UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION and HP INC.
`Petitioners,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`Patent No. 7,870,225
`Issued: January 11, 2011
`Filed: February 5, 2010
`
`Inventor: Hang-gyoo Kim
`
`Title:
`
`DISK SYSTEM ADAPTED TO BE DIRECTLY ATTACHED TO
`NETWORK
`
`________________________
`Inter Partes Review Nos. IPR2021-00174 and IPR2021-00175
`________________________
`DECLARATION OF HENRY HOUH
`REGARDING U.S. PATENT NO. 7,870,225
`________________________
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, Cover
`
`

`

`
`
`
`
`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`
`
`
`
`
`
`
`
`
`
`I, Henry Houh, do hereby declare and state, that all statements made herein of my
`
`
`
`
`
`own knowledge are true and that all statements made on information and belief are
`
`
`
`
`
`
`
`believed to be true; and further that these statements were made with the
`
`
`
`
`
`
`
`
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`
`
`
`
`
`
`
`
`or imprisonment, under Section 1001 of Title 18 of the United States Code.
`
`
`
`11, 2020 Executed on: November
`
`
`
`Henry Houh
`
`
`
`Petitioners Microsoft Corporation and HP Inc. -Ex. 1003, p. i
`
`
`
`
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Engagement ........................................................................................1
`
`Background and Qualifications...........................................................1
`
`Compensation and Prior Testimony ....................................................4
`
`Information Considered ......................................................................4
`
`II.
`
`LEGAL STANDARDS FOR PATENTABILITY.........................................5
`
`A.
`
`B.
`
`Anticipation ........................................................................................7
`
`Obviousness........................................................................................8
`
`III.
`
`THE 225 PATENT .....................................................................................14
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Effective Filing Date.........................................................................14
`
`Level of Ordinary Skill .....................................................................15
`
`Overview of 225 Patent ....................................................................15
`
`Prosecution History of 225 Patent.....................................................19
`
`Challenged Claims of the 225 Patent ................................................24
`
`Claim Construction...........................................................................27
`
`1.
`
`2.
`
`3.
`
`“network-attached device (NAD)” ..........................................28
`
`“general purpose network traffic” ...........................................28
`
`“data link frames” ...................................................................29
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. ii
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`“virtual host bus adapter”........................................................30
`
`“device accessing thread,” “device searching thread,” and
`
`“network connection setting thread” .......................................31
`
`“[controlling the NAD] in a way indistinguishable from the way
`
`as a physical host bus adapter device controls device”............33
`
`“formatted as local disks” .......................................................34
`
`“a device driver, running at the host, for creating a virtual host
`
`bus adapter in software controlling the NAD through the
`
`network” .................................................................................36
`
`IV. OVERVIEW OF THE PRINCIPAL PRIOR ART ......................................37
`
`A.
`
`Jewett (EX1005) ...............................................................................37
`
`1.
`
`2.
`
`Public Availability..................................................................37
`
`Overview of Jewett .................................................................43
`
`V.
`
`COMPARISON OF THE 225 PATENT TO THE PRIOR ART.................46
`
`A.
`
`The Challenged Claims Are Unpatentable ........................................46
`
`1.
`
`Claim 1 ...................................................................................46
`
`a.
`
`Preamble.....................................................................................................46
`
`(i)
`
`NAD access system.................................................................................46
`
`(ii) Host.........................................................................................................47
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. iii
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`(iii) Controls an External Device....................................................................53
`
`b.
`
`c.
`
`(i)
`
`(ii)
`
`Network Interface Card...............................................................................55
`
`Network-Attached Device...........................................................................58
`
`Network-Attached Device .......................................................................58
`
`Coupled to the Network...........................................................................60
`
`(iii) According to the Certain Network Protocol.............................................61
`
`d.
`
`Device Driver .............................................................................................62
`
`(i)
`
`(ii)
`
`Device Driver..........................................................................................63
`
`Recognize the NAD as a Local Device....................................................65
`
`e.
`
`Virtual Host Bus Adapter............................................................................76
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 2 ...................................................................................79
`
`Claim 3 ...................................................................................79
`
`Claim 4 ...................................................................................80
`
`Claim 5 ...................................................................................81
`
`Claim 6 ...................................................................................82
`
`Claim 7 ...................................................................................92
`
`Claim 8 ...................................................................................93
`
`Claim 9 .................................................................................101
`
`10.
`
`Claim 10 ...............................................................................103
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. iv
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`11.
`
`12.
`
`13.
`
`14.
`
`Claim 11 ...............................................................................108
`
`Claim 12 ...............................................................................119
`
`Claim 13 ...............................................................................130
`
`Claim 14 ...............................................................................138
`
`a.
`
`b.
`
`a.
`
`b.
`
`Bus Driver ................................................................................................138
`
`Port Driver................................................................................................141
`
`15.
`
`16.
`
`Claim 15 ...............................................................................145
`
`Claim 16 ...............................................................................146
`
`Disk Controller .........................................................................................146
`
`Network Adapter ......................................................................................147
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`Claim 17 ...............................................................................149
`
`Claim 18 ...............................................................................152
`
`Claim 19 ...............................................................................160
`
`Claim 20 ...............................................................................161
`
`Claim 21 ...............................................................................162
`
`Claim 22 ...............................................................................165
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. v
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`I.
`
`INTRODUCTION
`A.
`Engagement
`1.
`I, Henry Houh, make this declaration. All statements herein made of
`
`my own knowledge are true, and all statements herein made based on information
`
`and belief are believed to be true. I am over 21 and otherwise competent to make
`
`this declaration. Although I am being compensated for my time in preparing this
`
`declaration, the opinions herein are my own.
`
`2.
`
`I have been retained by counsel for Microsoft Corporation and HP
`
`Inc. as an expert witness in the above-captioned proceeding. I have been asked to
`
`provide my opinion about the state of the art of the technology described in U.S.
`
`Patent No. 7,870,225 (“the 225 Patent”) and on the patentability of claims 1-22 of
`
`the 225 Patent. The following is my written testimony on these topics.
`
`B.
`3.
`
`Background and Qualifications
`I received a Ph.D. in Electrical Engineering and Computer Science
`
`from the Massachusetts Institute of Technology in 1998. I also received a Master
`
`of Science degree in Electrical Engineering and Computer Science in 1991, a
`
`Bachelor of Science Degree in Electrical Engineering and Computer Science in
`
`1990, and a Bachelor of Science Degree in Physics in 1989.
`
`4.
`
`As further indicated in my C.V., I have worked in the electrical
`
`engineering and computer science fields, including web site and web server
`
`development, on several occasions. As part of my doctoral research at MIT from
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 1
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`1991-1998, I worked as a research assistant in the Telemedia Network Systems
`
`(TNS) group at the Laboratory for Computer Science. The TNS group built a high
`
`speed gigabit network and applications which ran over the network, such as remote
`
`video capture, processing and display on computer terminals. In addition to
`
`helping design the core network components, designing and building the high
`
`speed links, and designing and writing the device drivers for the interface cards, I
`
`also set up the group’s web server, which at the time was one of the first several
`
`hundred web servers in existence.
`
`5.
`
`I authored or co-authored twelve papers and conference presentations
`
`on our group’s research. I also co-edited the final report of the gigabit networking
`
`research effort with the Professor (David Tennenhouse) and Senior Research
`
`Scientist of the group (David Clark), who is generally considered to be one of the
`
`fathers of the Internet Protocol.
`
`6.
`
`I started building web servers in 1993, having set up the web server
`
`for the MIT Telemedia, Networks, and Systems Group, to which I belonged. It
`
`was one of the first several hundred web servers in existence, and went on to
`
`provide what was likely one of the first live Internet video initiated from a web
`
`site. In 1994, I founded a company called Agora Technology Group which set up
`
`advertising-supported web sites service for college recruiting called HIRES
`
`(Hypermedia Internet Recruitment and Employment Services). Agora also
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 2
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`provided web consulting services to companies; Agora set up web sites for Bay
`
`Networks (later purchased by Nortel) and Data Communications Magazine, among
`
`others.
`
`7.
`
`From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems that streamed
`
`packetized audio over data networks instead of using traditional phone lines. NBX
`
`was later acquired by 3Com Corporation, and the phone system is still available
`
`and being used at tens of thousands of businesses or more. As part of my work at
`
`NBX, I designed the core audio reconstruction algorithms for the telephones, as
`
`well as the packet transmission algorithms. I also designed and validated the core
`
`packet transport protocol used by the phone system. The protocol is used millions
`
`of times daily currently. Two of the company founders and I received US Patent
`
`No. 6,697,963 titled “Telecommunication method for ensuring on-time delivery of
`
`packets containing time sensitive data,” for some of the work I did there.
`
`8.
`
`Starting in 2001, I was architect for the next generation of web testing
`
`product by Empirix known as e-Test Suite. e-Test Suite is now owned by Oracle
`
`Corporation. e-Test provided functional and load testing for web sites. e-Test
`
`emulated a user’s interaction with a web site and provided web developers with a
`
`method of creating various scripts and providing both functional testing (e.g., did
`
`the web site provide the correct response) and load testing (e.g., could the web site
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 3
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`handle 5000 users on its web site simultaneously). Among Empirix’s customers
`
`was H&R Block, who used e-Test Suite to test the tax filing functionality of their
`
`web site as whether the web site could handle a large expected load prior to the
`
`filing deadline.
`
`9.
`
`I have also continued to develop web sites for various business
`
`projects, as well as setting up web sites on a volunteer basis for various groups that
`
`I am associated with.
`
`10.
`
`I am the author of several publications devoted to a wide variety of
`
`technologies in the fields of electrical engineering and computer science. These
`
`publications are listed on my C.V. (EX1004).
`
`C.
`11.
`
`Compensation and Prior Testimony
`I am being compensated at a rate of $620 per hour for my study and
`
`testimony in this matter. I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and testimony in this investigation. My
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony.
`
`Information Considered
`D.
`12. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 4
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`my opinions, I have considered the materials I identify in this report and those
`
`listed in the Exhibit List at the end of this report.
`
`13.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional
`
`documents and information in forming any necessary opinions, including
`
`documents that may not yet have been provided to me.
`
`14. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II.
`
`LEGAL STANDARDS FOR PATENTABILITY
`15.
`In expressing my opinions and considering the subject matter of the
`
`claims of the 225 Patent, I am relying upon certain basic legal principles that have
`
`been explained to me.
`
`16.
`
`First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`17.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 5
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`18.
`
`I understand that in this proceeding Microsoft has the burden of
`
`proving that the claims of the 225 Patent are anticipated by or obvious from the
`
`prior art by a preponderance of the evidence. I understand that “a preponderance
`
`of the evidence” is evidence sufficient to show that a fact is more likely true than it
`
`is not.
`
`19. As I discuss further in the claim construction section below, I
`
`understand that the 225 Patent claims must be interpreted in accordance with the
`
`Phillips standard of claim construction, my understanding of which is set forth in
`
`greater detail below. The claims after being construed are then to be compared to
`
`the information in the prior art.
`
`20.
`
`I understand that in this proceeding, the prior art that may be
`
`evaluated as a basis for unpatentability are limited to patents and printed
`
`publications. My analysis below compares the claims to patents and printed
`
`publications that are prior art to the claims.
`
`21.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to have made the claim “obvious” to a
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 6
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`person of ordinary skill in the art. My understanding of the two legal standards is
`
`set forth below.
`
`A.
`22.
`
`Anticipation
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`23.
`
`I have applied these standards in my evaluation of whether the claims
`
`of the patent would have been anticipated by the prior art.
`
`24.
`
`I understand that the “prior art” includes patents and printed
`
`publications that existed before the earliest filing date (the “effective filing date”)
`
`of the claim in the patent. I also understand that a patent will be prior art if it was
`
`filed before the invention date of the claimed invention, while a printed publication
`
`will be prior art if it was publicly available before that date or more than one year
`
`before the effective filing date.
`
`25.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim. I understand that
`
`claim limitations that are not expressly described in a prior art reference may still
`
`be there if they are “inherent” to the thing or process being described in the prior
`
`art. For example, an indication in a prior art reference that a particular process
`
`complies with a published standard would indicate that the process must inherently
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 7
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`perform certain steps or use certain data structures that are necessary to comply
`
`with the published standard.
`
`26.
`
`I understand that if a reference incorporates other documents by
`
`reference, the incorporating reference and the incorporated reference(s) should be
`
`treated as a single prior art reference for purposes of analyzing anticipation.
`
`27.
`
`I understand that it is acceptable to consider evidence other than the
`
`information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that reference.
`
`B.
`28.
`
`Obviousness
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`29.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall
`not be negatived by the manner in which the invention was made.
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 8
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`30.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious. I have applied these standards in my
`
`evaluation of whether the asserted claims of the patent at issue here would have
`
`been considered obvious as of the relevant priority date. I have been asked to
`
`assume that the priority date for the claims at issue here is October 13, 2000.
`
`31.
`
`I understand that to find a claim in a patent obvious, one must
`
`consider certain factual questions regarding the claimed invention and the prior art.
`
`Specifically, I understand that the obviousness question requires consideration of
`
`four factors (although not necessarily in the following order):
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`The scope and content of the prior art;
`
`The differences between the prior art and the claims at issue;
`
`The knowledge of a person of ordinary skill in the pertinent art;
`
`and
`
`Whatever objective factors indicating obviousness or non-
`
`obviousness may be present in any particular case.
`
`32.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done based on hindsight, but must be done using the perspective of a person of
`
`ordinary skill in the relevant art as of the priority date of the patent claim.
`
`33.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 9
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by those in the field; the taking
`
`of licenses under the patent by others; expressions of surprise by experts and those
`
`skilled in the art at the making of the invention; and the patentee proceeded
`
`contrary to the accepted wisdom of the prior art. I also understand that any of this
`
`evidence must be specifically connected to the invention rather than being
`
`associated with the prior art or with marketing or other efforts to promote an
`
`invention. I am not presently aware of any evidence of “objective factors”
`
`suggesting the claimed methods are not obvious, and reserve my right to address
`
`any such evidence if it is identified in the future.
`
`34.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
`
`that solution obvious in another related field. I also understand that market
`
`demands or design considerations may prompt variations of a prior art system or
`
`process, either in the same field or a different one, and that these variations will
`
`ordinarily be considered obvious variations of what has been described in the prior
`
`art.
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 10
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`35.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation, that variation would have been considered obvious. I
`
`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yields unexpected
`
`results or challenges in implementation.
`
`36.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the “ordinary innovation” and experimentation that
`
`does no more than yield predictable results, which are inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`37.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art. I understand that all these
`
`issues may be considered to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`38.
`
`I understand that the obviousness analysis cannot be confined by a
`
`formalistic conception of the words “teaching, suggestion, and motivation.” I
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 11
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
`
`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
`
`requirement of a “teaching, suggestion, or motivation to combine” known elements
`
`of prior art for purposes of an obviousness analysis as a precondition for finding
`
`obviousness. It is my understanding that KSR confirms that any motivation that
`
`would have been known to a person of skill in the art, including common sense, or
`
`derived from the nature of the problem to be solved, is sufficient to explain why
`
`references would have been combined.
`
`39.
`
`I understand that a person of ordinary skill attempting to solve a
`
`problem will not be led only to those elements of prior art designed to solve the
`
`same problem. I understand that under the KSR standard, steps suggested by
`
`common sense are important and should be considered. Common sense teaches
`
`that familiar items may have obvious uses beyond the particular application being
`
`described in a reference, that if something can be done once it is obvious to do it
`
`multiple times, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
`
`considered can be directed to any need or problem known in the field of endeavor
`
`as of the effective filing date and can provide a reason for combining the elements
`
`of the prior art in the manner claimed. In other words, the prior art does not need
`
`to be directed towards solving the same problem that is addressed in the patent.
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 12
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`Further, the individual prior art references themselves need not all be directed
`
`towards solving the same problem.
`
`40.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or lead away from the line of inquiry
`
`disclosed in the reference(s). A reference does not “teach away” from an invention
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or preferred. My understanding of the doctrine of teaching away requires a
`
`clear indication that the combination should not be attempted (e.g., because it
`
`would not work or explicit statements saying the combination should not be made).
`
`41.
`
`I understand that a person of ordinary skill is also a person of ordinary
`
`creativity.
`
`42.
`
`I further understand that in many fields, it may be that there is little
`
`discussion of obvious techniques or combination, and it often may be the case that
`
`market demand, rather than scientific literature or knowledge, will drive design
`
`trends. When there is such a design need or market pressure to solve a problem
`
`and there are a finite number of identified, predictable solutions, a person of
`
`ordinary skill has good reason to pursue the known options within their technical
`
`grasp. If this leads to the anticipated success, it is likely the product not of
`
`innovation but of ordinary skill and common sense. In that instance the fact that a
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 13
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`combination was obvious to try might show that it was obvious. The fact that a
`
`particular combination of prior art elements was “obvious to try” may indicate that
`
`the combination was obvious even if no one attempted the combination. If the
`
`combination was obvious to try (regardless of whether it was actually tried) or
`
`leads to anticipated success, then it is likely the result of ordinary skill and
`
`common sense rather than innovation.
`
`III. THE 225 PATENT
`A.
`Effective Filing Date
`43.
`I understand that the 225 Patent issued from U.S. Application No.
`
`12/701,335, which was filed on February 5, 2010. EX1001, Face. The 335
`
`application was a division of U.S. Application No. 09/974,082, filed October 9,
`
`2001, which later became U.S. Patent No. 7,792,923. Id. The 225 Patent claims
`
`priority to provisional application No. 60/240,344, filed October 13, 2000. Id.
`
`44.
`
`I understand that a “divisional” application is a patent application that
`
`is related to an earlier filed patent application and does not add to, change or delete
`
`information relative to what was in the previous application.
`
`45.
`
`I understand that a “divisional” application may not describe an
`
`invention that is not described in the earlier application, and that this may result in
`
`a patent claim being evaluated using the filing date of the divisional application,
`
`rather than the earlier related application.
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 14
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`46.
`
`I understand that Claim 1 of the 225 Patent is an independent claim.
`
`The effective filing date of Claim 1 of the 225 Patent is not earlier than October
`
`13, 2000, the date on which its oldest parent was filed. For purposes of this
`
`declaration, I have been asked to assume that this date is the effective filing date of
`
`the 225 Patent.
`
`B.
`47.
`
`Level of Ordinary Skill
`Based on my experience in the field and the information I discuss
`
`herein, I believe a person of ordinary skill in the art in the field of the 225 Patent in
`
`the 2000 time frame (“a Skilled Artisan”) would have been someone with a
`
`bachelor’s degree in electrical, computer engineering, computer science, or related
`
`field with two years of experience in a relevant technical field, such as remote
`
`storage systems or distributed systems. As evidenced by the prior art cited below,
`
`such a person would have been knowledgeable about device drivers, techniques for
`
`remotely accessing and manipulating computer files, and communications over
`
`computer networks such as a local area network or a wide area network.
`
`C.
`48.
`
`Overview of 225 Patent
`The 225 Patent is entitled “Disk System Adapted to be Directly
`
`Attached to Network.” EX1001, Face.
`
`49.
`
`The 225 Patent describes a “network-attached disk (NAD) system …
`
`that includes an NAD device for receiving a disk access command from a host
`
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 15
`
`

`

`Declaration of Henry Houh Regarding U.S. Patent No. 7,870,225
`
`through a network.” Id., Abstract. The 225 Patent explains that it “relates to
`
`computer systems. More specifically, this invention relates to a disk system or
`
`interface that can be directly attached to a network.” EX1001, 1:15-18.
`
`50.
`
`The Background section of the 225 Patent states that, with regard to
`
`NAS (Network Attached Storage)