A Proper Obviousness Analysis ...............................45
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`VI.
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`CONCLUSION ..................................................................................................................47
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`
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`iii
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`

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`IPR2021-00174
`U.S. Patent No. 7,870,225
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
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`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.
`289 F.3d 801 (Fed. Cir. 2001)
`
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`CCS Fitness Inc. v. Brunswick Corp
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`288 F.3d 1366, 62 USPQ2d at 1662
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.
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`809 F.3d 1375 (Fed. Cir. 2015)
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`Enzo Biochem, Inc. v. Applera Corp.
`780 F.3d 1149 (Fed. Cir. 2015)
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`
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`Epistar, et al. v. Trustees Of Boston University
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`IPR2013-00298, Paper No. 18 (P.T.A.B. November 15, 2103)
`
`In re Geisler
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`116 F.3d 1465 (Fed. Cir. 1997)
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`Graham v. John Deere Co.
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`383 U.S. 1 (1966)
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`Harmonic Inc. v. Avid Tech., Inc.
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`815 F.3d 1356 (Fed. Cir. 2016)
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`Johnson Worldwide Assocs., Inc. v. Zebco Corp.
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`9
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`175 F.3d 985 (Fed. Cir. 1999)
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`K-2 Corp. v. Salomon S.A.
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`191 F.3d 1356 (Fed. Cir. 1999)
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`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries
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`2019 WL 5070454 *20 (PTAB 2019)
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`iv
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`9
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`9
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`29
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`11
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`38, 39
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`37
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`2, 28, 48
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`30, 31, 35
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`9
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`4, 34
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`IPR2021-00174
`U.S. Patent No. 7,870,225
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`K/S Himpp v. Hear-Wear Techs., LLC
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`751 F.3d 1362 (Fed. Cir. 2014)
`
`KSR Int’l Co. v. Teleflex Inc.
`
`550 U.S. 398 (2007)
`
`
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`Liberty Mutual v. Progressive Casualty
`
`CBM-2012-00003, Paper No. 7 (P.T.A.B. 2012)
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`In re Magnum Oil Tools Int’l, Ltd.
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`829 F.3d 1364 (Fed. Cir. 2016)
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`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH
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`2017 WL 1052517*1 (PTAB 2017)
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`
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`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.
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`2017 WL 3447870 *8 (PTAB 2017)
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`In re NuVasive
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`842 F.3d 1376 (Fed. Cir. 2016)
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`OSRAM Sylvania, Inc. v. Am Induction Techs., Inc.
`39
`
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`In re Paulsen
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`30 F.3d 1475 (Fed. Cir. 1994)
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`Phillips v. AWH Corp.
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`415 F.3d 1303 (Fed. Cir. 2005)
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`Pitney Bowes, Inc. v. Hewlett-Packard Co.
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`182 F.3d 1298, 1305 (Fed. Cir. 1999).
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`Richardson v. Suzuki Motor Co.
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`868 F.2d 1226 (Fed. Cir. 1989)
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`SAS Institute v. Iancu
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`138 S.Ct 1348 (2018)
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`701 F.3d 698, 706 (Fed. Cir. 2012)
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`v
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`34, 35, 36
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`2, 28, 37, 48
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`3, 32, 49
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`31, 37
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`29, 34
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`2, 29,
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`9
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`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`In re Schulze
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`346 F.2d 600 (CCPA 1965)
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`Scripps Clinic & Research Found. v. Genentech, Inc.
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`16
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`927 F.2d 1565 (Fed. Cir. 1991)
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`Specialty Composites v. Cabot Corp.
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`845 F.2d 981 (Fed. Cir. 1988)
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`In re Suitco Surface, Inc.
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`603 F.3d 1255 (Fed. Cir. 2010)
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`Texas Digital Systems, Inc. v. Telegenix, Inc.,
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`308 F.3d 1193 (Fed. Cir. 2002)
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`
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`Verdegaal Bros. v. Union Oil Co. of California
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`16
`814 F.2d 628 (Fed. Cir. 1987)
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`Whiteserve, LLC v. Computer Packages, Inc.
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`37
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`694 F.3d 10 (Fed. Cir. 2012)
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`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
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`2018 WL 6604633 *1 (PTAB 2018)
`
`
`In re Zurko
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`258 F.3d 1379 (Fed. Cir. 2001)
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`
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`STATUTES
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`35 U.S.C. § 312(a)(3)
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`35 U.S.C. § 314(a)
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`37 C.F.R. § 42.107
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`37
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`9
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`9
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`8
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`29
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`35
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`30
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`29
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`1
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`vi
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
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`
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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit Number Description
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`2001
`
`2002
`
`2003
`
`2004
`
`Declaration of Zaydoon Jawadi
`
`Curriculum Vitae of Zaydoon Jawadi
`
`Microsoft Computer Dictionary, 5th Edition, 2002
`
`TCP/IP Illustrated: The Protocols; W. Richard Stevens;
`Addison-Wesley; 1994
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`
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`vii
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`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`I. INTRODUCTION
`
` The Board should deny the present request for inter partes review of
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`U.S. Patent No. 7,870,225 (“the ’225 patent”) because there is not a reasonable
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`likelihood that the Petitioners would prevail at trial with respect to at least one
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`claim of the ’225 patent for three separate and independent reasons.
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`First, each of Petitioners proposed grounds of rejection is missing one or
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`more limitations of the claims of the ’225 patent. Infra, §§ V.A and V.B. For
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`example, none of the combinations of prior art references asserted by
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`Petitioners would have taught (i) a “virtual host bus adapter,” (ii) a “device
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`driver … creating a virtual host bus adapter,” (iii) “a virtual host bus adapter
`
`controlling the NAD in a way indistinguishable from the way a physical host
`
`bus adapter device controls device so that the host recognizes the NAD,” or
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`(iv) “a device driver enumerating NAD that are available over the network, not
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`directly attached to the host internal system bus,” as recited in the sole
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`independent claim of the ’225 patent. Petitioners sole primary reference
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`(Jewett) does not even mention a “bus,” let alone a virtual host bus adapter, a
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`device driver that creates such an adapter, etc. And the secondary references
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`do not compensate for Jewett’s glaring deficiencies.
`
`Second, the Petitioners did not present any objective evidence as to why
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`one of ordinary skill in the art would have been motivated to modify the sole
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`
`
`1
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
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`primary Jewett reference with the teachings of the secondary references (e.g.,
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`Smith, Tackett, Wang), and reasonably expect success in achieving the
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`invention recited by the challenged claims of the ’225 patent. That is, the
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`Petitioners did not show that a “skilled artisan would have been motivated to
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`combine the teachings of the prior art references to achieve the claimed
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`invention, and that the skilled artisan would have had a reasonable expectation
`
`of success in doing so.” OSRAM Sylvania, Inc. v. Am Induction Techs., Inc.,
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`701 F.3d 698, 706 (Fed. Cir. 2012).
`
`Third, the Petitioners neglected to follow the legal framework for an
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`obviousness analysis set forth long ago by the Supreme Court. Graham v.
`
`John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of
`
`these questions might be reordered in any particular case, the [Graham] factors
`
`define the controlling inquiry.”) That framework requires consideration of the
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`following factors: (1) the scope and content of the prior art, (2) any differences
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`between the claimed subject matter and the prior art, and (3) the level of skill in
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`the art. The Board has previously warned that failure to identify differences
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`between the cited art and the claims is a basis for denying a petition:
`
`A petitioner who does not state the differences between
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`a challenged claim and the prior art, and relies instead on the
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`Patent Owner and the Board to determine those differences based
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`2
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`

`IPR2021-00174
`U.S. Patent No. 7,870,225
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`on the rest of the submission in the petition risks having the
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`corresponding ground of obviousness not included for trial for
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`failing to adequately state a claim for relief.
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`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at pp. 2-3.
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`The Petitioners ignored the Board’s warning by failing to identify the
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`differences between the challenged claims and the prior art. That is, the
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`Petitioners failed to identify the claim limitations that they believed are missing
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`from the primary reference (i.e., Jewett) and are instead taught by the
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`secondary references (e.g., Smith, Tackett, Wang). Petition, pp. 5. Rather,
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`Petitioners provided a description of each reference followed by a conclusory
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`statement that the references taught certain claim limitations, leaving the
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`Board to figure out whether the primary or secondary reference best teaches
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`the claim limitation. Ibid. Under this circumstance, it would be “inappropriate
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`for the Board to take the side of the Petitioner to salvage an inadequately
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`expressed ground …” Liberty Mutual v. Progressive Casualty, CBM-2012-
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`00003, paper 7 at pp. 2-3; paper 8 at pp. 14-15. For this additional reason,
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`inter partes review based on obviousness should be denied. See infra, § V.C.
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`For these reasons and those explained more fully below, the Petitioners
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`failed to show that it is reasonably likely to prevail on any proposed ground.
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`Accordingly, the Board should deny the Petition.
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`3
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`

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`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`II. TECHNOLOGY BACKGROUND
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`A.
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`Prior Art Storage Systems
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`As discussed in the background section of the ’225 patent, “NAS
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`(Network Attached Storage) products … can be connected to a network,
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`usually Ethernet, to provide a pre-configured disk capacity along with
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`integrated system/storage management using the NFS (Network File System)
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`protocol, the CIFS (Common Internet File System) protocol, or both on top of
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`the IP protocol used on the Internet.” EX1001, 1:30-35. Network Attached
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`Storage, however, has several disadvantages:
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`Since an NAS disk is not seen as a local disk to the client, the
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`installation, movement, and administration of an NAS disk should
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`be done only through the operating system and software offered as
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`part of the NAS system. An NAS disk is installed in the inside bus
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`of the NAS system, leading to a limitation to the number of disks
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`that can be installed. Since the NAS system has a hard disk under
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`its own operating system, the client cannot use an arbitrary file
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`system to access the hard disk. Further, the NAS system requires
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`an IP address. Overall, not only the installation and administration
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`costs per disk are more expensive than those of a local disk, but
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`also user convenience is severely restricted.
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`Id. at 1:44-56.
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`Another alternative called “SAN (Storage Area Network) … uses the
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`Fibre Channel technology. To use the devices connected to a SAN, a special-
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`4
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`

`IPR2021-00174
`U.S. Patent No. 7,870,225
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`type of switch is needed. For example, Fiber Channel uses a Fibre Channel
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`hub or a Fibre Channel switch.” Id. at 1:57-60. But “[t]he SAN has some
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`shortcomings ... In general, the SAN equipment is expensive, and so is the
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`administration cost of the SAN system because, for example, it often requires
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`an administrator with a specialized knowledge on the system.” Id. at 1:60-64.
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`For these reasons, the inventor of the ’225 patent recognized “a need for
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`an interface that allows a disk system to be directly attached to a network,
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`while still being accessed like a local disk without the need of adding an
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`additional file server or special equipment.” Id. at 1:66 – 2:2.
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`
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`B.
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`The ’225 Patent: Mr. Han-Gyoo Kim Invents A Disk System Directly
`Attached to a Network And Recognized As A Local Disk To A Host.
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`The ’225 patent addresses the deficiencies of the prior art with “a
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`network-attached disk (NAD) system that includes an NAD device for
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`receiving a disk access command from a host through a network, a device
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`driver at the host for controlling the NAD device through the network, where
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`the device driver recognizes the NAD device as a local device.” Id. at 2:23-26.
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`“The NAD device includes a disk for storing data, a disk controller for
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`controlling the disk, and a network adapter for receiving a disk access
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`command from the host through a network port.” Id. at 2:28-31. [A]n
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`5
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
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`illustration of how multiple NAD devices may be accessed by multiple hosts
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`through a network” is shown in FIG. 2, which is reproduced below.
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`“NAD device #1 123 with disk(1,1) 126 and NAD device #2 124 with
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`disk(2,1) 127 and disk(2,2) 128 are accessed by Host #1 120 through a network
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`122, while NAD device #3 125 with disk(3,1) 129, disk(3,2) 130, disk(3,3) 131
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`is accessed by Host #2 121 through the same network 122.” Id. at 3:60-65.
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`“Each disk appears to the host as if it is a local disk to connected to the system
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`bus of the host so that each disk can be dynamically installed or removed. The
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`6
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
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`present invention achieves this by creating a virtual host bus adapter in purely
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`software means that recognizes an NAD device as if it is connected to the
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`system bus although there is no physical host bus adapter connected [to] the
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`NAD.” Id. at 3:66 – 4:5. This is distinguished from the conventional Network
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`Area Storage (NAS) scheme where a NAS device connected through the MC
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`is still recognized as an independent file server connected to a network.” Id. at
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`4:5-8.
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`The invention of the ’225 patent has many advantages over conventional
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`network storage. The disk system of the ’225 patent “can be recognized and
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`used as a local disk to a host without requiring additional facility such as an
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`additional file server, a special switch, or even an IP address.” Id. at 2:9-12.
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`The disk system also “can be conveniently connected to a server without much
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`intervention of network/server administration.” Id. at 2:13-15. It is also “low-
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`cost” and “can be plugged into existing network ports to readily satisfy a disk
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`capacity demand.” Id. at 2:16-18.
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`
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`III. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW
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`For the Board’s convenience, below is a summary (as understood by
`
`Patent Owner) of the claim rejections proposed by the Petitioners:
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`7
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`i.
`
`Claims 1, 5-12 are alleged to be anticipated under § 102 by U.S.
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`Patent No. 7,392,291 to Jewett (“Jewett”);
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`ii. Claims 1, 5-12 are alleged to have been obvious under §103 over
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`Jewett;
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`iii. Claims 1, 5-12 are alleged to have been obvious under §103 over
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`Jewett and U.S. Patent No. 5,829,053 to Smith (“Smith”);
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`iv. Claims 1, 8 are alleged to have been obvious under §103 over
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`Jewett and U.S. Patent No. 6,834,326 to Wang (“Wang”); and
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`v. Claims 6-12 are alleged to have been obvious under §103 over
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`Jewett and Jack Tackett Jr. and David Gunter, Using Linux, 3rd ed. (1997)
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`(“Tackett”).
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`IV. CLAIM CONSTRUCTION.
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`Claim construction is generally an issue of law. Claims in an inter partes
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`review are construed pursuant to the principle set forth by the court in Phillips
`
`v. AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under
`
`Phillips, the specification is the single best source for claim interpretation. 415
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`F.3d at 1312. “The terms used in the claims bear a heavy presumption that
`
`they mean what they say and have the ordinary meaning that would be
`
`attributed to those words by persons skilled in the relevant art.” Texas Digital
`
`
`
`8
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`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`System, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002)
`
`(emphasis added) (internal quotation marks omitted) (citing CCS Fitness, Inc.
`
`v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); K-2 Corp. v.
`
`Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999); Johnson Worldwide
`
`Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); Specialty
`
`Composites v. Cabot Corp., 845 F.2d 981, 986 (Fed. Cir. 1988)).
`
`In addition, a claim preamble may be construed as limiting “if it recites
`
`essential structure or steps, or if it is ‘necessary to give life, meaning, and
`
`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
`
`F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard
`
`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Additionally, the “appropriate
`
`context” to read a claim term includes both the specification and the claim
`
`language itself. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`
`2010). If a term is “used differently by the inventor,” he may provide a special
`
`definition if he does so with “reasonable clarity, deliberateness, and precision.”
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
` As explained by Mr. Jawadi, “Petitioners’ expert’s constructions of at
`
`least the term ‘virtual host bus adapter’ and the term ‘a device driver, running
`
`at the host, for creating a virtual host bus adapter in software controlling the
`
`NAD through the network’ are not consistent with the understanding that a
`
`
`
`9
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`POSITA [Person having Ordinary Skill In The Art] would have had of the
`
`claims of the ’225 Patent.” EX2001, ¶ 26.
`
`a.
`
`virtual host bus adapter (independent claim 1).
`
`Petitioners’ construction of “virtual host bus adapter” as “a software
`
`adapter that causes the host to recognize a NAD device as if it were connected
`
`to the host through a physical adapter” (Petition, 12-14) is not consistent with
`
`the understanding that a POSITA would have had of this claim limitation in
`
`light of the specification of the ’225 patent.
`
`1. Petitioners’ Construction Ignores the Virtual Host Bus
`Adapter Descriptions In The Specification
`
`As explained by Mr. Jawadi, “[i]n their construction, Petitioners ignore
`
`these descriptions of the virtual host bus adapter provided in the specification of
`
`the ’225 Patent.” EX2001, ¶ 86. For example, Petitioners’ construction does not
`
`consider the disclosure in the specification of the ’225 Patent “describe[ing] at
`
`least three goals of the virtual host bus adapter: (1) the host recognizes the
`
`network-attached device (NAD) as if the NAD device is a local device to the
`
`host although no physical host bus adapter is connected to the host bus; (2) each
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`NAD device can be dynamically connected or removed; and (3) there is no need
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`to use network addresses, such as IP addresses, for the host to communicate with
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`the NAD device.” Id. at ¶ 84.
`
`
`
`10
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`

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`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`Additionally, Petitioners’
`
`construction does not
`
`consider
`
`the
`
`Specification’s disclosure of the “functions performed by the virtual host bus
`
`adapter, installation of the virtual host bus adapter, preparation and usage of the
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`virtual host bus adapter, implementation of the virtual host bus adapter under
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`the UNIX operating system, and implementation of the virtual host bus adapter
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`under the Windows operating system.” Id. at ¶ 85.
`
`2. Petitioners’ Construction Conflates The “virtual host bus
`adapter” Limitation With A Different Limitation.
`
`Instead of relying on the Specification to support their construction,
`
`Petitioners construe the “virtual host bus adapter” limitation in accordance with
`
`a separate, different limitation of Claim 1: “the virtual host bus adapter
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`controlling the NAD in a way indistinguishable from the way as a physical host
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`bus adapter device controls device so that the host recognizes the NAD as if it is
`
`a local device connected directly to the system bus of the host.” EX1001, 23:22-
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`26. Petitioners’ construction, therefore, is improper because it renders the
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`“virtual host bus adapter” limitation superfluous. By construing “the virtual host
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`bus adapter” as “a software adapter that causes the host to recognize a NAD
`
`device as if it were connected to the host through a physical adapter” renders the
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`virtual host bus adapter limitation superfluous. Enzo Biochem, Inc. v. Applera
`
`Corp., 780 F.3d 1149, 1154 (Fed. Cir. 2015) (reading a limitation out of the
`
`claim “impermissibly broaden[s] the claim.”).
`
`
`
`11
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`

`

`In addition, substituting Petitioners’ construction of “virtual host bus
`
`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`adapter” for that limitation into the claim yields a non-sensical result:
`
`device driver, running at the host, for creating a software adapter
`that causes the host to recognize a NAD device as if it were
`connected to the host through a physical adapter in software
`controlling the NAD through the network via the NIC, …, to
`make the host recognize the NAD as a host local device;
`the software adapter that causes the host to recognize a NAD
`device as if it were connected to the host through a physical
`adapter controlling the NAD in a way indistinguishable from the
`way as a physical host bus adapter device controls device so that
`the host recognizes the NAD as if it is a local device connected
`directly to the system bus of the host.
`
`EX2001, ¶¶ 87-90.
`
`
`
`b.
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`enumerating NAD that are available over the network
`(independent claim 1).
`
`The claim limitation “enumerating NAD that are available over the
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`network” should be construed as “identifying devices located on a bus and
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`assigning a unique identification code (or number) to each device.”
`
`i.
`
`Patent Owner’s Construction Is Consistent With The
`Plain and Ordinary Meaning In Light Of The
`Specification.
`
`This construction is consistent with the understanding of the term
`
`“enumerating” would have had in the field of computing:
`
`“enumerated data type n. A data type consisting of a sequence of
`named values given in a particular order.” Exhibit 2003,
`Microsoft Computer Dictionary, 5th Edition, 2002, p. 196
`
`
`
`12
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`
`Patent Owner’s construction is also consistent with the understanding that a
`
`POSITA would have had in the context of a computer system host bus where
`
`enumerating generally refers to identifying devices located on a bus and
`
`assigning a unique identification code (or number) to each device:
`
`“bus enumerator n. A device driver that identifies devices located
`on a specific bus and assigns a unique identification code to each
`device. The bus enumerator is responsible for loading information
`about the devices onto the hardware tree. See also bus, device
`driver, hardware tree.” Exhibit 2003, Microsoft Computer
`Dictionary, 5th Edition, 2002, p. 78; EX1013, p. 68
`
`“enumerated data type n. A data type consisting of a sequence of
`named values given in a particular order.” Exhibit 2003,
`Microsoft Computer Dictionary, 5th Edition, 2002, p. 196
`
`Substituting this construction into claim 1 yields: “a device driver, running at
`
`the host, for creating a virtual host bus adapter in software controlling the
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`NAD through the network via the NIC, the device driver identifying NAD
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`devices that are available over the network and assigning a unique
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`identification code (or number) to each NAD device, not directly attached to
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`the host internal system bus, to make the host recognize the NAD as a host
`
`local device.” EX2001, ¶ 146.
`
`Patent Owner’s construction is also consistent with the Specification of
`
`the ’225 Patent:
`
`“One responsibility of the bus driver is to enumerate devices
`attached to the bus and to create physical device objects for each of
`
`
`
`13
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`them as necessary in Windows 2000.” ’225 Patent, 11:39-42
`(emphasis added);
`
`“Shown on the left half is a layer of recursively enumerated SCSI
`devices on top of the PCI bus, which is typically the case when
`SCSI disks are connected to the host's PCI bus.” ’225 Patent,
`12:25-28, (emphasis added);
`
`“The functional driver of the PCI bus can then enumerate its own
`hardware devices attached to the PCI bus, where the example
`system in FIG. 21 assumes to have a set of SCSI devices, to create
`a SCSI port PDO 643.” ’225 Patent, 12:38-41 (emphasis added);
`
`“The NAD bus driver performs the functions of finding out the
`number of the NICs installed in the host computer and
`enumerating those NICs to create an NAD port PDO for each of
`the existing NICs.” ’225 Patent, 14:7-10 (emphasis added).
`
`
`
`
`Therefore, Patent Owner’s construction should be adopted.
`
`ii.
`
`Petitioners’ Construction Is Inconsistent With The
`Plain and Ordinary Meaning and The Specification Of
`The ’225 Patent.
`
`Petitioners’ proposed construction of the “enumerating” limitation “to
`
`include the device driver listing the NAD that are available over the network,”
`
`(Petition, 36) is inconsistent with the understanding that a POSITA would have
`
`had in light of the specification at the time of the invention of the ’225 patent.
`
`The phrase is “grammatically erroneous” and “unclear.” EX2001, ¶ 148.
`
`Petitioners’ reliance on the definition of “enumerate” in a general purpose
`
`dictionary (EX1036) is misplaced because it is “meaningless in the context of
`
`
`
`14
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`the ’225 Patent.” Indeed, substituting this definition from EX1036 (“to specify
`
`one after another: list”) into claim 1 “would yield ‘the device driver specifying
`
`one after another (listing) the NAD devices that are available over the network,’
`
`which is different from Petitioners’ proposed construction of ‘to include the
`
`device driver listing the NAD that are available over the network.’” EX2001, ¶
`
`150. “[T]he term enumerating generally refers to assigning identification codes
`
`(or numbers) to items, rather than specifying one after another (listing).” Id. at ¶
`
`151.
`
`“[I]n the context of a computer system host bus, enumerating generally
`
`refers to identifying devices located on a bus and assigning a unique
`
`identification code (or number) to each device, rather than specifying one after
`
`another (listing).” Id. at ¶ 152. Petitioners’ construction of “‘specifying one after
`
`another: listing’ (versus [Patent Owner’s construction of ‘identifying and
`
`assigning a unique number to’) is inconsistent with the usage of enumerating in
`
`the ’225 Patent.” Id. at ¶ 153.
`
`Both the plain and ordinary meaning to a POSITA and the Specification
`
`support Patent Owner’s proposed construction.
`
`
`
`
`
`
`
`
`
`15
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`

`

`IPR2021-00174
`U.S. Patent No. 7,870,225
`
`V. THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR
`PROPOSED UNPATENABILITY GROUNDS AGAINST ANY
`CLAIM.
`
`Petitioners have failed to show that any claim of the ’225 Patent is
`
`anticipated by or obvious in view of the cited references. Each reference lacks
`
`critical elements of the ’225 Patent, and because all elements are not disclosed,
`
`there can be no anticipation. There is also no indication that a POSITA would
`
`have had the necessary motivation to combine the references and reasonably
`
`expect success in achieving the claimed invention of the ’225 Patent.
`
`A. The Petitioners Failed To Show That Any Claim Of The ’225 Patent Is
`Anticipated By Jewett.
`
`“A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
`
`(Fed. Cir. 1987) (emphasis added), see also MPEP § 2131.02. “The identical
`
`invention must be shown in as complete detail as is contained in the . . .
`
`claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989)
`
`(emphasis added). Accordingly, “there must be no difference between the
`
`claimed invention and the reference disclosure, as viewed by a person of
`
`ordinary skill in the field of the invention.” Scripps Clinic & Research Found.
`
`v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). As explained in
`
`
`
`16
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`IPR2021-