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UNITED STATES PATENT AND TRADEMARK OFFICE ____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
ORACLE CORPORATION, NETAPP INC. and
HUAWEI TECHNOLOGIES CO., LTD. Petitioner
v.
CROSSROADS SYSTEMS, INC. Patent Owner
____________
Case IPR2014-01197 Patent 6,425,035 ____________
PATENT OWNER’S RESPONSE AND OPPOSITION TO PETITION PURSUANT TO 37 C.F.R. § 42.120
i
TABLE OF CONTENTS
I. SUMMARY OF ARGUMENT ....................................................................... 1
II. OVERVIEW OF CROSSROADS AND THE ’035 PATENT ....................... 3
A. Background of the Invention ................................................................. 3
B. The Claimed Inventions ........................................................................ 6
1. The “Map” Limitations ............................................................... 6
2. The “Access Controls” Limitations .......................................... 10
3. The “Allow Access . . . Using NLLBP” Limitations ................ 12
III. THE PETITION DOES NOT ESTABLISH THE UNPATENTABILITY OF THE CLAIMS ................................................... 14
A. Claim 1 of the ’035 Patent ................................................................... 15
1. The Combination of Bergsten and Hirai Does Not “Allow Access . . . Using NLLBP” .......................................... 16
a. Hirai's Access Rights Utilize High Level File System Protocols and Therefore Cannot "Allow Access . . . Using NLLBP"……………………………………...…17
b. Petitioners Must Pick and Choose among Hirai's Access
Rights and Cannot Explain how the Combination of Bergsten and Hirai as a whole, would "Allow Access . . . Using NLLBP" ………………………………………23
c. The Combination of Bergsten and Hirai Teaches Nothing
More Than Prior Art Servers ………………………….28
2. Petitioners’ Combination Does Not Teach the Claimed “Map” ........................................................................................ 34
ii
3. The Combination Cannot Possess the Claimed “Access Controls” Because Bergsten’s Emulation Drivers Prevent Host Identity from Reaching any Map ..................................... 37
B. Claims 2 and 4 of the ‘035 Patent ....................................................... 39
C. Claims 5-6 of the ‘035 Patent .............................................................. 39
D. Claim 11 of the ’035 Patent ................................................................. 40
E. Claims 12 and 14 of the ‘035 Patent ................................................... 40
IV. PETITIONERS HAVE FAILED TO MEET THEIR BURDEN TO SUPPORT AN OBVIOUSNESS CHALLENGE ......................................... 41
A. Petitioners Have not Shown that the References Can be Combined with a Reasonable Expectation of Success ........................ 41
B. Petitioners’ Asserted Motivation to Combine is Deficient because it Undermines the Stated Premise of Bergsten ...................... 44
V. OBJECTIVE EVIDENCE DEMONSTRATES THE NONOBVIOUSNESS OF THE INVENTION ............................................. 47
A. Long Felt Need .................................................................................... 48
B. Commercial Success and Licensing .................................................... 48
VI. CONCLUSION .............................................................................................. 52
iii
TABLE OF AUTHORITIES
Federal Cases
B&H Mfg. v. Foster-Forbes Glass Co., 26 U.S.P.Q.2D 1066 (N.D. Ind. Jan. 6, 1993) .................................................... 52
Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 45
Crossroads Systems (Texas), Inc. v. Chaparral Network Storage, Inc., 56 Fed. Appx. 502 (Fed. Cir. 2003) .................................................................... 50
Demaco Corp. v. F. Von Langsdorff Licensing, Ltd., 851 F.2d 1387 (Fed. Cir. 1988) .......................................................................... 49
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 47
In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 45
In re Gurley, 27 F.3d 551 (Fed. Cir. 1994) .............................................................................. 27
In re Hedges, 763 F.2d 1038 (Fed. Cir. 1986) .............................................................. 20, 25, 26
In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 45
In re Ratti, 270 F.3d 810 (CCPA 1959) ................................................................................ 45
In re Wesslau, 353 F.2d 238 (CCPA 1965) ................................................................................ 25
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 46
iv
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 46
Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559 (Fed. Cir. 1992) .......................................................................... 51
Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 47
Par Pharma, Inc. v. TWI Pharma, Inc. 773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 41
Plas-Pak Indus. v. Sulzer Mixpac AG, No. 2014-1447, 2015 WL 328222 (Fed. Cir. Jan 27, 2015) ...................................................................................... 45
Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013) .......................................................................... 47
RCA Corp. v. Data General Corp., 701 F. Supp. 456 (D. Del. 1988) ......................................................................... 51
Sandisk Corp. v. Lexar Media, 91 F. Supp. 2d 1327 (N.D. Cal. 2000) ................................................................ 51
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 16
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 47
Administrative Cases
BSP Software v. Motio, Inc., IPR2013-00307, Paper 10 (PTAB Nov. 29, 2013) ............................................. 40
Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00364, Paper 37 (PTAB May 1, 2015) ........................................ 27, 33
IBM Corp., v. Intellectual Ventures II LLC, IPR2014-00180, Paper 50 (PTAB Apr. 3, 2015) ............................................... 40
v
LG Display Co. v. Innovates Display Techs. LLC, IPR2014-01362, Paper 12 (PTAB Mar. 2, 2015) ........................................ 20, 25
Nat’l Std., LLC v Lincoln Elec. Co., 95/000,627, 2013 WL 4769517 (PTAB Aug. 30, 2013) .............................. 20, 25
Norman Int’l Inc. v. Hunter Douglas Inc., IPR2014-00276, Paper 11 (PTAB June 20, 2014) ............................................. 45
Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., IPR2013-00132, Paper 9 (PTAB Jul. 25, 2013) ................................................. 27
Unified Patents Inc. v. CRFD Research, Inc., IPR2015-00157, Paper 8 (PTAB April 30, 2015) .............................................. 46
STATUTES
35 U.S.C. § 103 ............................................................................................... Passim
35 U.S.C. § 316 ........................................................................................................ 15
REGULATIONS
37 C.F.R. § 42.22 ..................................................................................................... 51
37 C.F.R. § 42.23 ..................................................................................................... 51
37 C.F.R. § 42.104 ................................................................................................... 15
37 C.F.R. § 42.120 ................................................................................................... 51
MPEP § 2143 ........................................................................................................... 15
vi
PATENT OWNER’S EXHIBIT LIST IPR2014-01197
Exhibit No. Description
2001 U.S. Patent No. 5,941,972 (the “’972 patent”)
2002 District Court Order (denying motion for summary judgment of invalidity based on Kikuchi), Crossroads Systems, (Texas), Inc. v. Chaparral Network Storage, Inc., C.A. No. 00-cv-00217-SS (W.D. Tex. Aug. 30, 2001)
2003 Final Judgment, Crossroads Systems, (Texas), Inc. v. Chaparral Network Storage, Inc., C.A. No. 00-cv-00217-SS (W.D. Tex. Oct. 11, 2001)
2004 Markman Order, Crossroads Systems, (Texas), Inc. v. Chaparral Network Storage, Inc., C.A. No. 00-cv-00217-SS (W.D. Tex. Jul. 27, 2000) & Crossroads Systems, (Texas), Inc. v. Pathlight Technology, Inc., C.A. No. 00-cv-00248-SS (W.D. Tex. Jul. 27, 2000)
2005 Markman Order, Crossroads Systems (Texas), Inc. v. Dot Hill Systems Corp., C.A. No. 03-cv-00754-SS (W.D. Tex. Nov. 4, 2005)
2006 Report and Recommendation of Special Master re: Claim Construction, Crossroads Systems (Texas), Inc. v. Dot Hill Systems Corp., C.A. No. 03-cv-00754-SS (W.D. Tex. Jan. 21, 2005)
2007 Markman Order, Crossroads Systems, Inc. v. 3Par, Inc., C.A. No. 10-cv-00652-SS (W.D. Tex. Nov. 8, 2011)
2008 Report and Recommendation of Special Master re: Claim Construction, Crossroads Systems, Inc. v. 3Par, Inc., C.A. No. 10-cv-00652-SS (W.D. Tex. Aug. 10, 2011)
vii
Exhibit No. Description
2009 Joint Claim Construction Chart submitted in Pending Litigation in Western District of Texas by Crossroads and Petitioners
2010 Declaration of Janice Pampell
2011 CRD-5500, RAID DISK ARRAY CONTROLLER Product Insert, pp. 1-5
2012 Excerpt from File History of Reexamination Control No. 90/001,125 (U.S. Patent No. 6,425,035)
2013 Claim Chart Comparing MaxStrat Gen5 S-Series XL to ‘035 Patent Claims, Exhibit 10 to July 19, 2004 Ex Parte Reexamination Request in Reexamination Control No. 90/001,125
2014 Claim Chart Comparing U.S. Patent No. 6,219,771 (Kikuchi) to ‘035 Patent Claims, excerpted from Exhibit 22 to July 19, 2004 Ex Parte Reexamination Request in Reexamination Control No. 90/001,125
2015 Claim Chart Comparing U.S. Patent No. 6,073,209 (Bergsten) to ‘035 Patent Claims, excerpted from Exhibit 22 to July 19, 2004 Ex Parte Reexamination Request in Reexamination Control No. 90/001,125
2016 Hewlett Packard, TACHYON HPFC-5000 User’s Manual, May 1996
2017 CMD Technology, CRD-5500 RAID Controller Brochure, May 1999
2018-2028 [Reserved]
2029 October 6, 2014 Markman Hearing Transcript Crossroads Sys., Inc. v. Multiple Defendants (co-pending litigation in W.D. Tex.)
viii
Exhibit No. Description
2030-31 [Reserved]
2032 Defendants’ Joint Claim Construction Brief (co-pending litigation, W. D. Tex.)
2033 July 31, 2014 Declaration of Randy Katz regarding Claim Construction (including exhibits) (co-pending litigation, W.D. Tex.).
2034 Special Master’s Recommended Constructions (co-pending litigation, W.D. Tex.)
2035 Crossroads Industry Awards
2036 Sept. 7, 2012 Strongbox Engineering Excellence Award Announcement
2037 Small Computer System Interface-2, ANSI X3.131-1994
2038 Randy H. Katz, High Performance Network and Channel-Based Storage, Proceedings of the IEEE, Vol. 80, No. 8, August 1992
2039 [Reserved]
2040 Tree Illustration with annotations from Jeffrey Chase, Ph.D. (unfiled, referenced in April 3, 2015 Chase Deposition)
2041 Table Illustration, hand drawn by Scott Crocker (unfiled, referenced in April 3, 2015 Chase Deposition)
2042 Figure 2 of Hirai (Ex. 1008 at 6) with annotations by Jeffrey Chase, Ph.D. (unfiled, referenced in April 4, 2015 Chase Deposition)
2043 Declaration of Brian Bianchi (April 20, 2015)
ix
Exhibit No. Description
2044 Exhibit A to Declaration of Brian Bianchi Confidential Protective Order Material
2045 Exhibit B to Declaration of Brian Bianchi Confidential Protective Order Material
2046 Exhibit C to Declaration of Brian Bianchi
2047 SCSI 3 Architecture Model, ANSI X3.270-1996
2048 NFS: Network File System Version 3 Protocol Specification, Sun Microsystems, February 16, 1994
2049 Declaration of Jennifer Ray Crane (April 16, 2015)
2050 Exhibit A to Declaration of Jennifer Ray Crane Confidential Protective Order Material
2051 Appendix B to Declaration of Jennifer Ray Crane
2052 Appendix C to Declaration of Jennifer Ray Crane Confidential Protective Order Material
2053 Declaration of John Levy, Ph.D., IPR2014-01197
2054 Deposition of Jeffrey S. Chase, Ph.D., Cisco Sys., Inc. v. Crossroads Sys., Inc., IPR2014-01197, -01207, -01209, Vol. I, pp. 1-225 (PTAB April 3, 2015)
2055 Deposition Jeffrey S. Chase, Ph.D., Cisco Sys., Inc. v. Crossroads Sys., Inc., IPR2014-01197, -01207, -01209, Vol. II, pp. 226-432 (PTAB April 4, 2015)
2056 Andrew S. Tanenbaum, Modern Operating Systems (3rd ed. 2008) Chaps 4-5
x
Exhibit No. Description
2057 Andrew S. Tanenbaum, Modern Operating Systems (1st ed. 1992), Chaps 1, 4 and 7
2058 [Reserved]
2059 [Reserved]
2060 Deposition of Randy Katz, Ph.D., Crossroads Sys., Inc. v. Multiple Defendants (co-pending litigation in W.D. Tex. August 9, 2014)
2061 SCSI-3 Block Commands (SBC), ANSI NCITS 306-1998
2062 Fibre Channel Protocol for SCSI (FCP), ANSI X3.269-1996
2063 SCSI-3 Primary Commands (SPC), ANSI X3.301-1997
2064 Fibre Channel Physical and Signaling Interface (FC-PH) revision 4.3, ANSI working draft, proposed June 1, 1994
2065 September 5, 2014 Stipulated Definitions of Claim Terms (co-pending litigation, W.D. Tex.)
1
I. SUMMARY OF ARGUMENT
The proposed combinations of (i) Bergsten and Hirai and (ii) Bergsten,
Hirai and Smith fail to teach the claimed inventions of the ’035 Patent because the
combinations cannot allow hosts access to storage using native low level block
protocols (“NLLBP”) as required by the claimed invention. The combination of
the “access rights” of Hirai with the system of Bergsten necessarily requires the
use of high level file system protocols in order to allow host access to storage.
Such combination is no different than the conventional prior art network servers
described by the inventors in the ’035 Patent.
Bergsten fundamentally teaches an open access system where all hosts have
access to all storage. See e.g., Ex. 1007, 4:6-9 “provide[s] any host . . . access to
any of [the] storage arrays”). Petitioners argue that Bergsten’s lack of “access
controls” is remedied by adding “access rights” of Hirai to Bergsten. Pet. at 47.
The combination fails to disclose the claimed inventions because the access rights
mechanism of Hirai is based on the use of high level file system protocols, not
native low level block protocols as each of the claims requires. As such, the
commands to access storage sent by the host computers in Petitioners’ combined
system are high level file system requests that necessarily must be converted to
native low level block protocol requests in order to allow access to storage.
Likewise, conventional prior art “network servers” also required this time-
2
consuming translation from high to low level protocols in order to allow access. As
the parties agree that “allowing access . . . using NLLBPs” requires allowing
access without involving the overhead of high level protocols and file systems, the
combination of Bergsten and Hirai (and Smith) that allows access using high level
file system protocols, and not native low level block protocols, does not teach the
claimed invention. See Ex. 1001, 9:28-31 (Claim 1).
Petitioners’ combination of Bergsten and Hirai also fails to teach the “map”
and “access controls” limitations of the claimed invention. The “mapping” of
Bergsten is not the claimed “map.” Map/mapping are defined in the patent
specification and the claimed “map” limitation requires host information be
included in the map. The mapping of Bergsten is deficient because it does not
include any information that identifies the host computer. The reason is simple—
the openaccess system of Bergsten has no need to associate host computers with
storage in a map. Rather, the Bergsten “map” is a storage virtualization map used
to map physical storage devices to virtual storage devices, without reference to
hosts.
The combination of Bergsten and Hirai also fails to meet the “access
controls” limitation because the proposed combined system strips away any host
identity information before processing at the map. As a result the combined system
cannot limit a host’s access in accordance with the map because no host computer
3
information exists to check against the map when the access request arrives at the
map.
II. OVERVIEW OF CROSSROADS AND THE ’035 PATENT
Crossroads, founded in 1996, is a global provider of data storage solutions.
Crossroads had its Initial Public Offering in 1999 and has been providing data
storage products to the industry for nearly 20 years. The company has received
numerous industry awards for its data archiving, storage and protection products,
including an engineering excellence award for its current “StrongBox” product.
Ex. 2035; Ex. 2036. As a technology leader, Crossroads has been awarded over
100 patents, including the subject ’035 Patent covering an inventive storage router
which overcame certain deficiencies of prior systems for providing access to
remote storage. Crossroads proceeded to create and develop the “storage router”
market. In fact, the term “storage router” did not exist in the industry until the
Crossroads invention. See, e.g., Ex. 2053 (“Levy”) ¶ 47.
A. Background of the Invention
As described in the Background of the ’035 Patent, computers access storage
either “locally or through network interconnects.” Ex. 1001, 1:37-39. To access local
storage, a computer uses a native low level block protocol (“NLLBP”). NLLBPs
allow for simple and direct access to local storage in a fast and efficient manner.
Levy ¶ 38; Ex. 1001, 1:44-47 (“These protocols map directly to the mechanism used
4
by the storage device and consist of data requests without security controls”). In
prior art storage systems, NLLBP requests were typically sent to local storage over
a parallel bus transport medium, such as a Small Computer System Interface (SCSI)
bus. Levy ¶ 39. However, a SCSI bus cannot carry information very far. Id. As
described in the ’035 Patent, “[t]ypical storage transport mediums provide for a
relatively small number of devices to be attached over relatively short distances.”
Ex. 1001, 1:23-25.
At the time of the invention, however, modern computer systems needed
networks that connected multiple computers to multiple remote storage devices over
distances that parallel buses could not support, while controlling what storage each
computer could access. At the time of Crossroads’ invention, the inventors were
aware of these problems and described a prior art “network server,” which could
provide computers access to remote storage, while providing a file system structure
for communicating with the computers and access controls:
Network interconnects typically provide access for a large number of
computing devices to data storage on a remote network server. The
remote network server provides file system structure, access control,
and other miscellaneous capabilities that include the network
interface.
Ex. 1001, 1:47-51, 2:66-3:20; Levy ¶¶ 40-42. These prior art network servers
communicated with storage devices using native low level block protocols, but
5
because they exposed a file system structure to the host computers, these network
servers communicated with the host computers exclusively using high level file
system protocols.
On the other hand access by a workstation 12 to storage devices 20
requires the participation of network server 14 which implements a
file system and transfers data to workstations 12 only through high
level file system protocols. Only network server 14 communicates
with storage devices 20 via native low level, block protocols.
Ex. 1001, 3:16-21; Levy ¶ 43. In order to allow the host computers (e.g.,
workstations) access to storage, these prior art network servers had to translate the
high level file system requests from the hosts into native low level block protocols
(NLLBPs):
Access to data through the network server is through network
protocols that the server must translate into low level requests to the
storage device.
Ex. 1001, 1:51-54, 3:17-25; see also Levy ¶ 43. Thus, while prior art network
servers could provide access controls to remote storage, they were required to
translate the high level file system protocols received from the hosts in order to
allow access. Crossroads’ inventions of the ’035 Patent provided a solution to these
obstacles by allowing remote storage access and providing access controls, while
using native low level block protocols to allow access (rather than using high level
file system protocols which were less efficient).
6
B. The Claimed Inventions
The claimed inventions provide centralized access controls between host
computers and virtual local storage on remote storage devices, while allowing hosts
access to the remote storage using NLLBPs. The claimed inventions use a map to
allocate storage to each host. Because storage is presented as local storage, hosts can
send NLLBP access requests for storage to the storage router (as opposed to sending
high level file system protocol access requests (that had to be translated to low level
block protocol requests to storage) as required by the prior art network file servers).
By providing access control between hosts and remote storage, while at the same
time allowing access to storage using NLLBPs, the inventions provide improved
performance over prior art network servers that allowed access to storage using high
level file system protocols. Ex. 1001, 5:1-5 (the invention allows access to storage
“without limiting the performance of workstations 58 because storage access
involves [NLLBP] and does not involve the overhead of high level protocols and file
systems”).
1. The “Map” Limitations
Each of the independent claims of the ’035 Patent at issue in this proceeding
includes a map limitation: “a supervisor unit . . . operable to map between devices
connected to the first transport medium and the storage devices.” (Claim 1);
7
“mapping between the devices connected to the first transport medium and
implementing access controls for storage space on the storage devices” (Claim 11).
The “map” of the ’035 Patent associates specific representations of hosts on
one side of the storage router with representations of storage on the other side of the
storage router in order to define what storage is available to each specific host. See,
e.g., Ex. 1001, 4:13-16, 4:22-25 (describing “storage allocated to each attached
workstation” through “mapping tables or other mapping techniques” so that
allocated storage “can only be accessed by the associated workstation”) (emphasis
added); see also id. at 8:67-9:6 (“The storage router can use tables to map, for each
initiator, what storage access is available” so that “[i]n this manner, the storage
space . . . can be allocated to [each initiator]”) (emphasis added). As these citations
illustrate, the ’035 Patent confirms that, in order to allocate storage on storage
devices to devices on the first transport medium to facilitate access controls, the
“map” must identify the precise host to which storage has been allocated within the
map. Id.; see also Levy ¶¶ 51-52. Figure 3 (reproduced below) shows an example of
mapping in which storage router 56 maps workstations 58 to storage. In Figure 3,
workstations 58 are interconnected with storage router 56 by the same Fibre Channel
high speed serial transport. Ex. 1001, 3:67-4:4. As shown in Figure 3, storage router
56 uses “mapping tables or other mapping techniques” (i.e., a map) to associate each
of Workstations A-D with one of the subsets of storage 66, 68, 70 and 72 and to
8
associate Workstation E with whole storage device 64, so that each subset “is
allocated to one of the workstations 58” and can be accessed “by the associated
workstation.” Ex. 1001, 4:13-28 (emphasis added).
The storage router associates each particular workstation on the first transport
medium (Fibre Channel transport 52) with storage in order to allocate such storage
to the particular workstations in the map. Id. at 8:67-9:6 (“The storage router can
use tables to map, for each initiator, what storage access is available” so that
“[i]n this manner, the storage space . . . can be allocated to [each initiator]”)
(emphasis added); see also id. at 4:51-54 (allocating hosts to “logical storage”
partitions). In other words, the map “allocate(s) storage on storage devices to
devices on the first transport medium” by identifying with specificity the precise
host that has access to storage represented in the map. See Levy ¶ 53.
In prior litigation, Crossroads Systems, Inc. v. 3Par Inc., et al., Civil Action
No. 1:10-CV-652-SS, the District Court similarly construed “map/mapping” of the
9
’035 Patent to mean “to create a path from a device on one side of the storage
router to a device on the other side of the router. A ‘map’ contains a
representation of devices on each side of the storage router, so that when a
device on one side of the storage router wants to communicate with a device on the
other side of the storage router, the storage router can connect the devices.” Ex.
1009 at 12 (emphasis added). In the co-pending litigation involving Petitioners, the
Special Master conducted a Markman hearing and has recommended the District
Court once again adopt this construction. Ex. 2034 at 4.
Petitioners’ expert agrees that storage is allocated to “particular hosts.” Ex.
1010 at 8, ¶18 (“The storage router may implement access controls to control a
computer device’s access to only those storage regions allocated to the particular
computer device”). Moreover, Petitioners unequivocally stated in the underlying
litigation that mapping requires an association between the particular host devices
and storage. Ex. 2032 (Defs.’ Markman Br.) at 3 (“[O]ne of ordinary skill in the art
. . . would understand from the plain language and context of the claims that
‘map[ping]’ requires specifying a particular configuration—namely, the
association between a particular workstation and a particular remote storage
device); Ex. 2033, ¶ 29 (“storage router must ‘maintain’ a ‘map’ that contains a
specific ‘association’ between host devices and . . . storage . . . .”).
10
Whether phrased in terms of “allocating storage” as described in the ’035
Patent, the District Court’s Markman construction, or Petitioners’ own statements,
the claimed “mapping between devices connected to the first transport medium and
the storage devices” requires that the claimed map specifically identify the host
(through some representation of that host) and its associated storage (through some
representation of that storage) in order to allocate storage to particular hosts.
2. The “Access Controls” Limitations
Each of the independent claims also recites an “access controls” limitation: “a
supervisor unit . . . operable . . . to implement access controls for storage space on
the storage devices . . .” (Claim 1); “implementing access controls for storage space
on the storage devices” (Claim 11). The access controls of the ’035 Patent are
controls that limit a host computer’s access to a specific subset of storage devices or
sections of a single storage device according to a map.1
1 There is no dispute that the “access controls” of the ’035 Patent are implemented
according to the map. In the co-pending litigation, Petitioners proposed “access
controls” be construed as “Controls which limit a [device/Fibre Channel initiator
device/workstation]’s access to a specific subset of storage devices or sections of a
single storage device according to a map for the [device/Fibre Channel initiator
device/workstation].” Ex. 2032 at 17 (emphasis added).
11
As described in the specification, the storage router implements access
controls so that storage can be accessed by the host(s) associated with that storage
in the map. See, e.g., id. at 4:22-24 (“These subsets 66, 68, 70 and 72 can only be
accessed by the associated workstation . . . .”), 4:30-32 (“[E]ach workstation 58 has
controlled access to only the specified partition of storage device 62 which forms
virtual local storage for the workstation 58.”); Levy ¶ 56. The ’035 Patent can
provide centralized access controls by controlling what virtual local storage each
host sees. Ex. 1001 at 4:48-54 (“Storage router 56 provides centralized control of
what each workstation 58 sees as its local drive . . . . Consequently, the storage space
considered by the workstation 58 to be its local storage is actually a partition (i.e.,
logical storage definition) of a physically remote storage device 60, 62 or 64
connected through storage router 56.”).
In Figure 3, each workstation 58 connected to the storage router on Fibre
Channel interconnect 52 sees, and therefore has access to, different storage. As
shown below, for example, because Workstation A is mapped to storage subset 66,
Workstation A is “shown” storage subset 66 by the storage router.
12
Workstation A does not see, and therefore cannot access, Workstation B Storage
68, Workstation C Storage 70, Workstation D Storage 72 or Workstation E Storage
74. Levy ¶ 58.
3. The “Allow Access . . . Using NLLBP” Limitations
Each of the independent claims includes an “allowing access . . . using
NLLBP” limitation: “to allow access from devices connected to the first transport
medium to the storage devices using native low level, block protocols” (Claim 1);
“allowing access from devices connected to the first transport medium to the
storage devices using native low level, block protocols” (Claim 11). The parties
agree that any construction of this claim limitation requires that access from hosts
to storage be allowed without involving the overhead of high level protocols and
file systems. Ex. 1010 at 8-9, ¶ 19 (“allowing the device to access storage using a
NLLBP”); Levy ¶¶ 59-60.
13
The ’035 Patent contrasts allowing storage access using NLLBPs as
accomplished by the inventive storage router with the way allowing storage access
was done using prior art network servers. As described in the ’035 Patent, the storage
access allowed by prior art network servers required the host computers to send high
level file system protocols that the network server had to translate into NLLBPs. Ex.
1001, 1:51-54 (“Access to data through the network server is through network
protocols that the server must translate into low level requests to the storage
device”), 3:17-21 (data is transferred “only through high level file system
protocols”); see also Levy ¶¶ 42-44. In contrast, host computers send NLLBP
requests to the storage router of the ’035 Patent in order to be allowed access to
storage, where such NLLBP requests do not involve the translation involved and
overhead of high level protocols and file systems. Ex. 1001, 5:1-5 (allowing access
to storage “involves [NLLBPs] and does not involve the overhead of high level
protocols and file systems.”).2
2 As described, the storage router controls what virtual local storage that each
workstation “sees” as its local drive. Id. at 4:60-66. Because the virtual local
storage appears as local storage, the workstation accesses the virtual local storage
using the NLLBP of the virtual local storage. Id. at 4:35-38. Thus, the appropriate
construction of the phrase “allowing access … using native low level block
14
Petitioners agree that “allowing access . . . using NLLBP” requires
permitting access using an NLLBP without involving the overhead of high level
network or file system protocols, as typically required by network servers (which
translate these high level protocols into NLLBPs). Pet. at 11 (proposing NLLBP
mean “a protocol, such as the SCSI protocol for SCSI commands, that enables the
exchange of information without the overhead of high-level protocols and file
systems typically required by network servers”). Likewise, in the co-pending
litigation, Petitioners agreed that an NLLBP is “a set of rules or standards that
enable computers to exchange information and do not involve the overhead of high
level protocols and file systems typically required by network servers.” Ex. 2065.
There are no material differences between these two constructions of NLLBP –
each requires that allowing access using such “NLLBP” be done without the
involvement or overhead of high level network and file systems protocols.
III. THE PETITION DOES NOT ESTABLISH THE UNPATENTABILITY OF THE CLAIMS
This proceeding was instituted on two grounds of unpatentability:
protocol” according to the ‘147 Patent would be “permitting access using the
native low level, block protocol of the virtual local storage without involving a
translation from high level protocols to native low level block protocols.”
15
A. Claims 1, 2, 4-6, 11, 12 and 14 under 35 U.S.C. § 103(a) for
obviousness over Bergsten (Ex. 1007) and Hirai (Ex. 1008); and
B. Claims 5 and 6 under 35 U.S.C. § 103(a) for obviousness over
Bergsten, Hirai and Smith (Ex. 1005).
Petitioners have the burden “of proving a proposition of unpatentability by a
preponderance of the evidence” 35 U.S.C. § 316(e). To support a conclusion of
obviousness, the references must disclose each and every claim limitation. MPEP
§ 2143, subsection I.A(1) (prima facie case of obviousness requires, inter alia, “a
finding that the prior art included each element claimed”); 37 C.F.R.
§ 42.104(b)(4) (“The petition must specify where each element of the claim is
found in the prior art patents or printed publications relied upon.”). Petitioners fail
to show where each and every claim limitation can be found in the cited references.
A. Claim 1 of the ’035 Patent
Claim 1 of the ’035 Patent recites, inter alia:
to map between devices connected to the first transport medium and
the storage devices, to implement access controls for storage space on
the storage devices and to process data in the buffer to interface
between the first controller and the second controller to allow access
from devices connected to the first transport medium to the storage
devices using native low level, block protocols
(emphasis added). The claim language is unambiguous. Each of the emphasized
portions above must be found in the asserted prior art combinations. An
16
appropriate obviousness inquiry must address the claims as a whole, not
disembodied concepts taken in isolation. See Sanofi-Synthelabo v. Apotex, Inc.,
550 F.3d 1075, 1086 (Fed. Cir. 2008) (“The determination of obviousness is made
with respect to the subject matter as a whole, not separate pieces of the claim.”).
As shown below, none of the references in combination disclose the claimed
invention as a whole. See Levy ¶ 103.
1. The Combination of Bergsten and Hirai Does Not “Allow Access . . . Using NLLBP”
Petitioners argue that Bergsten discloses a storage router having all the
limitations of Claim 1 except for access controls. Paper 13 (“Inst. Dec.”) at 10.
Bergsten does not have any form of access controls; rather, it is an open access
system for sharing and replicating data across storage controllers, where all hosts
can access any of the storage devices. Ex. 1007, 3:20-35, 4:39-41; Levy ¶ 66.
Petitioners therefore rely on Hirai’s access rights to supply the missing “access
controls.” Pet. at 47.
However, Hirai does not teach the claimed access controls. The parties agree
that any construction of “allow access . . . using NLLBP” requires access from
hosts to storage be allowed using an NLLBP without involving the translation of
high level or file system protocols. Pet. at 10-11; Levy ¶ 59. Hirai utilizes only
high level file system access rights. See Levy ¶¶ 89, 93. Petitioners must
17
impermissibly pick and choose from Hirai’s teachings regarding access rights,
ignoring the teaching of Hirai as a whole, to combine it with Bergsten.
The combination of Hirai’s file system access controls with the open access
system of Bergsten results in “allowing access . . .” in the same manner as the prior
art “network servers.” The asserted combination is emblematic of the very problem
identified by the inventors in the patent. Thus, the combination does not “allow
access . . . using NLLBP” as claimed. See Levy ¶¶ 103, 106.
(a) Hirai’s Access Rights Utilize High Level File System Protocols and Therefore Cannot “Allow Access … Using NLLBP”
The asserted combination relies on Hirai’s access rights to provide access
controls to Bergsten’s open access system. Inst. Dec. at 10. Bergsten describes a
system of interconnected storage controllers that allows “[m]ultiple copies of
data [to be] maintained in storage arrays that are geographically remote to each
other, such that any copy can be accessed by any host.” Ex. 1007 at Abstract; see
also id. at 3:1-4, 4:39-41. The storage controllers are connected with each other in
a cooperative manner to allow any host to access any data in any of the storage
arrays in the system. Id. at 1:41-43, 3:1-4, 3:20-35, 4:7-10, 4:39-41, 15:36-39
(“Any copy is then accessible to any host computer connected in the system.”);
Levy ¶ 66. Bergsten teaches an open access system without “access controls”
where any host computer system can access any data stored in any of the storage
arrays, (i.e., open access system). See id.
18
Petitioners rely on Hirai for the claimed access controls, asserting that
“Hirai’s access controls are mapped to the logical addresses described in Bergsten
. . . .” Pet. at 51; see also Inst. Dec. at 10. However, Petitioners can only make this
argument by ignoring the teachings of Hirai because Hirai teaches high level file
system access rights, not low level or block level access rights. See Levy ¶¶ 89, 91-
93. Hirai’s access rights are undeniably file system access rights, where
enforcement of these access rights must be accomplished using high level file
system protocols, not NLLBPs. Id.
Hirai includes a magnetic disk sharing device 3, comprising “magnetic disk
controlling mechanism 6 and a partition control table 7,” that treats multiple
magnetic disk drives as a single virtual magnetic disk. Ex. 1008 at 4, ¶¶ 10-11,
Figure 1 (below).
19
Hirai further discloses “security management” which sets each computer’s
access rights to each partition in a “partition control table 7.” Ex. 1008 at 4, ¶¶ 11,
12. The magnetic disk sharing device 3 uses the access rights within the partition
control table 7 to prevent illegal access. Ex. 1008 at 4, ¶ 12; Levy ¶ 87. The
complete list of access rights for any computer described in Hirai are “R (read), W
(write), C (create), D (delete) and X (execute).” Ex. 1008 at 4, ¶ 12. Figure 2 below
shows an example partition control table of Hirai, associating various access rights
(far right column) with each computer for each partition:
Id. Figure 2 and its associated description in Hirai confirm that any combination of
the various access rights described in the partition control table can be associated
with any host and for any particular partition (e.g., personal computers 1, 2 and 3
each have “read,” “write,” “create” and “execute” access rights to Partition 1,
while each of personal computers 1, 2 and 3 has fewer access rights to Partitions 2
and 3). Id. ¶ 13, Figure 2; see also Levy ¶ 88. Because the access rights mechanism
20
of Hirai can provide any of the described access rights to any particular host
computer, these access rights must be examined as a whole in order to determine
what kind of access rights are being described in Hirai. In re Hedges, 763 F.2d
1038, 1041 (Fed. Cir. 1986) (Obviousness analysis requires “that the prior art as a
whole must be considered”); Nat’l Std., LLC v Lincoln Elec. Co., 95/000,627, 2013
WL 4769517, at *4 (PTAB Aug. 30, 2013) (“The entirety of the reference must be
considered.”); LG Display Co. v. Innovates Display Techs. LLC, IPR2014-01362,
Paper 12, at 17 (PTAB Mar. 2, 2015) (“When evaluating claims for obviousness,
‘the prior art as a whole must be considered’”) (quoting In re Hedges, 763 F.2d
1038, 1041 (Fed. Cir. 1986)); see also Levy ¶ 88.
When viewed as a whole, the access rights of Hirai describe, to a person
skilled in the art, high level file system access permissions and not native low level
block permissions. Levy ¶ 91. Petitioners’ expert Dr. Chase agrees that all of the
access rights described in Hirai are consistent with file system permissions. Ex.
2054, 41:22-43:5 (testimony that “Read,” “Write” and “Execute” are standard file
system permissions); Ex. 2055, 310:25-309:2 (testimony that file system
permissions are commonly used to prevent “creation”), 311:20-23 (testimony that
file system permissions are commonly used to prevent “deletion”), 317:24-318:6
(agreeing that “execute permission is a permission that is typically associated with
files”). Petitioners’ expert in the underlying litigation, Dr. Katz, also agrees with
21
Dr. Chase that the access rights described in Hirai are file-system access rights.
Ex. 2060 (“Katz Depo.”) at 170:18-171:12.
Importantly, nowhere does Hirai describe its access rights as “low level” or
“block level” storage access rights. Levy ¶ 96. In fact, equivalent “low level block
protocol” storage access commands for the “create,” “delete” and “execute”
storage access permissions described in Hirai do not exist. Id.
“Create”, “delete”, and “execute” permissions are file system access permissions.
Notably, the access rights of Hirai match, almost one for one, file system
access permissions supported by common network file servers, such as network
file servers using the Network File System (NFS):
Ex. 2048 at 28-29; Levy ¶ 89. As shown above, NFS includes “Read,” “Delete and
“Execute” access permissions and two forms of “Write” access permissions
(namely “Modify” which refers to a Write operation that replaces existing data in a
file, and “Extend” which refers to a Write operation that writes more data to a file).
Id. The ability to perform a “Create” in NFS, the last of the five access permissions
discussed in Hirai, is handled through the “Extend” access permission, which
allows file creation by adding an entry to a directory. Id. Thus, all of the five
22
“access rights” disclosed in Hirai have express equivalents in the NFS file system.
Levy ¶ 91.
In an attempt to avoid the fact that the access rights of Hirai are file system
access permissions, Dr. Chase relies on a vague statement in the Hirai abstract that
“each computer accesses the virtual magnetic disk device according to its
respective access rights.” See Ex. 2055, 327:15-23, 333:14-20, 334:14-18. This
statement in Hirai simply confirms that the access rights described in Figure 2
define what type of access will be given to each host computer. In no way does the
statement indicate that the storage access requests from the hosts are NLLBPs, or
anything other than file system requests. Levy ¶ 95.
Furthermore, Hirai explicitly states that the access requests from the host
computers are received at the magnetic disk sharing device and are “converted”
into access requests to storage. Ex. 1008 at 4, ¶ 11 (“access request . . . from the
personal computers . . . is notified to the magnetic disk controlling mechanism
6 . . . and it is converted to an access request to a virtual magnetic disk
device”) (emphasis added). The inventors described the prior art network servers
using file system protocols precisely the same way — namely, the network server
must translate incoming host storage access requests from high level file system
protocols to native low level block protocol storage access requests in order to
allow access to storage. Ex. 1001, 1:51-54 (“Access to data through the network
23
server is through network protocols that the server must translate into low level
requests to the storage device”) (emphasis added); see also id. at 5:1-5 (allowing
hosts “storage access involve native low level block protocol and does not involve
the overhead of high level protocols and file systems required by network
servers”) (emphasis added); Levy ¶ 43. A person of ordinary skill in the art would
therefore understand Hirai to be teaching a system that works just like these prior
art network servers when allowing host access – one in which a host sends a high
level file system access request to the system, and the system then translates that
high level file system request into a native low level block protocol request in
order to allow storage access. Levy ¶ 93.
All of the experts agree that Hirai’s “access rights” are consistent with file
system permissions and that there are no equivalent “NLLBP” permissions for 3 of
the 5 access rights given in Hirai. Levy ¶¶ 91-92. Moreover, as noted in Hirai, the
incoming commands must be “converted” by the controller to requests to storage.
Hirai demonstrates only file system access rights. Levy ¶ 93.
(b) Petitioners Must Pick and Choose among Hirai’s Access Rights and Cannot Explain how the Combination of Bergsten and Hirai as a whole, would “Allow Access . . . Using NLLBP”
Petitioners and their expert do not describe how the access rights of Hirai,
including the “execute” and “create” access rights, could actually be used in their
alleged combined system to allow access using NLLBP. Dr. Chase admitted that
24
he could not conceive of how such a system would work. Ex. 2055, 327:10-13 (“I
can’t answer how create permission would--might be applied in this particular
disclosure of Hirai”), 329:3-329:14 (“but the specific permission listed here as an
example, execute permission, would not be applicable in that scenario”), 332:19-
333:12. There is no way to reconcile the full list of access rights in Hirai with the
requirement to “allow access . . . using NLLBP” because several of these access
rights (namely, Create, Delete and Execute) are not applicable to or consistent with
native low level block protocol requests. Levy ¶ 92. In contrast, the parties’ experts
agree that all of the access rights described in Hirai (i.e., Read, Write, Create,
Delete and Execute) are consistent with file system commands. Levy ¶ 91; Ex.
2054, 41:22-43:5; Ex. 2055, 310:25-309:2, 311:20-23. File system commands
cannot “allow access … using NLLBPs” because the high level file system
commands must be translated to NLLBPs. That translation necessarily involves the
overhead associated with high level protocols and file systems which creates the
very bottleneck and inefficiencies that the invention was designed to overcome.
Levy ¶ 46.
Faced with this irreconcilable problem, Dr. Chase simply dismisses the
access rights of Hirai that do not support Petitioners’ interpretation of Hirai as
“immaterial.” Ex. 2055, 325:23-17 (“And this [create permission] is immaterial to
me”), 327:24-328:25 (“So, again, the choice of execute permission is a curious
25
choice of Hirai, but immaterial.”). In other words, Dr. Chase focused on only the
“read” and “write” access permissions of Hirai, ignoring the teachings of Hirai as
a whole, because only the “read” and “write” file system access rights of Hirai
have similarly named low level block protocol commands. Ex. 2055, 325:6-327:13
(“[R]egardless of how a create right or an execute right might be interpreted or
understood or how an access check might be applied, certainly the read and write
permissions are applicable. . . . [R]ead and write permission are clearly applicable
in the combination . . . .”).
Dr. Chase focused only on the “read” and “write” access rights of Hirai
because he could not explain how the other access rights of Hirai could possibly
operate in the combination with Bergsten. This inappropriate “pick and choose”
analysis has been rejected time and time again. In re Wesslau, 353 F.2d 238, 241
(CCPA 1965) (“It is impermissible within the framework of section 103 to pick
and choose from any one reference only so much of it as will support a given
position, to the exclusion of other parts necessary to the full appreciation of what
such reference fairly suggests to one of ordinary skill in the art.”); In re Hedges,
763 F.2d 1038, 1041 (Fed. Cir. 1986) (“We agree . . . that the prior art as a whole
must be considered.”); Nat’l Std., LLC v Lincoln Elec. Co., 95/000,627, 2013 WL
4769517, at *4 (PTAB Aug. 30, 2013) (“The entirety of the reference must be
considered.”); LG Display Co. v. Innovates Display Techs. LLC, IPR2014-01362,
26
Paper 12, at 17 (PTAB Mar. 2, 2015) (“When evaluating claims for obviousness,
‘the prior art as a whole must be considered’”) (quoting In re Hedges, 763 F.2d
1038, 1041 (Fed. Cir. 1986)).
In order for Dr. Chase to support that the proposed combination “allows
access . . . using NLLBPs,” he had to ignore three out of the five access rights
described by Hirai. Because those access rights cannot operate in his alleged
combination, he focused on only two of the access rights (Read and Write).
However, there is nothing in Hirai to support the distinction Dr. Chase makes.
Hirai describes all five of the access rights together as a group and describes them
in a manner that a personal computer could have all of these access rights at the
same time. Ex. 1008 at 4, ¶¶ 12-13 and Figure 2. A person of ordinary skill in the
art would understand that all of the access rights in Hirai are the same type of
access rights. Levy ¶ 88. The only way these access rights can be the same type is
if they are file system-based access rights, which would require a host to request
storage access using file systems commands that have high level overhead
associated with them. Levy ¶¶ 89, 91.
While the combination of Bergsten and Hirai may lead in the abstract to
some form of access controls, it does not and cannot meet the limitation “allow
access . . . using NLLBP. See Levy ¶¶ 103, 106. Indeed, because Hirai’s access
controls rely on file system access rights, Hirai teaches away from the claimed
27
invention by suggesting a direction divergent from a system for “allowing access . .
. using NLLBP,” namely, by teaching use of high level file system protocols (not
NLLBPs) to provide access controls. Shaw Indus. Group, Inc. v. Automated Creel
Sys., Inc., IPR2013-00132, Paper 9, at 27 (PTAB Jul. 25, 2013) (“A reference may
be said to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or would be
led in a direction divergent from the path that was taken by the applicant.”) (citing
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Levy ¶ 114. A person of ordinary
skill in the art reading Hirai (in light of Bergsten) would recognize that using the
file system based permissions described in Hirai in combination with Bergsten
would lead to a system that operates just like the prior art network servers
described in the ’035 Patent and would require translation of high level file system
protocols to native low level block protocol requests in order to “allow access.”
Levy ¶¶ 91, 114. Thus, using Hirai does not solve the problem of translating high
level file system protocols in order to allow access as described by the inventors in
the Background of the Invention but, rather, is emblematic of that problem.
Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00364,
Paper 37 at 28-29 (PTAB May 1, 2015) (“Rather than solve the problem identified
. . . in the Background of the Invention Section, McLeod is emblematic of the
problem itself.”).
28
(c) The Combination of Bergsten and Hirai Teaches Nothing More Than Prior Art Servers
To the extent the combination could even function, the only “access
controls” it would have are the access controls of the prior art network servers (i.e.,
using high level file system protocols). Prior art network servers did not, as
described by the patent, have the ability to allow access using native low level
block protocols. Ex. 1001, 1:47-54 (“The remote network server provides file
system structure, access control, and other miscellaneous capabilities,” but
“[a]ccess to data through the network server is through network protocols that the
server must translate into low level requests to the storage device.”) (emphasis
added), 5:1-5 (“storage access involves native low level, block protocols and does
not involve the overhead of high level protocols and file systems required by
network servers”) (emphasis added).
Similarly, Hirai teaches that the access requests from the host computers are
received at the “magnetic disk controlling system” of Hirai and those access
requests are then translated by the magnetic disk controlling mechanism into
access requests to the storage. Ex. 1008 at 4, ¶ 11 (“An access request from the
personal computers 1, 2, ··· to the magnetic disk devices is notified [sic] to the
magnetic disk controlling mechanism 6 . . . and it is converted to an access request
to a virtual magnetic disk device . . . .”). Accordingly, just as a host would send a
prior art network server a high level file system storage access request that the
29
network server would then translate to a low level request to allow access to
storage, a host would send the combination a high level file system request that the
combination would then translate into an NLLBP request in order to allow the host
access to storage. Ex. 1008 at 4, ¶¶ 11-13, Figure 2; Levy ¶¶ 113-114. Thus,
neither the prior art network servers nor the asserted combination of Bergsten and
Hirai “allow access . . . using NLLBP.” Levy ¶¶ 103, 106.
Bergsten also describes how its host computer could function as a “server,”
further demonstrating how the combination creates a system just like the prior art.
In Bergsten, the host computer “may function as a server for one or more client
computer systems.” Ex. 1007, 3:52-54 (emphasis added). When the host computer
is functioning as a “server,” the storage controller can be an internal component of
the host computer as shown in Figure 5. Id. at 7:50-8:6; Levy ¶¶ 68, 110. The
“server” of Figure 5 of Bergsten is reproduced below and has been modified to
include a block for adding the “access rights” from Hirai.:
30
Ex. 1007, Fig. 5 (modified to include Hirai access rights); Levy ¶ 110. Thus, the
“server” (Host 2-R above) would be connected to one or more clients/hosts
through the Network Adapter 35 (as shown by “TO/FROM CLIENTS/OTHER
HOSTS” notation in original Figure 5). Id. As noted, the hosts/clients
communicate with the “server” (Host 2-R) through a “network” connection (via
Network Adapter 35) and, thus, would be sending the server high level file system
access requests.3 Id. The resulting combination would be a “server” connected via
a “network” (thus, a network server) that would include the high level file system-
3 Bergsten discloses that a host may connect to a storage controller by “Fibre
Channel.” Ex. 1008, 4:28. Fibre Channel is a serial transport that, as described in
Ex. 1030 to Dr. Chase’s Declaration, was used to transport file system protocols,
including NFS. See e.g., Ex. 1030 at 8 (Figure 10); Levy ¶ 110.
HIRAI ACCESS RIGHTS
31
based access rights of Hirai. Id. This “network server” would then enforce Hirai’s
file system-based access rights scheme on incoming high level file system requests
within the server (Host 2-R). Id. If the incoming access request was of a type
permitted for the host/client making the access request, the network server would
then translate the high level file system access request into a NLLBP request in
order to allow access to the storage connected to storage controller 36 through
storage communication link 8. Id.
This “server” of Bergsten modified to include the file system-based access
rights of Hirai works just like the prior art network servers described by the
inventors in the ’035 Patent. Levy ¶ 111. Inserting this “network server 2-R” of
modified Figure 5 into Figure 1 of Bergsten is shown below:
Ex. 1007, Fig. 1 (annotated as described herein); Levy ¶ 111. In order for Host 2-M
to access storage, Host 2-M would send a high level file system access request over
(2) If Access Allowed for Host 2-M, Network Server Translates File
System Request to NLLBP
(3) Network Server Sends
NLLBP Request to Storage
(1) Host Issues File System
Request to Network Server
NETWORKSERVER 2-R
32
the network communication link to Network Server 2-R (step 1). Id. Then,
Network Server 2-R would, based on Hirai’s file system-based access rights
scheme, determine if Host 2-M had access to the requested storage and, if so,
would translate the file system storage access request into a NLLBP request (step
2). Id. Finally, Network Server 2-R would send the NLLBP request to the storage
over communications link 8 (step 3). Id.
This is precisely how the inventors described “allowing access” using the
prior art network servers in the Background of the Invention and Figure 1 of the
‘035 Patent (Fig. 1 is a “conventional network”):
Ex. 1001, Fig. 1 (annotated as noted); Levy ¶ 112. The network server
“implements a file system and transfers data to workstations 12 only through high
level file system protocols.” Id. at 3:18-20. In other words, workstation 12 (like
Host 2-M above) communicates with network server (like Server 2-R above) using
(2) If Host Access Allowed,
Network Server Converts File System Request to NLLBP
(1) Host Issues File System
Request to Network Server (3)
Network Server Sends NLLBP
Request to Storage
33
high level file system protocols (step 1). Id. The network server then translates the
high level file system protocols received from workstation 12 into native low level
block protocols (step 2), in order to pass the request on to the storage devices 20
over the SCSI bus. (step 3). Ex. 1001, 3:20-22; Levy ¶ 112.
As shown, Bergsten itself contemplates creating a “server” in order to
communicate with multiple hosts over a network. When the file system-based
access controls of Hirai are added to this network server of Bergsten, the result is a
system that, just like the prior art network servers described by the inventors,
accepts high level file system protocol requests for storage access from hosts. Levy
¶ 113. These file system access requests would have high level overhead associated
with them and would need to be translated by the system into native low level
block protocol storage access requests in order to allow access. Levy ¶ 113; see
also Ex. 1008 at 4, ¶ 11; Ex. 1001, 1:51-54, 3:17-21. This high level file system to
low level block protocol translation necessarily involves the overhead of high level
file system commands and is precisely the problem of the prior art network servers
described by the inventors in the Background of the Invention. Levy ¶ 113; see
also Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-
00364, Paper 37, at 28-29 (PTAB May 1, 2015) (finding claims not unpatentable
where reference was “emblematic” of the problem identified by the inventors in
the patent).
34
2. Petitioners’ Combination Does Not Teach the Claimed “Map”
The combination of the access rights of Hirai with the logical addressing of
Bergsten would not provide the “map” of the claimed invention because the map
relied upon by Petitioners (i.e., the “mapping” from Bergsten) does not include any
information identifying the host computer.4 First, there is no need, or in fact any
point, to identifying hosts in the map of Bergsten because Bergsten is an open
access system in which every host has access to all storage. Ex. 1007, 3:20-35,
4:39-41; Levy ¶ 120. Second, the Bergsten “map” is a storage virtualization map,
the whole point of which is to map physical storage devices to virtual storage
devices. Levy ¶ 120. There is no need for any host identity information in a
physical-to-virtual storage virtualization map because the map only needs storage
information (in other words, host identity information is irrelevant to a
4 Petitioners rely on the Bergsten reference for all of the claim limitations except
“access controls.” Inst. Dec. at 10 (“Petitioners argue that Bergsten discloses a
storage router having all the limitations of claim 1 except for access controls.”)
Petitioners state that the “map” limitation is met by “Bergsten’s multi-stage
virtualization” which “maps a logical address from a requesting host device to an
internal logical address and subsequently, to a physical address . . . .” Pet. at 51;
Ex. 1010 ¶ 157.
35
virtualization storage map). Id. For these reasons, the Bergsten map relied on by
Petitioners in the combination does not satisfy the claimed “map” limitation. Levy
¶ 120.
As outlined in Section II.B.1 supra, the “map” of the ’035 Patent allocates
storage to host(s) by including in the map representations of the host computers
associated with representations of storage, thereby defining what storage is
available to each specific host. See, e.g., Ex. 1001, 4:13-16, 8:67-9:6; see also
Levy ¶ 52. Petitioners agree the claimed “map” includes host information. Ex.
1010 at 8, ¶ 18; Ex. 2032 at 3.
Bergsten’s virtualization map is not the claimed “map” which maps
particular hosts to storage. Levy ¶ 120. Petitioners do not dispute that the
“mapping” described in Bergsten maps the physical storage devices to virtual
storage so that hosts make access requests to virtual storage (rather than physical
storage). Ex. 1007, 9:5-8; see also Pet. at 51; Levy ¶ 72. Bergsten provides a
virtual-to-physical storage mapping by: i) first mapping a virtual storage address
to a logical address and ii) then mapping the logical storage address to one or more
physical storage addresses. See, e.g., Ex. 1007, 8:65-9:8; Levy ¶ 73. The virtual
storage address of the first mapping step is described in Bergsten as a “host
address” – the virtual storage location identified by the host in the request. See id.
at 3:16-18, 6:10-11, 9:9-20; Levy ¶ 72 n. 14. The first step relies on two pieces of
36
information, the Host Interface ID and a virtual block number. See, e.g., id. (Fig. 7)
(“Input = Host Interface ID, Host Block Number”) 9:8-60; Levy ¶ 71. The Host
Interface ID identifies the physical interface of the storage controller that connects
to a host, and does not identify the host itself. Id. at 9:10-14, Fig. 3; Levy ¶ 71.
The virtual block number (or “Host Block Number”) is from the host’s request and
specifies the location in the virtual device of the data that the host computer will
access. Levy ¶ 73.
Since the mapping of Bergsten includes no host identity information,
Bergsten does not teach the claimed map because the claimed map must include an
identification of the host. Levy ¶ 120. The fact that Bergsten does not include host
identity information in its virtualization map makes sense given that Bergsten is an
open access system in which all hosts get access to all of the available storage.
Levy ¶ 120. As such, there is no need and indeed no point, in maintaining host-to-
storage allocation information in the virtualization map of Bergsten. Id. On the
other hand, there is a very important reason to maintain host-to-storage allocation
information in the claimed map of the ’035 Patent—namely, because the map is
used to define the access controls (i.e., hosts ultimately are allowed access to the
storage allocated to them in the map). Levy ¶ 120.
37
3. The Combination Cannot Possess the Claimed “Access Controls” Because Bergsten’s Emulation Drivers Prevent Host Identity from Reaching any Map
Petitioners’ combination of Hirai with Bergsten cannot provide the claimed
“access controls . . .” (which limit a hosts access to storage based on the map)
because the emulation driver in Petitioners’ combined system would remove the
host identity prior to processing at the map. By the time an incoming host storage
access request arrives at the map, Petitioners’ combination would have stripped
away any host identity information from the incoming request. Even if the map
included host-to-storage allocation within it (which it would not because the
Bergsten map includes no host information as described above), there would be no
way to apply access controls based on the host-to-storage allocation because there
would be no host identity information to check against once the storage access
request arrived at the map.
In Bergsten, host storage access requests to the storage controller pass
through an “emulation driver.” Ex. 1007, 7:34-37, Fig. 4, item 21; Levy ¶ 121.
Emulation driver 21 converts read/write commands from a host into an internal
format recognized by the storage controller’s OS. Ex. 1007, 7:34-37; Levy ¶ 122.
The asserted combination specifically includes the emulation driver. Pet. at 46.
As shown in annotated Figure 4 below, for hosts sending storage access
request over Fibre Channel transport 7, the specific information used to identify the
38
host sending a storage request (i.e., the identifier of a particular host computer) is
removed by the emulation driver 21 before being processed by the OS 20, where
the mappings of Bergsten reside. Levy ¶ 123.
Petitioners’ expert Dr. Chase confirmed this, testifying that the emulation drivers
for Fibre Channel would “deencapsulat[e] the commands and transmit[] the
commands to the operating system without the framing and various other
information that's necessary to transmit those commands reliably across the
network.”). Ex. 2055, 233:15-234:10; Levy ¶ 121.
Consequently, the system, as combined by Petitioners, has no ability at the
map to determine which particular host made the storage access request because
any host identity information is no longer available at the time the processing
associated with the map of Bergsten occurs. Levy ¶ 124. Since there is no host
identity information when the storage access request is processed at the map, there
39
is no mechanism to perform access controls to limit a host’s access to storage in
accordance with the map. Therefore, the Petitioners’ combined system does not
teach the claimed “access controls” which must limit a specific host’s access to
storage in accordance with the map. See Levy ¶ 126.
B. Claims 2 and 4 of the ’035 Patent
Claims 2 and 4 depend from Claim 1 and Petitioners have failed to establish
the unpatentability of Claims 2 and 4 for the same reasons discussed in conjunction
with Claim 1. Levy ¶ 127.
C. Claims 5-6 of the ’035 Patent
As to Claims 5 and 6 which depend from Claim 1, Petitioners do not allege
that the Smith article changes in any way the functionality of the Bergsten or Hirai
combination relating to “mapping,” “access controls” or “allowing access . . . using
NLLBPs.” Accordingly, the challenge to Claims 5 and 6 must fail for the same
reasons as discussed for Claim 1. Levy ¶ 128.
Moreover, the Petition provides only the following rationale for the
combination of Bergsten, Hirai and Smith: “one of ordinary skill in the art would
understand that the emulation and physical drivers of Bergsten are designed to
incorporate the functionality of the Tachyon chip of Smith.” Pet. at 57. This is
merely a conclusory statement asserting that both references are concerned with
similar functionality. Simply pointing out that the references are concerned with
40
the same types of devices and/or methodologies is insufficient to establish a reason
to combine under 35 U.S.C. § 103. BSP Software v. Motio, Inc., IPR2013-00307,
Paper 10, at 21-22 (“BSP’s reason to combine the teachings . . . appears to be that
both references are concerned with version control . . . which without more, is an
insufficient rationale to combine.”); IBM v. Intellectual Ventures II LLC, IPR2014-
00180, Paper 50, at 29-30 (“Evidence that [references] have similarities and
argument that the combination is mere ‘common sense’ are not enough.”). For this
additional reason, the obviousness challenge to Claims 5 and 6 fails.
D. Claim 11 of the ’035 Patent
Claim 11 is an independent claim covering “a method for providing virtual
local storage on remote storage devices.” As Claim 11 contains the “map,” “access
controls” and “allowing access . . . using NLLBPs” limitations of Claim 1,
Petitioners have failed to establish the unpatentability of Claim 11 for the same
reasons discussed in conjunction with Claim 1. Levy ¶ 129.
E. Claims 12 and 14 of the ‘035 Patent
Claims 12 and 14 depend from Claim 11 and Petitioners have failed to
establish the unpatentability of Claims 12 and 14 for the same reasons as Claim 11.
Levy ¶ 130.
41
IV. PETITIONERS HAVE FAILED TO MEET THEIR BURDEN TO SUPPORT AN OBVIOUSNESS CHALLENGE
Petitioners fail to establish that the combination of Bergsten and Hirai would
have a reasonable chance of success, fail to establish a motivation to combine the
references, and fail to adequately demonstrate how a person of ordinary skill in the
art could actually combine the references.
A. Petitioners Have not Shown that the References Can be Combined with a Reasonable Expectation of Success
Petitioners have failed to show that the references can be combined with a
reasonable expectation of success. Par Pharma, Inc. v. TWI Pharma, Inc., 773
F.3d 1186, 1197 (Fed. Cir. 2014). Petitioners argue that the access rights of Hirai
would be applied to logical storage locations of Bergsten. Pet. at 51. However,
providing “per host” access rights at the logical address level does not make sense.
Levy ¶131.
In the graphic below, Bergsten maps a virtual device (labeled “Virtual
Device” to multiple logical devices (labeled LD0, LD1 and LD2), and the logical
devices are further mapped to physical devices (labeled PD 0-5). Id. As an
example, Area 1 of Virtual Device is mapped to Logical Device 0, and Logical
Device 0 is further mapped to PD0 and PD1. The diagram also shows read (“R”)
and write (“W”) permissions applied to the logical devices as shown (e.g., each of
PC1, PC2 and PC3 has read and write access to LD0):
42
Id. While each of the host computers (e.g., PC1) sees the same Virtual Device,
none of the hosts are aware of anything other than the Virtual Device (i.e., because
the virtual-logical and logical-physical address mappings are internal to the
Bergsten storage controller). Id. ¶¶ 131-132; Ex. 1007, 3:17-19 (“Host computer
systems access stored data using virtual device addresses”), 9:43-47 (describing
“virtual-to-logical mapping tree structure” at the storage controller).
The hosts store files to the virtual device of Bergsten. Ex. 1007, 5:27-30.
Generally, a host’s file system can store a file anywhere on a (virtual) disk. Levy ¶
133. Because the hosts are not aware of the “access rights” that Petitioners allege
would be applied at the logical device (LD) level, the hosts could choose to store
blocks of a file anywhere on the virtual disk, with no regard to the access rights
applied at the logical addressing level. Id.
Virtual Device
LD 0
LD 2
LD 1
PD 0
PD 1
PD 2
PD 3
PD 4
PD 5
PC 1 RWPC2 RWPC3 RW
PC1 RWPC2 R
PC 1 RWPC3 R
PC1
PC2
PC3
Area 1
Area 2
Area 3
43
For example, with reference to the diagram above, if PC1 wants to store a
document, PC1 is only aware of the virtual device (that all PCs see) and has no
idea of the access rights applied at the logical device level. Thus, PC1 will “write”
the document to available space on the Virtual Device without regard to the logical
devices that make up the Virtual Device. Levy ¶ 134. If, for example, a document
gets stored in Area 1 of the Virtual Device, PC1 will end up storing the document
in a location of the Virtual Device (i.e., Area 1) where all three PCs can read the
document (because Area 1 is mapped to LD0 and all three PCs have read access to
LD0). In this scenario, there is no access control on the document—every PC has
access. Id.
However, if the same document was, instead, stored by PC1 in Area 2 as the
next available location, then only PC1 and PC 3 could read the file (because Area 2
is mapped to LD1 and only PC1 and PC3 have read access to LD1). Levy ¶ 135.
However, this different result was uncontrolled. Id. Worse yet, the document could
initially be stored in Area 2, meaning that both PC1 and PC3 could read it; but an
update to the document could later be stored in Area 3, meaning that PC3 could no
longer read the whole document (nor could PC2 as it would only have access to the
update). Id. Again, the result is uncontrolled and unpredictable. See also Levy
¶136.
44
The foregoing problems with the combination show that providing “per
host” access rights at the logical address level, per the asserted combination, could
not successfully apply access controls in any useful manner, even assuming it had
none of the flaws previously discussed. Accordingly, there is no reasonable
expectation of success. Id. at ¶ 137.
B. Petitioners’ Asserted Motivation to Combine is Deficient because it Undermines the Stated Premise of Bergsten
Petitioners rely exclusively on statements by Dr. Chase to show a motivation
to combine, but Dr. Chase’s reasons for combining undermine the very purpose of
the primary Bergsten reference. Pet. at 48 (citing Ex. 1010, ¶¶ 147-151). In his
declaration, Dr. Chase opines:
[A] skilled engineer would be motivated to combine the teachings of
Hirai with the address map of Bergsten to manage access controls to
groups of host computers within the system. For example, in the
context of bank account management and electronic fund transfers
mentioned within the background section of Bergsten, in the
combined system, certain sensitive data may be made accessible to
particular hosts within a banking system, while other data may be
made accessible to all of the hosts within a banking system.
Ex. 1010 at 87, ¶ 149 (citing Ex. 1007, 1:14-19). Dr. Chase’s alleged motivation is
based on a selective reading of the background section of Bergsten. The Bergsten
citation mentions nothing about restricting access to sensitive data. Ex. 1007,
45
1:14-15. Rather, immediately preceding the portion of Bergsten cited by Dr. Chase,
Bergsten describes that the problem addressed in Bergsten is to ensure that data is
available (i.e., “to ensure that valuable data is adequately protected against loss or
damage”), not restricting access to data. Id. at 1:19-21.
Bergsten is designed to provide open access to “allow recovery from any
possible failure modes such as failure of communication medium, failure of a host
computer, or failure of a storage device.” Ex. 1007, 5:48-52. To help ensure
recovery, all copies of data can be accessed by any host. Id. at Abstract
(“[m]ultiple copies of data . . . in storage arrays that are geographically remote to
each other, such that any copy can be accessed by any host.”). Limiting or
restricting a host’s access to data is counter to Bergsten’s goal of allowing all hosts
access to all data; and, therefore, limiting access to data cannot support the
combination. See Levy ¶ 119; see also Norman Int’l Inc. v. Hunter Douglas Inc.,
IPR2014-00276, Paper 11 at 12-13 (PTAB June 20, 2014) (“There can be no
motivation to modify if to do so would render the prior art invention being
modified unsatisfactory for its intended purpose.”) (citing In re Gordon, 733 F.2d
900,902 (Fed. Cir. 1984)); Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334-
35 (Fed. Cir. 2013); In re Ratti, 270 F.3d 810, 813 (CCPA 1959); Plas-Pak Indus.
v. Sulzer Mixpac AG, No. 2014-1447, 2015 WL 328222 at *3-4 (Fed. Cir. Jan 27,
2015) (unpublished).
46
In addition to the fact that the combination would defeat the purpose of
Bergsten, Bergsten’s reference to data “that is valuable or irreplaceable” does not
support Dr. Chase’s conclusory assertion that someone of skill in the art would be
motivated to modify Bergsten to manage access controls to groups of host
computers. Neither the Petition nor the cited portions of Dr. Chase’s declaration
provide any evidence beyond conclusory assertions that one of ordinary skill in the
art would be motivated to combine the references in the manner proposed, even
though such an explanation is required. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (reasons to combine must be more than “mere conclusory statements;
instead, there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness”); see Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1366-67 (Fed. Cir. 2012) (citing
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) as
“holding that post-KSR ‘some kind of motivation must be shown from some
source, so that the jury can understand why a person of ordinary skill would have
thought of either combining two or more references or modifying one to achieve
the patented [invention].’”); Unified Patents Inc. v. CRFD Research, Inc.,
IPR2015-00157, Paper 8, (PTAB Apr. 30, 2015) (“Further, Petitioner does not
point to any evidence supporting its assertions (other than the Declaration of [its
47
expert], which mirrors the Petition) that a person of ordinary skill would have had
reason to make the combination . . . .”).
V. OBJECTIVE EVIDENCE DEMONSTRATES THE NONOBVIOUSNESS OF THE INVENTION
Objective evidence “may often be the most probative and cogent evidence in
the record. It may often establish that an invention appearing to have been obvious
in light of the prior art was not. It is to be considered as part of all the evidence, not
just when the decisionmaker remains in doubt after reviewing the art.” In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d
1063, 1075-76 (Fed. Cir. 2012) (quoting Stratoflex, Inc. v. Aeroquip Corp., 713
F.2d 1530, 1538-39 (Fed. Cir. 1983)). Thus, a fact finder “must withhold judgment
on an obviousness challenge until it considers all relevant evidence, including that
relating to the objective considerations.” Id. at 1079. “These objective guideposts
are powerful tools for courts faced with the difficult task of avoiding subconscious
reliance on hindsight.” Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed.
Cir. 2012). Although the proponent of objective evidence must establish a nexus
between the evidence and the merits of the claimed invention, the evidence “need
only be reasonably commensurate with the scope of the claims.” Rambus Inc. v.
Rea, 731 F.3d 1248, 1256-1257 (Fed. Cir. 2013) (internal quotation marks
omitted).
48
A. Long Felt Need
As previously discussed, prior to the invention, the use of network servers to
access remote storage was slowed down because of the need to use network
protocols that included high level file system requests, which had to be translated
into NLLBP requests. See Section II.A. This created a bottleneck which slowed
down access to remote storage devices. Id. This problem was noted well before the
invention. For example, in 1992, Professor Randy Katz (Petitioners’ expert witness
in the co-pending litigation) identified “bottlenecks in [Network File System]
performance.” Ex. 2038 at 14. Katz explained that “[n]etwork protocol overheads
and server processing are possible culprits” and set forth his belief that the problem
stemmed from the nature of the protocol and “its associated forced disk writes.” Id.
As explained in Section II.A., the storage router of the invention provides
the ability to control host access to remote storage, while allowing faster access
using NLLBPs rather than the slower high level network protocols containing file
system requests. On cross-examination, Dr. Katz admitted that, before Crossroads’
invention, there was no such thing as a storage router and that the term “storage
router” did not exist. Ex. 2029 at 103:18-24, 104:15-105:1, 136:6-14.
B. Commercial Success and Licensing
Commercial success supports a finding of nonobviousness when there is a
sufficient connection or nexus between the proven success and the patented
49
invention. Demaco Corp. v. F. Von Langsdorff Licensing, Ltd., 851 F.2d 1387,
1392-93 (Fed. Cir. 1988). Nexus is generally established when the patentee shows
that the claimed invention is responsible for the commercial success. Id. Here, the
commercial success of Crossroads’ invention (access controls using NLLBP) is
shown, first, by the sales of all its products embodying that invention. Exhibit 2044
shows Crossroads shipments of products from 1998 (the year before products
embodying the invention were shipped) through 2010. Ex. 2043, 2044. Ex. 2044
shows two types of products: bridges and routers. Bridges and routers can be either
standalone devices, or embedded in a circuit board and included as part of another
device. Ex. 2043 ¶ 3. However, only routers embody the claimed invention,
because bridges do not contain access controls. Id. ¶ 2.
Ex. 2044 shows that Crossroads’ sales of its first bridge products (without
access controls, e.g., 4100, 4200 models) were initially quite high, but after the
introduction of access controls, the superiority of the routers was quickly perceived
by the market. Ex. 2044; Ex. 2043 ¶¶ 4-6. The success of the access control
enabled devices can be traced directly to that claimed feature of the invention,
50
because for multiple different models, two virtually identical versions were
offered—one with access controls, and one without. Id.5
The decline in Crossroads’ sales from 2000 through 2010, evident in Ex.
2044, is the result, at least in part, of patent infringement. Crossroads’ competitors
in the storage router market included Chaparral, Pathlight, and Dot Hill.
Crossroads began suing to enforce the ‘972 patent family (which includes the ‘147
Patent) against these companies, beginning in 2000. Crossroads Systems, (Texas),
Inc. v. Chaparral Network Storage, Inc., C.A. No. 1:00-cv-00218 (W.D. Tex.—
Austin Div., filed March 31, 2000). Crossroads obtained a judgment against
Chaparral in 2001, affirmed on appeal by the Federal Circuit. Ex. 2003;
Crossroads Systems (Texas), Inc. v. Chaparral Network Storage, Inc., 56 Fed.
Appx. 502 (Fed. Cir. 2003). Pathlight (which was owned by ADIC) settled during
trial; Dot Hill settled before trial. See Ex. 2050 (Rows 1 and 10); Ex. 2051. Other
companies also began infringing the ‘972 patents, utilizing access controls with
NLLBP in all-in-one storage appliances (containing both routers and storage
capacity). Crossroads vigorously enforced its rights, filing multiple suits against
5 This evidence demonstrates the success of Crossroads’ storage routers with
access controls. The ’147 Patent claims a specific subset of the inventive routers
of Ex. 2044, namely access control enabled FC-to-FC storage routers.
51
dozens of defendants. See Ex. 2049 ¶ 3; Ex. 2050. Crossroads also licensed the
patents to interested parties which took a license without any need for a lawsuit.
See id.
As shown in Exhibit 2050, a large number of licensees have taken licenses
directed specifically to Crossroads’ ‘972 patent family. The total license payments
through FY2014 are over $60 million. Id. Prominent members of the industry have
paid millions of dollars to Crossroads in exchange for a license. Id. (see, e.g., rows
1, 10, 14, 25, 26, 29, 30, 36). Copies of these licenses are attached collectively at
Exhibits 2051 (non-confidential) and 2052 (confidential). That these companies
were willing to pay millions of dollars to license the invention claimed in the ‘972
patent family is evidence that the claims are not obvious. Sandisk Corp. v. Lexar
Media, 91 F. Supp. 2d 1327, 1336 (N.D. Cal. 2000); see also RCA Corp. v. Data
General Corp., 701 F. Supp. 456, 471 (D. Del. 1988) (“While sheer numbers alone
are insufficient to buttress a finding of non-obviousness, the Court finds [Patent
Owner’s] evidence of its licensing [approximately $24,000,000 in royalties] to be
probative because prominent members of the . . . industry . . . executed license
agreements . . . .”) “[S]uch real world considerations provide a colorful picture of
the state of the art, what was known by those in the art, and a solid evidentiary
foundation on which to rest a nonobviousness determination.” Minnesota Mining
& Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1575 (Fed.
52
Cir. 1992). This is especially true given the millions in license fees paid outside of
litigation by large, well-established entities (see, e.g., Ex. 2040 at rows 14, 29, 30,
36) that may be presumed to have done their due diligence before agreeing to take
a license. See, e.g., B&H Mfg. v. Foster-Forbes Glass Co., 26 U.S.P.Q.2D 1066,
1070 (N.D. Ind. Jan. 6, 1993) (“Even with the high cost of patent litigation, few (if
any) large competitors will pay millions of dollars in royalties simply to avoid
litigation. . . . [T]hey would not have bowed to pressure to take a license without
first reaching the conclusion that ultimately litigation would prove futile.”).
VI. CONCLUSION
For all of the foregoing reasons, Petitioners have failed to show by a
preponderance of the evidence that any claim of the ’035 Patent is unpatentable.
Pursuant to 37 C.F.R. §§ 42.22, 42.23, and 42.120, Patent Owner respectfully
requests that the Board issue a final written decision denying the Petition and
confirming the patentability of the originally issued and previously re-examined
claims of the ’035 Patent, because Petitioners have failed to show the
unpatentability of the claims on the grounds for which the inter partes review was
instituted.
53
Dated: May 26, 2015 Respectfully submitted, /John L. Adair/ John L. Adair
Registration No. 48,828 Counsel for Patent Owner
CERTIFICATE OF SERVICE The undersigned certifies service of PATENT OWNER’S RESPONSE AND
OPPOSITION TO PETITION PURSUANT TO 37 C.F.R. § 42.120, including Patent Owner’s Exhibit List, and Exhibits 2029-2065 on May 26, 2015 on counsel for Petitioners by e-mail pursuant to agreement at the following addresses:
Greg Gardella [email protected] Scott McKeown [email protected] Oblon 1940 Duke Street Alexandria, VA 22314
By: /James H. Hall / James H. Hall
