KOM Software, Inc.

Patent Trials and Appeals Board

Jul 28, 2020

IPR2019-00603 (P.T.A.B. Jul. 28, 2020)

Trials@uspto.gov Paper No. 28
571-272-7822 Date: July 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NETAPP, INC.,
Petitioner,

v.

KOM SOFTWARE, INC.,
Patent Owner.
____________

IPR2019-00603
Patent 7,392,234 B2
____________

Before KIMBERLY McGRAW, DANIEL J. GALLIGAN, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
IPR2019-00603
Patent 7,392,234 B2

2
I. INTRODUCTION
A. Background
NetApp, Inc. (“Petitioner”) 1 filed a Petition to institute an inter partes
review of claims 1–7, 45–57, and 59 (the “challenged claims”) of U.S.
Patent No. 7,392,234 B2 (“the ’234 patent”). Paper 3 (“Pet.”). KOM
Software, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 9
(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), we
instituted an inter partes review of all challenged claims. Paper 10 (“Dec.”).
Patent Owner filed a Response (Paper 13, “PO Resp.”), Petitioner
filed a Reply (Paper 15, “Reply”), and Patent Owner filed a Sur-Reply
(Paper 18, “Sur-Reply”). An oral hearing was held on May 6, 2020, and a
copy of the transcript was entered into the record. Paper 27 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of the claims on which we instituted trial. Having reviewed the
arguments of the parties and the supporting evidence, we determine that
Petitioner has shown, by a preponderance of the evidence, that some of the
challenged claims of the ’234 patent are unpatentable.
B. Related Proceedings
Concurrent with the instant Petition, Petitioner filed another petition
for inter partes review of the ’234 patent in IPR2019-00601. Pet. 62; Paper
5, 2; Paper 8, 2.
The parties state that the ’234 patent is involved in (1) KOM Software
Inc. v. Hitachi Vantara Corp., Case No. 1-18-cv-00158 (D. Del.); (2) KOM

1 Hewlett Packard Enterprise Co. settled with Patent Owner and is no longer
a part of this proceeding. See Paper 24.
IPR2019-00603
Patent 7,392,234 B2

3
Software Inc. v. Hewlett Packard Enterprise Co., Case No. 1-18-cv-00159
(D. Del.); and (3) KOM Software Inc. v. NetApp, Inc., Case No. 1-18-cv-
00160 (D. Del.). Pet. 61–62; Paper 5, 3; Paper 8, 2. The parties also state
there are a number of related proceedings including: IPR2019-00591 and
IPR2019-00592, IPR2019-00594, IPR2019-00597, IPR2019-00598,
IPR2019-00600, IPR2019-00603, IPR2019-00604, IPR2019-00605,
IPR2019-00606, IPR2019-00607, and IPR2019-00608. Pet. 62; Paper 5, 2–
3; Paper 8, 3.
C. The ’234 Patent
The ’234 patent (Ex. 1001), titled “Method and system for electronic
file lifecycle management,” relates generally to methods that associate a set
of policies with each electronic file or storage used for each electronic file,
where the policies control the lifecycle of the associated electronic files
stored on the system. Ex. 1001, codes (54), (57), 2:43–53, 4:66–5:11, 5:33–
6:60. As shown in Figure 2, reproduced below, a virtual filing cabinet can be
used to manage the lifecycle of a file.
IPR2019-00603
Patent 7,392,234 B2

4

Figure 2 above illustrates a virtual filing cabinet. Id. at 3:65. Files can
be automatically moved between virtual drawers of the filing cabinet based
on managing policies “and as such, a file’s lifecycle is managed from file
creation to file deletion in an automated fashion.” Id. at code (57). The
virtual cabinet and drawers can span multiple storage media and can be
indefinite in size. Id. at 4:29–34.
IPR2019-00603
Patent 7,392,234 B2

5
D. Illustrative Claim
Of the challenged claims, claims 1, 45, and 51 are independent. Each
of dependent claims 2–7, 46–50, 52–57, and 59 depends directly or
indirectly from its respective independent claim 1, 45, or 51. Illustrative
claim 1, with bracketed material added, is reproduced below.
1. [a] A computer-implemented method of managing a file
lifecycle, the method comprising the steps of storing data on a
storage medium comprising:
[b1] associating a set of lifecycle policies with a file in a
file system, [b2] wherein said lifecycle policies relate to aspects
of file classification and file disposition including at least one of:
file creation, file retention, file reference, file non-use, file
security, file protection, file preservation, file storage locations
within a storage medium, cost effective storage of a file, or file
expiration;
[c] storing said file on said storage medium accessible by
a computer according to said set of lifecycle policies;
[d] automatically determining from the associated
lifecycle policies whenever said file is to be moved;
[e] automatically moving said file according to the
associated lifecycle policies to another storage location within
said storage medium or within a different storage medium
whenever the associated lifecycle policies determine that said file
is to be moved; and
[f] receiving an access request for said file from an
application;
[g] providing transparent access to said requested file
based on said associated set of lifecycle policies, regardless of
where said file is located, and independently of said application
requesting access to said file.
Ex. 1001, 14:2–28.
IPR2019-00603
Patent 7,392,234 B2

6
E. Instituted Ground
Petitioner contends that the challenged claims are unpatentable under
the following ground:2
Claims Challenged 35 U.S.C. §3 References
1–7, 45–57, 59 103(a) Blickenstaff,4 Crouse5
a. Blickenstaff
Blickenstaff is titled “Data storage management for network
interconnected processors” and describes a data storage system that audits
each of the networked storage volumes and migrates low priority data to
backend data storage media. Ex. 1005, codes (54), (57). The audit is
performed either on demand or on an as scheduled basis. Id. at code [57].
This helps “provide more available data storage space in the data storage
subsystems.” Id. at 1:12–13.
Blickenstaff describes that its data storage management system
implements a “virtual data storage system” including a first section—having
“a plurality of data storage subsystems”—and a second section, with the
second section including a storage server “consisting of a storage server
processor and at least one layer of hierarchically arranged data storage
devices, that provides backend data storage space.” Id. at 2:22–33.

2 Petitioner supports its challenge with a Declaration of Darrell Long, Ph.D.
(Ex. 1002) (“Long Decl.”).
3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102 and 103 that became effective after the filing of the
application for the ’234 patent. Therefore, we apply the pre-AIA versions of
these sections.
4 Ex. 1005, U.S. Pat. 5,537,585 (July 16, 1996) (“Blickenstaff”).
5 Ex. 1011, U.S. Pat. 5,764,972 (June 9, 1998) (“Crouse”).
IPR2019-00603
Patent 7,392,234 B2

7
Once a file is migrated, “[t]he data file directory resident in the data
storage device that originally contained this data file is updated with a
placeholder entry in the directory to indicate that this data file has been
migrated to backend data storage.” Id. at 2:40–44. When the file is requested
“[t]he storage server automatically [and transparently] retrieves the
requested data file using information stored in the placeholder entry and
transmits the retrieved data file to the data storage device from whence it
originally came.” Id. at 2:49–56.
b. Crouse
Crouse is titled “Archiving file system for data servers in a distributed
network environment” and describes an “archiving file system [that]
automatically archives remote files across multiple types of secondary
storage media on such network data servers based on a set of hierarchically
selectable archival attributes selectively assigned to each remote file.”
Ex. 1011, codes (54), (57). Crouse’s system is directed primarily to “control
[of] the long-term storage of and access to remote files stored on network
data servers.” Id. at 4:33–34; see also id. at 1:33, 4:11. The archiving file
system also “stor[es] control information about the remote files as part of an
addressable control file” and “stores the set of hierarchically selectable
archival attributes and one or more archival blocks associated with each
remote file that automatically control the manner in which that remote file
will be stored and ultimately archived, or even removed from the network
data server.” Id. at 4:47–58.
IPR2019-00603
Patent 7,392,234 B2

8
II. ANALYSIS
A. Legal Standards for Obviousness
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a framework for assessing obviousness under 35
U.S.C. § 103 that requires consideration of four factors: (1) the “level of
ordinary skill in the pertinent art,” (2) the “scope and content of the prior
art,” (3) the “differences between the prior art and the claims at issue,” and
(4) “secondary considerations” of non-obviousness such as “commercial
success, long-felt but unsolved needs, failure of others, etc.” Id. at 17–18.
Neither party has presented evidence or argument directed to secondary
considerations. The other Graham factors are addressed below.
B. Level of Ordinary Skill
Petitioner contends a person of ordinary skill in the art (a “POSA”)
“would have held either a bachelor’s degree in computer engineering or
computer science with two years of experience in the field of data storage
management or a master’s degree in either discipline with an emphasis on
data storage management.” Pet. 8 (citing Long Decl. ¶¶ 27–30). Patent
Owner provides a similar definition, stating a POSA “should have a
bachelor’s degree in electrical engineering, computer science, or equivalent
with two years or more of experience in computing systems development; a
master’s degree in electrical engineering, computer science, or equivalent; or
comparable computing systems work experience.” PO Resp. 5–6 (citing
Declaration of Dr. Jose Luis Melendez ¶ 33, (Ex. 2001) (“Melendez
Decl.”)); see Melendez Decl. ¶ 33 (Dr. Melendez testifying that a POSA
may also have a degree in electronics engineering or applied mathematics).
IPR2019-00603
Patent 7,392,234 B2

9
Thus, the parties dispute whether a POSA must have a degree in
computer science/engineering or whether a POSA could instead have a
degree in electrical engineering as well as whether the POSA’s experience
must be in data storage management or could encompass experience in the
field of computing systems development.
Although the parties articulate different levels of skill for a POSA,
neither party explains how its recited level of skill impacts the obviousness
analysis such that application of one proposal versus the other would lead to
different ultimate outcomes.
Based on the record before us, including the types of problems and
solutions described in the ’234 patent and the cited prior art, we determine
that a person of ordinary skill in the art would have had a bachelor’s degree
in a technical field such as computer engineering, computer science,
electrical engineering, electronics engineering, applied mathematics, or their
equivalent, with two years of experience in the field of computing systems
development, including fields of data storage management or file storage
and manipulation; a master’s degree in such a technical field; or comparable
computing systems work experience. We further note that our analysis
would be the same under either parties’ definition.
C. Claim Construction
In an inter partes review, a claim “shall be construed using the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). Under
this standard, claim terms are given their ordinary and customary meaning as
would have been understood by a person of ordinary skill in the art at the
time of the invention and in the context of the entire patent disclosure. In re
IPR2019-00603
Patent 7,392,234 B2

10
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
specification “reveal[s] a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess[,] . . . the
inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
For purposes of this Decision, we only find it necessary to provide
some construction of the term “transparent access,” as discussed below. See,
e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’
. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999))).
a. Transparent Access
Petitioner asserts that no claim constructions are required to resolve
the disputes in the present action. See Pet. 9. However, Patent Owner asserts
that Petitioner has implicitly provided an incorrect claim construction of the
term “transparent access,” which is present in each of challenged
independent claims 1, 45, and 51. PO Resp. 7. Patent Owner asserts that
Petitioner’s definition is: “access [to] the file regardless of the file’s new
location and without having to know where the file is physically located.”
Id. (quoting Dec. 13–14 and citing Pet. 28) (alteration in original).
In contrast, Patent Owner argues that the term “transparent access”
should be construed to mean: “[a]s far as the user is concerned the file is
stored in a particular directory on a particular drive,” but it actually resides
elsewhere. PO Resp. 7 (quoting Ex. 1001, 5:63–64); see also id. (stating
IPR2019-00603
Patent 7,392,234 B2

11
because the ’234 patent operates at the file system level, the user is
“provided by the file system the fiction that a file resides and resided on a
particular directory on a particular drive”); id. at 16 (discussing what is
required by “transparent access”).
There are two differences between these claim constructions. Whether
or not “transparent access” requires “access [to] the file regardless of the
file’s new location” and whether or not “transparent access” requires a user
to know or believe that the file is located in a particular location.
The first difference is not actually an issue in the sense that it is
explicitly required by the claims. Each of independent claims 1, 45, and 51
requires “providing transparent access to said requested file . . . regardless of
where said file is located.” Ex. 1001, 14:25–27, 18:48–50, 19:36–38. Thus,
“regardless of where said file is located” does provide insight into the
meaning of “transparent access.”6 But it does not differentiate Patent Owner
and Petitioner’s positions as to what the claims require.
Thus, the actual dispute centers around whether or not transparent
access requires a user to know or believe that the file is located in a
particular location. For the reasons discussed below, we determine that
though transparent access allows for the user to falsely believe the file is
located in a particular location, it does not require such belief.
The ’234 patent does not use the term “transparent access.” When
discussing “a method of file lifecycle management” (Ex. 1001, 5:32–33), it
describes a transparent use of a virtual storage cabinet, stating:

6 Patent Owner’s argument at pages 16–17 of the Patent Owner Response
incorrectly implies that this is the only distinction between its and
Petitioner’s claim construction.
IPR2019-00603
Patent 7,392,234 B2

12
The use of storage cabinet or drawer is completely transparent to
the user. As far as the user is concerned the file is stored in a
particular directory on a particular drive. Internally to the system
the file may redirected to an entirely different location and may
even be split across different devices across the network.
Id. at 5:61–67.
Patent Owner argues that this discussion “requires that ‘[a]s far as the
user is concerned the file is stored in a particular directory on a particular
drive.’” PO Resp. 7 (quoting Ex. 1001, 5:63–64) (alteration in original); see
also Melendez Decl. ¶¶ 28, 36. Patent Owner further argues that “transparent
access” also requires that the system provide the user with “the fiction that a
file resides and resided on a particular directory on a particular drive.” PO
Resp. 7.
We disagree with Patent Owner’s arguments. Though the
Specification is describing an embodiment of the invention, there is nothing
in the cited paragraph that requires transparent access to mean that the user
believe the file is stored in a particular directory on a particular drive when it
is not. See Ex. 1001, 5:61–67. Still further, we see no reason to read an
additional limitation into the claims of providing the user with a false
location of a file on a particular drive as implied by Patent Owner. Rather,
we determine that the Specification is describing a particular embodiment
that is encompassed within the definition of “transparent access,” but does
not limit the term “transparent access” to this particular embodiment.7 See E-

7 We note that Patent Owner’s position surrounding “belief” would appear to
prevent the inventor of the ’234 patent from practicing the invention, as
anyone who knows how the system works would be unlikely to have a false
belief as to where a file is located, though they may not know where the file
is stored.
IPR2019-00603
Patent 7,392,234 B2

13
Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003)
(“[I]n determining whether a statement by a patentee was intended to be
lexicographic, it is important to determine whether the statement was
designed to define the claim term or to describe a preferred embodiment.”);
see also Reply 14–15. Also, this embodiment states that a file “may [be]
redirected” to a location different from that conveyed to the user; it does not
say the file must be moved. Ex. 1001, 5:61–67. Therefore, even if the claims
were limited to this embodiment, it would not compel the construction
Patent Owner proposes.
Turning to the prosecution history, in response to an Office Action
dated May 3, 2007, all three of the independent claims were amended to
include, inter alia, “providing transparent access to said file regardless of
where the file is created, located, or moved to, independently of an
application or a user.” Ex. 1004, 44, 46, 51–52. The claims were later
revised by examiner’s amendment to the current language. Id. at 29–30. In
summarizing an examiner interview at the time of the response, the applicant
stated “that some amendment is needed to clarify” that “when a file is
moved according to the policies, the move is transparent to the user, who
does not need to know where the new file location is in order to access it.”
Id. at 56. When discussing the prior art, the applicant also explained:
When a file is moved according to the file lifecycle policies, the
user may still access the file regardless of the file’s new location
and without having to know where the file is physically located.
Thus, accessing the file . . . is transparent to the user.
Id. at 58 (citing Spec. as Filed, 8, ll. 2–7 (corresponding to Ex. 1001, 5:64–
6:2)) (internal citation omitted).
IPR2019-00603
Patent 7,392,234 B2

14
The applicant’s two statements that to be “transparent to the user” the
user “does not need to know where the new file location is in order to access
it” support Petitioner’s position that “transparent access” does not require
the user “to know where the file is physically located.” See Pet. 29; Reply
15. Further, nothing in these statements would require the user to have a
misplaced belief as to the location of the file as per Patent Owner’s
construction.
Patent Owner acknowledges the prosecution history and states that
“[t]he user/client may have no actual knowledge of the file’s location as
discussed in the prosecution history but believe the file is stored in a
particular directory on a particular drive when it is indeed not stored there.”
Sur-Reply 9. Though it is true that a user may have such a belief, the
statement does not provide any persuasive evidence as to why “transparent
access” requires the user to have an incorrect belief of the location of the
file.
Patent Owner also points to other statements in the prosecution history
to argue that its
meaning of “transparent access” is entirely consistent with the
prosecution history Petitioners cite because the prosecution
history also explicitly states that “because embodiments of the
invention may operate at the file system level, no separate
application or middleware is required.” It would have been
readily understood by a [POSA] that by operating at the file
system level the user would be provided by the file system the
fiction that a file resides and resided on a particular directory on
a particular drive as required for transparent access of the ‘234
Patent.
PO Resp. 7 (quoting Ex. 1004, 58; citing id. at 56–58; Melendez Decl. ¶ 28;
Ex. 1001, 5:63–64) (internal citation omitted).
IPR2019-00603
Patent 7,392,234 B2

15
We first note that this argument in the prosecution history appears to
be directed primarily to the transparent access being provided
“independently of an application or a user.” Ex. 1004, 58 (emphasis
omitted). It is also consistent with our determination that “transparent
access” includes, but does not require, that a user have a misplaced belief
about the location of the file. Patent Owner does not provide any reason why
this example requires more.
Patent Owner also points to a publication by the National Institute of
Standards & Technology (NIST) in support of its definition of “transparent
access.” PO Resp. 17 (citing Ex. 2003, 5). Patent Owner quotes the
publication as stating: “However, there is no standard way for [an]
application to be able to transparently access files on several file systems
whose access characteristics may differ from the access characteristics of the
local file system. Transparent file access means that remote files are
accessed as though they were local.” Id. (quoting Ex. 2003, 5) (Patent
Owner’s emphasis and alteration).
Patent Owner argues that ‘“the access characteristics of the local file
system’ implies knowledge by the local client, in the case of NIST, that the
file is stored in a particular directory on a particular drive of the local file
system when in fact it is stored as a remote file.” Id. (citing Melendez Decl.
¶ 41, which includes the same sentence). However, neither Patent Owner nor
its expert adequately explain why this would require the user to falsely
believe the file is located in a particular location. See Reply 16–17. The fact
that a user does not have to separately access a remote server to retrieve a
file, but rather can transparently access the file from the user’s computer as
though the file was local, says nothing about where the user believes the file
IPR2019-00603
Patent 7,392,234 B2

16
to be located. Again, it is possible that the user does believe the file is
located locally, but there is no requirement that the user have such a belief.
In view of the above, we determine that “transparent access” includes
that access is provided without the user having to know where the file is
physically located, but does not require that a user have a misplaced belief
about the location of the file.
D. Claims 1–7, 45–57, and 59 — Alleged Obviousness over
Blickenstaff and Crouse
Petitioner asserts that claims 1–7, 45–57, and 59 would have been
obvious over Blickenstaff and Crouse. See Pet. 7, 13–61. Patent Owner
opposes. See PO Resp. 7–25. For the reasons set forth below, we determine
Petitioner has shown that the combination of Blickenstaff and Crouse
teaches the limitations of claims 1–7, 45, 49–51, 55–57, and 59. We
additionally find that Petitioner has demonstrated that one of ordinary skill
in the art would have had reason with rational underpinning to combine the
teachings of the references in the manner proposed by Petitioner with a
reasonable expectation of success with respect to these claims. Pet. 7, 13–61;
Long Decl. ¶¶ 37–128. Thus, we determine Petitioner has shown that claims
1–7, 45, 49–51, 55–57, and 59 would have been obvious over Blickenstaff
and Crouse.
In addition, for the reasons set forth below, we determine Petitioner
has not shown that the combination of Blickenstaff and Crouse renders
obvious claims 46–48 and 52–54.
a. Independent Claim 1
Petitioner asserts that the combination of Blickenstaff and Crouse
would have rendered obvious independent claim 1. Pet. 13–30. In general,
IPR2019-00603
Patent 7,392,234 B2

17
Petitioner asserts that Blickenstaff teaches the computer-implemented
methods of managing a file lifecycle as required by independent claim 1. Id.
at 17–18 (citing Ex. 1005, code (57), 1:7–13, 8:51–53, 9:7–15; Long Decl.
¶ 45). Petitioner further asserts that Blickenstaff teaches or suggests all of
the additional limitations of claim 1 (id. at 18–30), except that though
Blickenstaff “discloses migration rules, . . . it does not expressly state that
those rules are associated with individual files” (id. at 13). Petitioner relies
on Crouse for this teaching. Id. at 13–17, 19–20. Petitioner asserts that “[i]t
would have been obvious to one of ordinary skill in the art, however, to
associate Blickenstaff’s migration rules on an individual file-by-file basis in
view of Crouse” as a matter of design choice and, inter alia, to provide a
finer level of control over file management. Id. at 13–17 (citing Long Decl.
¶¶ 37–44); see also id. at 19–20.
For the reasons discussed below, we determine that Petitioner has
shown that the combination of Blickenstaff and Crouse teaches the subject
matter recited in claim 1 and has demonstrated that one of ordinary skill in
the art would have had reason to combine the teachings of the references in
the manner proposed by Petitioner. Id. at 13–30; Long Decl. ¶¶ 37–67.
i. Uncontested Limitations of Claim 1
Patent Owner does not contest Petitioner’s position that Blickenstaff
teaches or suggests the following of claim 1 (i.e., claim elements 1[a, b2–f]):
1. [a] A computer-implemented method of managing a file
lifecycle, the method comprising the steps of storing data on a
storage medium comprising:
. . . [b2] wherein said lifecycle policies relate to aspects of
file classification and file disposition including at least one of:
file creation, file retention, file reference, file non-use, file
security, file protection, file preservation, file storage locations
IPR2019-00603
Patent 7,392,234 B2

18
within a storage medium, cost effective storage of a file, or file
expiration;
[c] storing said file on said storage medium accessible by
a computer according to said set of lifecycle policies;
[d] automatically determining from the associated
lifecycle policies whenever said file is to be moved;
[e] automatically moving said file according to the
associated lifecycle policies to another storage location within
said storage medium or within a different storage medium
whenever the associated lifecycle policies determine that said file
is to be moved; and
[f] receiving an access request for said file from an
application.
See generally PO Resp.; Sur-Reply.
We have reviewed and agree with Petitioner’s undisputed arguments.
For example, Petitioner argues, and we agree, that Blickenstaff teaches claim
element 1[a]. See Pet. 17–18. We are persuaded by Petitioner that
Blickenstaff teaches managing a file lifecycle “by disclosing a data storage
system that migrates low priority data to backend data storage media,”
among other teachings. Id. at 17 (citing Ex. 1005, code (57), 1:7–13).
Relevant to claim elements 1[a] and [c] Petitioner argues, and we agree, that
Blickenstaff teaches storing data, such as files, on a storage medium. Id. at
18 and 25–26 (both citing Ex. 1005, 2:14–18). Petitioner persuasively argues
that a POSA would understand that “includes storing files on a storage
medium according to the migration rules” (i.e. lifecycle policies) as further
required by claim element 1[c]. Id. at 26 (citing Long Decl. ¶ 60).
Petitioner argues, and we agree, that Blickenstaff’s teaching of
automatically migrating low priority files to backend storage is consistent
with “automatically determining from the associated lifecycle policies
IPR2019-00603
Patent 7,392,234 B2

19
whenever said file is to be moved” as claimed by element 1[d] and the
requirement of automatically moving the file of element 1[e]. Id. at 26, 27
(both citing Ex. 1005, 1:7–13); see also id. (both citing Ex. 1005, 9:67–10:4)
(discussing migration rules); and id. at 26 (citing Ex. 1005, 5:28–29)
(discussing migration timing and scheduling).
Petitioner also asserts Blickenstaff’s teaching of migration rules
teaches claim element 1[b2], which defines particular aspects of the lifecycle
policies. Id. at 21. We agree with Petitioner that Blickenstaff teaches rules
“to migrate files to backend data storage systems” corresponding to the
claimed lifecycle policies. Id. (citing Long Decl. ¶ 50). As noted by
Petitioner, Blickenstaff teaches “that files are placed into a ‘priority list, such
as a least recently used list’ to determine which files to migrate.” Id.
(quoting Ex. 1005, 11:16–19). We agree with Petitioner that this is one way
to classify files and thus, Blickenstaff teaches rules that include “aspects of
file classification” as well as file non-use. See id. at 21, 23. As claim element
1b only requires “at least one” aspect of file classification and file
disposition, Petitioner’s showing of Blickenstaff’s teaching of file non-use is
sufficient to show that Blickenstaff teaches all that the claim requires in this
regard. At the same time, we agree with Petitioner that Blickenstaff also
teaches that its rules deal with file creation, file retention and preservation,
file reference, file security and protection, file storage locations within a
storage medium, and cost effective storage of a file. Id. at 22–25 (citing e.g.,
Ex. 1005, 5:7–11, 7:7–16, 11:16–19, 11:65–12:1).
Petitioner argues and we agree that Blickenstaff teaches claim
element 1[f], based at least on the teaching that “a processor may ‘request[]
IPR2019-00603
Patent 7,392,234 B2

20
[a] data file.’” See id. at 27 (quoting Ex. 1005, 2:44–45) (emphasis omitted,
alterations in original).
Based on the foregoing, we are persuaded that Petitioner establishes
that Blickenstaff teaches or suggests these undisputed limitations by a
preponderance of the evidence. See id. at 17–18, 25–28; Long Decl. ¶¶ 45–
46, 60–63.
ii. Associating a Set of Lifecycle Policies with a File
Claim 1 also requires
[b1] associating a set of lifecycle policies with a file in a
file system.
Petitioner asserts that the combination of Blickenstaff and Cannon
renders obvious this limitation. Pet. 19–20. Petitioner argues that
“Blickenstaff discloses ‘a plurality of concurrently operational space
management rules’” and that “[b]ased on these rules, ‘data files can be
selected for migration as a function of the time of last access, size, [or]
quantity of data storage space available on the network volume.’” Id. at 19
(quoting Ex. 1005, 9:67–10:4) (Petitioner’s emphasis). However, Petitioner
states that the rules managing the files in Blickenstaff are called “operational
space management rules,” rather than rules that are explicitly associated
directly with the files. Id.
Petitioner asserts that Crouse “discloses that its system ‘automatically
archives remote files across multiple types of secondary storage media on
such network data servers based on a set of hierarchically selectable archival
attributes that are selectively assigned to each remote file.’” Id. at 14
(quoting Ex. 1011, 4:25–29). Petitioner further quotes Crouse as stating
“[b]y providing for a set of hierarchically selectable archival attributes
associated with each remote file, the archiving file system allows user
IPR2019-00603
Patent 7,392,234 B2

21
programs to specify how a remote file will be managed on a network data
server.” Id. (quoting Ex. 1011, 5:1–4) (Petitioner’s emphasis). Based on the
teachings of Crouse, Petitioner further asserts that it would have been
obvious “to implement Blickenstaff’s hierarchical storage management
system with individual attributes for each file to allow finer control of how
individual files will be archived and/or migrated within the storage system”
as taught by Crouse. Id. at 14–15 (citing Long Decl. ¶ 40).
Petitioner provides various reasons that a person of ordinary skill in
the art would have “add[ed] Crouse’s archival attributes . . . in addition to or
as a substitute for Blickenstaff’s file attributes,” such as “to enable
Blickenstaff’s system to control when files are migrated on a more granular,
file-by-file basis.” Id. at 20 (citing Long Decl. ¶ 48); see also id. at 13–17,
19–20 (discussing rationale to combine).
Patent Owner argues that Petitioner’s understanding of “what it means
to associate ‘a set of lifecycle policies with a file in a file system’” is too
broad. PO Resp. 11. Patent Owner argues that a POSA would not understand
this to mean ‘“applying rules to a file in a file system’ nor even ‘applying a
set of lifecycle policies to a file in a file system.’” Id. Rather, Patent Owner
argues that “file lifecycle policy” was defined in the patent prosecution
history as “a framework of processes, classifications of data and storage
resources, and the relationships among them, beyond mere archiving of
files.” Id. at 11–12 (quoting Ex. 1004, 1118) (Patent Owner’s emphasis); See

8 We refer to the file history of the ‘234 Patent in Exhibit 1004 rather than
Patent Owner’s later filed shortened version of the file history (Ex. 2002).
See 37 C.F.R. § 42.6(d) (“A document already in the record of the
proceeding must not be filed again . . . without express Board
authorization”).
IPR2019-00603
Patent 7,392,234 B2

22
also Melendez Decl. ¶ 52 (discussing the prosecution history). However, the
prosecution history when reviewed more closely does not support Patent
Owner’s proposition that “lifecycle policy” was redefined.
The excerpt relied on by Patent Owner is part of an interview
summary that, rather than defining the claims, defines what the Applicant
believed to be the invention: “Applicants explained the nature and
background of the invention, in particular, that a file lifecycle policy is a
framework of processes, classifications of data and storage resources, and
the relationships among them, beyond mere archiving of files.” Ex. 1004,
111 (emphasis added); see also Reply 2–3. The Applicant went on to state
that “[i]t was agreed that the applied reference does not teach the invention,
and that some amendment is needed to clarify the nature of the ‘lifecycle
policies’ recited in the claims.” Ex. 1004, 111. In other words, the claims
needed to be amended to better align the claim language with the invention.
Further, the Applicant used the term “lifecycle policies” broadly implying
that something was needed to be added to the claims to limit their broad
reach.
With that in mind, the Applicant amended independent claim 38
(issued claim 51) to add:
wherein said lifecycle policies relate to at least two of: file
creation, file retention, file reference, file non-use, file security,
file protection, file preservation, cost effective storage of a file,
and/or file expiration, wherein a file lifecycle comprises aspects
of file management including: file classification and/or file
storage disposition.
Id. at 106; see also id. at 99–101 (Independent claims 1 and 8, which
correspond with issued claims 1 and 45, were similarly amended). Thus, the
Applicant further defined what was meant by “lifecycle policies” by adding
IPR2019-00603
Patent 7,392,234 B2

23
specific requirements for the lifecycle policies into the claims. Reply 4; see
also Ex. 1004, 96 (The Examiner understands the “[t]he proposed
amendments limit[] the lifecycle policies and what types of policies must be
included.”).
Patent Owner argues that based on its definition of lifecycle policies
“[s]imply applying rules to files to migrate them (such as in archiving of
files) is not within the scope of the invention.” PO Resp. 12, 22–23; Sur-
Reply 1–2. We disagree. Rather, migrating or archiving are within the
meaning of the claimed lifecycle policy if they satisfy the requirements of
element:
[b2] wherein said lifecycle policies relate to aspects of file
classification and file disposition including at least one of: file
creation, file retention, file reference, file non-use, file security,
file protection, file preservation, file storage locations within a
storage medium, cost effective storage of a file, or file expiration.
Ex. 1001, 14:6–11.
We also note that claim element is 1[b2] is broader than the
amendment discussed above, because the claims were further amended to
only require “at least one of” the listed aspects, instead of two. Ex. 1004,
44–45, 51. Thus, migrating or archiving are within the meaning of the claim
if they satisfy the requirements of the claim, including at least one of the
claimed aspects of file classification and file disposition. See Reply 5–6.
Patent Owner does not contest that Blickenstaff teaches element 1[b2] (see
generally PO Resp.), and as noted previously we find that Blickenstaff
teaches lifecycle policies that relate to aspects of file classification and file
disposition as required (see supra § II.D.a.i.).
Patent Owner also argues that “Blickenstaff’s rules are not associated
with the files in a file system.” PO Resp. 12; Sur-Reply 2. However,
IPR2019-00603
Patent 7,392,234 B2

24
Petitioner acknowledges as much in the Petition (Pet. 19), and for this
reason, Petitioner cites Crouse as teaching selectable attributes assigned to
each remote file and argues that it would have been obvious to modify
Blickenstaff’s storage management system based on Crouse’s teachings (id.
at 14–15 (citing Long Decl. ¶ 40)). We note that Patent Owner admits that
“Crouse is explicit that attributes are associated with the files.” PO Resp. 15.
Patent Owner next argues that “Crouse does not cure the deficiencies
of Blickenstaff because it only discusses additional file attributes for
archiving,” which it argues is excluded from the meaning of the lifecycle
policies because of the new definition given during prosecution. PO Resp.
12; Sur-Reply 2–3. However, we do not agree that the Applicant in
prosecution defined lifecycle policies to exclude archiving. Rather, the
Applicant’s “amendments limit[] the lifecycle policies and what types of
policies must be included” to what is included in element 1[b2]. Ex. 1004,
96. Thus, archiving is within the meaning of the claimed lifecycle policy if it
satisfies the requirements of element 1[b2]. As noted, this is taught by
Blickenstaff.
Based on Petitioner’s persuasive evidence and argument and in view
of the foregoing discussion, we find the combination of Blickenstaff and
Crouse teaches “associating a set of lifecycle policies with a file in a file
system,” as recited in claim 1.
iii. Providing Transparent Access
Claim 1 also requires:
[g] providing transparent access to said requested file
based on said associated set of lifecycle policies, regardless of
where said file is located, and independently of said application
requesting access to said file.
IPR2019-00603
Patent 7,392,234 B2

25
Ex. 1001, 14:25–28.
Petitioner asserts that the limitations of claim element 1[g] are
disclosed by Blickenstaff. See Pet. 28–30. Petitioner asserts that Blickenstaff
teaches transparent access because, among other things, Blickenstaff teaches
“that the system ‘create[s] a virtual storage capacity for each of the file
servers [] in a manner that is transparent to both the processor [] and the
user.’” Id. (quoting Ex. 1005, 5:49–53) (Petitioner’s emphasis and brackets).
Petitioner asserts that “the user and processor (computer running an
application) do not even know of the existence of the secondary storage
when requesting a file,” thus, teaching that transparent access is provided
“regardless of where said file is located” and “regardless of [i.e.
independently of] the requesting application.” Id. at 28–29 (citing Ex. 1005,
9:7–15, 12:52–54; Long Decl. ¶¶ 64–66).
Petitioner also asserts that Blickenstaff “discloses providing access
based on the associated policies because it discloses that access is provided
to migrated files.” Id. at 30 (citing Long Decl. ¶ 67). Petitioner argues, inter
alia, that because Blickenstaff “provides access to files through a storage
server agent that redirects requests for migrated files,” “providing access to
the file would be based on the migration policy/rule, which determined
which file to migrate and the secondary storage the requested file is stored
on.” Id. (citing Long Decl. ¶ 67).
Petitioner in a footnote also states “Crouse also discloses that its files
are provided in a manner that ‘is completely transparent to the user
program.’” Id. at 28 n. 2 (quoting Ex. 1011, code (57)); see also Long Decl.
¶ 65 (noting the teaching of Crouse). However, Petitioner does not otherwise
discuss Crouse with respect to this limitation. See generally Pet. 28–30;
IPR2019-00603
Patent 7,392,234 B2

26
Long Decl. ¶¶ 64, 66–67. Further, Petitioner does not provide any reasoning
why it would have been obvious to modify Blickenstaff in view of Crouse
for this limitation. See generally Pet. 13–17 (Section titled “Rationale for
Combining Blickenstaff and Crouse”), 28–30. Thus, we determine that
Petitioner relies solely on the teachings of Blickenstaff for claim element
1[g].9
Patent Owner argues that two aspects of this claim element are not
taught or suggested by the prior art. PO Resp. 16–23. We address each in
turn.
1. Transparent . . . Regardless of Where said File is
Located
Patent Owner initially addresses the claim construction of “transparent
access.” PO Resp. 16–18. We have previously addressed these remarks in
our claim construction section above where we determined that “transparent
access” includes that access is provided without the user having to know
where the file is physically located, but does not require that a user have a
misplaced belief about the location of the file. See supra § II.C.a.
Patent Owner argues that Blickenstaff does not teach providing
transparent access regardless of where the file is located. PO Resp. 18–20.
This is because independent of the location of the file when requested,
access is always provided on the file server where the file originated. In
other words, if the requested file is in backend storage, it is moved back to
the file server where the file originated and access is provided from that file
server, not from the backend storage. Id. at 18–20 (citing Ex. 1005, 16:61–

9 As Petitioner does not rely on Crouse to teach transparent access we do not
address Patent Owner’s arguments on this point. See PO Resp. 21.
IPR2019-00603
Patent 7,392,234 B2

27
17:7, Fig. 1; Melendez Decl. ¶ 43). Thus, Patent Owner argues “transparent
access is not provided regardless of where the file is located as access is
only provided when the file is located within the file server and volume
identified.” Id. at 20 (citing Melendez Decl. ¶ 43).
However, the movement of the file between storage locations is
transparent to the user (Pet. 29 (“the user and processor . . . do not even
know of the existence of the secondary storage when requesting a file”)) and
access is provided regardless of where the file is located. Petitioner argues
and we agree that moving the file back to the main file server is consistent
with the teachings of the ’234 Patent. Reply 18–19 (citing Ex. 1001, 6:37–
40); see also Ex. 1001, 6:39–40 (“If file is accessed more than 5 times
within 30 days, Transfer file back to online one (drawer 23).”). The fact that
the file is transparently moved back to the file server where the file
originated demonstrates that Blickenstaff provides transparent access
regardless of where the file is located, as recited in claim 1.
Based on Petitioner’s persuasive evidence and argument and in view
of the foregoing discussion, we find that Blickenstaff teaches “providing
transparent access,” as recited in claim 1.
2. Providing Transparent Access to the File Based on
the Lifecycle Policies
Patent Owner argues that Blickenstaff does not teach “providing
transparent access to said requested file based on said associated set of
lifecycle policies” as required by claim 1.10 PO Resp. 22–23. Similar to the

10 Patent Owner’s argument that Blickenstaff’s rules are not within the
definition of a lifecycle policy (PO Resp. 22–23) is addressed in our
discussion on associating a set of lifecycle policies with a file (supra
§ II.D.a.ii).
IPR2019-00603
Patent 7,392,234 B2

28
above argument, Patent Owner argues that because Blickenstaff teaches that
the file is moved back to the file server where the file originated to provide
access, the access is not “based on said associated set of lifecycle policies.”
Id. at 22. Thus, it is argued, “access is provided . . . regardless of any
associated set of lifecycle policies.” Id.
Petitioner replies that Blickenstaff’s transparent access is ‘“based on’
the lifecycle policies because it provides access to migrated files, which
were migrated according to Blickenstaff’s migration policies.” Reply 19
(citing Pet. 28–30). Petitioner continues “it is those policies that determine
where the files are located after migration, and Blickenstaff’s users access
them without regard to where they are physically located.” Id. Petitioner also
argues that “[t]his type of access is expressly contemplated by the claims,
which recite lifecycle policies related to, for example, ‘file storage locations
within a storage medium.’” Id. (quoting Ex. 1001, 14:10).
Patent Owner states that this is “outside the scope of the claims
because the file access of Blickenstaff is not being provided based on a set
of lifecycle policies, but rather is being provided based on the location that
the files reside irrespective of any alleged lifecycle policy that caused
migration of the files.” Sur-Reply 14. We disagree. As noted by Petitioner,
claim 1 specifically contemplates lifecycle policies that relate to “file storage
locations within a storage medium.” Ex. 1001, 14:10. The manner in which
Blickenstaff migrates the files before and after the file is requested is all
based on the migration rules (aka the lifecycle policies).
Patent Owner also argues that this is a new and improper argument.
Sur-Reply 15–16. We do not agree. Petitioner’s explanation during trial does
not rise to the level of new argument that is inappropriate in a reply brief
IPR2019-00603
Patent 7,392,234 B2

29
because Petitioner is maintaining its original position that Blickenstaff’s
transparent access is ‘“based on’ the lifecycle policies.”11 Reply 19 (citing
Pet. 28–30). Further, Petitioner is directly responding to Patent Owner’s
argument that Blickenstaff’s migration rules are “not within the scope of the
invention.” PO Resp. 23; see also 37 C.F.R. § 42.23(b).
Based on Petitioner’s persuasive evidence and argument, and in view
of the foregoing discussion, we find that Blickenstaff teaches “providing
transparent access” as recited in claim 1.
iv. Conclusion
In conclusion, we are persuaded by Petitioner’s contentions and the
underlying evidence cited in support regarding the limitations of claim 1
individually and as a whole. We determine that Petitioner establishes by a
preponderance of the evidence that the subject matter of claim 1 would have
been obvious based on the combined teachings of Blickenstaff and Crouse.
Pet. 13–30; Long Decl. ¶¶ 37–67.
b. Claims 2, 45, and 51
Petitioner asserts that the combination of Blickenstaff and Crouse
would have rendered obvious dependent claim 2 and independent claims 45
and 51. See, e.g., Pet. 31–34, 42–50, 52–57.
As noted by Patent Owner “[i]ndependent claims 45 and 51 recite
similar limitations to independent claim 1.” PO Resp. 10–11. At the same

11 As previously noted, we agree with Petitioner that Blickenstaff’s
migration rules are lifecycle policies. Supra § II.D.a.i. Further, Petitioner has
shown that Blickenstaff’s migration rules are related to “file storage
locations within a storage medium.” Pet. 24–25.

IPR2019-00603
Patent 7,392,234 B2

30
time, claims 45 and 51 include additional or slightly different limitations
from claim 1 as discussed below.
Petitioner’s analysis of claims 45 and 51 claims is largely similar to
the analysis of claim 1. Compare Pet. 42–50 and 52–57, with id. at 17–30.
Patent Owner argues the patentability of claims 1, 45, and 51 together in
some instances. See PO Resp. 16–23. Thus, where claims 1, 45, and 51 are
argued together, we are not persuaded by Patent Owner’s arguments for the
same reasons discussed above with respect to claim 1.
Patent Owner contests Petitioner’s positions on some but not all of the
limitations of claims 45 and 51 different from claim 1. Claim 2 depends
from claim 1 and includes limitations similar to claims 45 and 51. We first
address Patent Owner’s contentions, followed by a discussion of the
uncontested limitations.
i. A Set of Lifecycle Policies Associated with Virtual
Storage / Storage Media
As noted above, Patent Owner contests whether the cited prior art
teaches all of the limitations of claims 2, 45, and 51. PO Resp. 13–16.
Claim 45 includes: “providing a virtual storage medium having a
plurality of storage media associated therewith, . . . and having associated
therewith a set of lifecycle policies.” Ex. 1001, 18:28–33. Claim 2, which
depends from claim 1, and independent claim 51 include a similar limitation.
See id. at 15:3–7, 19:14–18. As discussed above, claim 1 includes the
similar, though not identical limitation of “associating a set of lifecycle
policies with a file in a file system.” See supra § II.D.a.ii.
Petitioner argues that Blickenstaff’s Figure 3, reproduced below,
teaches the virtual storage medium with a plurality of storage media.
Pet. 42–43.
IPR2019-00603
Patent 7,392,234 B2

31

Blickenstaff’s Figure 3 conceptually shows an “architecture of the
hierarchical memory of the data storage management system.” Ex. 1005,
3:53–55. Petitioner states that the secondary storage of the virtual storage is
divided into many layers 311–313, which can represent different media
types. Pet. 43.
As previously noted, Petitioner argues that “Blickenstaff discloses ‘a
plurality of concurrently operational space management rules’” and that
“[b]ased on these rules, ‘data files can be selected for migration as a function
of the time of last access, size, [or] quantity of data storage space available
on the network volume.’” Id. at 19 (quoting Ex. 1005, 9:67–10:4)
(Petitioner’s emphasis). As also previously discussed, Petitioner asserts that
it would have been obvious “to implement Blickenstaff’s hierarchical
storage management system with individual attributes for each file to allow
finer control of how individual files will be archived and/or migrated within
IPR2019-00603
Patent 7,392,234 B2

32
the storage system” as taught by Crouse. Id. at 14–15 (citing Long Decl. ¶
40).
Petitioner provides various reasons that a person of ordinary skill in
the art would have “add[ed] Crouse’s archival attributes . . . in addition to or
as a substitute for Blickenstaff’s file attributes,” such as “to enable
Blickenstaff’s system to control when files are migrated on a more granular,
file-by-file basis.” Id. at 20 (citing Long Decl. ¶ 48); see also id. at 13–17,
19–20 (discussing rationale to combine). Petitioner further identifies
particular attributes taught by Crouse, such as “Life Span” and “Media
Residency,” and asserts that a POSA “would have applied Crouse’s
attributes in Blickenstaff to enable Blickenstaff’s system to control when
individual files are migrated, on a file-by-file basis.” Id. at 15–16 (citing
Ex. 1011, 21:50–22:6, 5:1–19; Long Decl. ¶ 42).
Petitioner provides a number of reasons why the lifecycle policies are
associated with the virtual storage medium. Petitioner argues that a POSA
would have understood the lifecycle policies under the cited combination to
be associated with the virtual storage medium “because the files are stored
on the storage media.” Id. at 44–45 (citing Long Decl. ¶ 88).
Petitioner also argues that Crouse’s “Media Residency” attributes
would be understood to be associated with the virtual storage medium
because the “Media Residency” “[s]pecifies which media types and formats
are acceptable for storing or archiving the file.” Id. at 33 (quoting Ex. 1011,
15:38–44); see also Reply 10. Petitioner asserts that “[a] skilled artisan
would have understood that a specific media residency attribute that
identifies a specific media on which a particular file may be stored would be
associated with that media.” Pet. 33 (citing Long Decl. ¶ 70).
IPR2019-00603
Patent 7,392,234 B2

33
Patent Owner argues that Petitioners’ position on this claim limitation
fails because it “make[s] no distinction between [lifecycle] policies for a file
and for a storage medium.” Sur-Reply 3; see also PO Resp. 14. Patent
Owner further argues that
[t]his contention is contrary to a major point of novelty of the
[’]234 Patent which clearly discloses associating lifecycle
policies with a storage medium—where files within a storage
medium would be governed not just by policies associated with
the files but also by the policies of the storage medium in which
they reside.
Id. (citing Ex. 1001, 4:61–5:20, Fig. 2, Fig. 3A; Melendez Decl. ¶ 58).
However, we do not agree that Petitioner makes no distinction
between lifecycle policies associated with a file and lifecycle policies
associated with a storage medium. As previously noted, Petitioner argues
(Pet. 20) and Patent Owner admits, that “Crouse is explicit that [its]
attributes are associated with the files.” PO Resp. 15. Further, Petitioner
highlights Crouse’s “Media Residency” attributes in particular as being
associated with the storage medium because the policy “[s]pecifies which
media types and formats are acceptable for storing or archiving the file.” Pet.
33. Petitioner’s position is supported by Dr. Long’s testimony that
[a] skilled artisan would have understood that a specific media
residency attribute that identifies a specific media on which a
particular file may be stored or archived would be associated
with that specific media. This is so because the attribute
identifies the medium specifically and permits files to be
stored/archived on that medium.
Long Decl. ¶ 70.
IPR2019-00603
Patent 7,392,234 B2

34
Thus, Petitioner is not merely relying on the fact that the “the files are
stored on the storage media” in order to be associated with the storage
media. PO Resp. 13 (quoting Pet. 44–45).
Patent Owner argues that Crouse’s “attributes are associated with the
files rather than the storage media—even when the attributes associated with
a particular file may relate to a media type.” Id. at 15. However, Patent
Owner does not offer a construction of the term “associates” that requires
more than some relationship to the media. Though Patent Owner discusses
certain examples of the different lifecycle policies in the ’234 Patent, these
specific policies are not claimed. Id. at 13–15. Further, these policies do not
clarify what additional relationship a policy needs to have in order to be
associated with the storage medium. For example, Patent Owner discusses a
file “stored in an optical DVD-ROM storage medium associated with a life
cycle policy excluding deletion.” Id. at 14. Patent Owner argues that a life
cycle policy associated with the file to delete the file at a certain time would
not control over the life cycle policy associated with the storage medium. Id.
Though we agree that a file would not be deleted from the DVD-ROM, that
does not mean that a policy which “[s]pecifies which media types and
formats are acceptable for storing or archiving the file” is not also associated
with the storage medium. See Pet. 33. Rather we determine that it is for the
reasons expressed above.
Based on Petitioner’s persuasive evidence and argument and in view
of the foregoing discussion, we find that the combination of Blickenstaff and
Crouse teaches “providing a virtual storage medium having a plurality of
storage media associated therewith, . . . and having associated therewith a set
IPR2019-00603
Patent 7,392,234 B2

35
of lifecycle policies.” as required by claim 45, and the similar limitations of
claims 2 and 51.
ii. Uncontested Limitations
Patent Owner does not contest that the cited prior art teaches certain
limitations of claims 2, 45, and 51. For example, Patent Owner does not
contest that the cited prior art teaches or suggests, the following limitation of
claim 45:
at intervals, determining from the associated lifecycle policies
actions dictated by said lifecycle policies for performance on said
file; performing said dictated actions on said file.
Ex. 1001, 18:42–45. Claim 51 includes a similar uncontested limitation. See
id. at 19:30–32.
Among other things, Petitioner argues that “Blickenstaff discloses this
feature because it discloses that the migration process may occur ‘on a
demand basis and/or on a periodically scheduled basis.’” Pet. 47 (quoting
Ex. 1005, code (57)) (Petitioner’s emphasis); see also id. at 55 (discussing
the similar limitation of claim 51). Petitioner further argues that a POSA
“would have understood that periodically auditing the files to determine
whether to migrate low priority files (e.g., based on a lifespan attribute
and/or media residency attribute, as modified by Crouse) would determine
an action dictated by a lifecycle policy (migration of files) at intervals
(periodically)” as required by claims 45 and 51. Id. at 47 (citing Long Decl.
¶¶ 93, 96.)
Based on the foregoing, we are persuaded that Petitioner establishes
that Blickenstaff teaches or suggests the determining at intervals limitation
of claim 45 and the related limitation of claim 51 by a preponderance of the
evidence. See id. at 47–49, 55–57; Long Decl. ¶¶ 93–97, 114–118. Further,
IPR2019-00603
Patent 7,392,234 B2

36
we have reviewed Petitioner’s arguments and supporting evidence regarding
the undisputed limitations of claims 2, 45, and 51 and determine that
Petitioner has shown by a preponderance of the evidence that Blickenstaff or
the combination of Blickenstaff and Crouse teaches each of these
limitations.
iii. Conclusion
In conclusion, we are persuaded by Petitioner’s contentions and the
underlying evidence cited in support regarding the limitations of claims 2,
45, and 51. We determine that Petitioner establishes by a preponderance of
the evidence that the subject matter of these claims would have been obvious
based on the combined teachings of Blickenstaff and Crouse. Pet. 31–34,
42–50, 52–57; Long Decl. ¶¶ 68–72, 83–99, 105–120.
c. Dependent Claims 46–48 and 52–54
Petitioner contends that the combination of Blickenstaff and Crouse
would have rendered obvious dependent claims 46–48 and 52–54. Pet. 50–
51, 57–58.
Independent claim 45, from which claims 46–48 depend, requires,
inter alia:
storing said file on at least one of said plurality of storage media
accessible by a computer within said virtual storage medium.
Ex. 1001, 18:39–42 (emphasis added). Independent claim 51, from which
claims 52–54 depend, includes a similar limitation. See id. at 20:27–29
(“storing said file on at least one of said plurality of storage media accessible
by a computer within said virtual storage medium” (emphasis added)).
Claim 46 states:
A method of managing a file lifecycle according to claim 45
wherein a first storage medium is associated with active files and
IPR2019-00603
Patent 7,392,234 B2

37
a last storage medium is associated with archived files and
wherein the file is transferred from the first storage medium to
the last storage medium in successive stages.
Id. at 18:53–58.
Claim 52 is substantially similar to claim 46, except for its
dependency. Claim 47 depends from claim 46, and claim 48 depends from
claim 47. Claim 53 and 54 are substantially similar to claims 47 and 48
respectively, except for their dependency.
Petitioner argues that Blickenstaff’s Figure 3, reproduced below,
teaches the virtual storage medium with a plurality of storage media as
required by claim 45 (see Pet. 42–43) and similarly required by claim 51
(see Pet. 54–55) as well as the first storage medium associated with active
files and a last storage medium associated with archived files as required by
claims 46 and claim 52 (see Pet. 50 (citing id. at 35–37)).

IPR2019-00603
Patent 7,392,234 B2

38
Blickenstaff’s Figure 3 conceptually shows an “architecture of the
hierarchical memory of the data storage management system.” Ex. 1005,
3:53–55. Figure 3 illustrates a “virtual storage” comprising “a plurality of
layers 311–313” of secondary storage and an “additional layer 314 of the
hierarchical data storage that can be implemented by the use of a “shelf
layer.” See Ex. 1005, 6:38–57. Figure 3 also shows “retirement layer 315.”
Id. at 6:12–13.
Petitioner states that the secondary storage of Blickenstaff’s virtual
storage is divided into many layers 311–313, which can represent different
media types. Pet. 43. Petitioner argues that Blickenstaff teaches moving files
among these layers 311–313 based on the activity of the files as required by
claims 46 and 52. Id. at 35; see also id. at 37, 57. Petitioner contends
Blickenstaff’s retirement layer 315 is the “last storage medium (retirement
layer) that is associated with archived files (files that have not been utilized
for an extended period of time), as claimed.” Id. at 36 (citing Long Decl. ¶¶
74–75).
Patent Owner argues Petitioner has not shown the cited art teaches
“wherein the file is transferred from the first storage medium to the last
storage medium in successive stages” as recited in claims 46 and 52. See PO
Resp. 23–24. Specifically, Patent Owner contends claims 46 and 52 depend
from independent claims that recite a “virtual storage medium” and that
Petitioner has not shown that the claimed Blickenstaff’s retirement layer 315
IPR2019-00603
Patent 7,392,234 B2

39
(the purported “last storage medium”) is part of a virtual storage medium as
required by the independent claims.12 See PO Resp. 23–24.
Patent Owner contends Figure 3 of Blickenstaff shows that retirement
layer 315 is not part of the virtual storage. See PO Resp. 24. Patent Owner
further quotes Blickenstaff as teaching that data on the retirement layer is
“no longer part of the virtual data storage system.” Id. at 25 (quoting
Ex. 1005, 8:6–18) (emphasis omitted). Thus, according to Patent Owner,
Petitioner has not shown that the prior art teaches all of the features of
claims 46 and 52 because Petitioner has not shown that Blickenstaff teaches
a last storage medium, associated with archived files, that is part of the
virtual storage. Id.
In its Reply, Petitioner does not dispute that claims 46 and 52 require
that the last storage medium associated with the archived files must be part
of the virtual storage. See Reply 21–22. Rather, Petitioner responds by
changing its position that retirement layer 315 is the last storage layer within
the virtual storage to stating that shelf layer 314 is the last storage layer
within the virtual storage and that shelf layer 314 is associated with archived
files. Compare Pet. 36 with Reply 21–22 (citing Ex. 1005, 6:61–7:3, 8:2–4;
Pet. 35–37, 50, 57). Petitioner cites the Petition and Dr. Long’s Declaration
for support that “Blickenstaff discloses successive migration through the
layers of its hierarchy based on activity, including to layer 314.” Reply 21
(citing Pet. 50, 57; Long Decl. ¶ 76). Neither the Petition nor Dr. Long’s
declaration, however, discusses shelf layer 314, let alone asserts that shelf

12 Petitioner’s contentions for claims 46 and 52 refer to the contentions for
claim 3, which, according to Petitioner, “addresses identical language,” and
provide no additional explanation. Pet. 50, 57.
IPR2019-00603
Patent 7,392,234 B2

40
layer 314 is associated with archived files. See Pet. 50, 57; Long Decl. ¶ 76.
In fact, a word search of the Petition and Dr. Long’s Declaration reveal that
shelf layer 314 is not discussed in either document, though it is shown in
Blickenstaff’s Figure 3, which is reproduced in the documents. The Petition
does include some general statements about moving files between layers, but
when discussing Blickenstaff’s embodiment in Figure 3 there is no mention
of shelf layer 314, even though layers 311, 312, 313, and 315 are explicitly
mentioned. See Pet. 35–36; Long Decl. ¶¶ 74–75. We determine that
Petitioner’s argument that shelf layer 314 is the claimed last storage medium
that is associated with archived files is an improper argument because a
“Petitioner may not submit new . . . argument in reply that it could have
presented earlier, e.g. to make out a prima facie case of unpatentability.”
Patent Trial and Appeal Board Consolidated Trial Practice Guide November
2019, 73.
In its Reply, Petitioner also belatedly attempts to explain how
Blickenstaff’s retirement layer, although not considered to be part of
Blickenstaff’s virtual storage, is nonetheless part of “virtual storage” as that
term is used in the ’234 patent. Reply 22. This argument also is not
grounded in Petitioner’s original assertions and is improper in a reply.
Thus, for the reasons expressed above, Petitioner has not sufficiently
shown that the combination of Blickenstaff and Crouse teaches all of the
limitations of claims 46 and 52, and therefore has not shown that claims 46
and 52 or the claims that depend therefrom (i.e., claims 47, 48, 53, 54),
would have been obvious over the combination of Blickenstaff and Crouse.
IPR2019-00603
Patent 7,392,234 B2

41
d. Dependent Claims 3–7, 49, 50, 55–57, and 59
Petitioner contends that the combination of Blickenstaff and Crouse
would have rendered obvious dependent claims 3–7, 49, 50, 55–57, and 59.
Pet. 13–17, 35–41, 51, 58–61. Patent Owner does not separately argue the
patentability of these dependent claims. See generally PO Resp.
We have reviewed Petitioner’s arguments and supporting evidence
regarding these claims and determine that Petitioner has shown by a
preponderance of the evidence that the combination of Blickenstaff and
Crouse suggests each limitation of claims 3–7, 49, 50, 55–57, and 59. See
Pet. 35–41, 51, 58–61; Long Decl. ¶¶ 73–82, 103–104, 124–128. We
additionally find that Petitioner has demonstrated sufficiently that one of
ordinary skill in the art would have had reason with rational underpinning to
combine the teachings of the references in the manner proposed by
Petitioner with a reasonable expectation of success. See Pet. 13–17; Long
Dec. ¶¶ 37–44. Therefore, Petitioner establishes by a preponderance of the
evidence that the subject matter of claims 3–7, 49, 50, 55–57, and 59 would
have been obvious based on the combined teachings of Blickenstaff and
Crouse.

IPR2019-00603
Patent 7,392,234 B2

42
III. CONCLUSION13
For the reasons discussed above, we determine Petitioner has proven,
by a preponderance of the evidence, that some of the challenged claims are
unpatentable, as summarized in the following table:
Claims 35 U.S.C. § References Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–7, 45–57,
59
103(a) Blickenstaff,
Crouse
1–7, 45, 49–
51, 55–57, 59
46–48, 52–54

IV. ORDER
For the reasons given, it is
ORDERED that claims 1–7, 45, 49–51, 55–57, and 59 of the ’234
patent have been shown to be unpatentable; and
FURTHERED ORDERED that, because this is a Final Written
Decision, parties to the proceeding seeking judicial review of the Decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
IPR2019-00603
Patent 7,392,234 B2

43
PETITIONER:

Erika Arner
Joshua Goldberg
Jason Stach
Cory Bell
Guang-Yu Zhu
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
Erikia.arner@finnegan.com
Joshua.goldberg@finnegan.com
Jason.stach@finnegan.com
Cory.bell@finnegan.com
Guang-yu.zhu@finnegan.com

Andrew Devkar
MORGAN, LEWIS & BOCKIUS LLP
Andrew.devkar@morganlewis.com

Diek Van Nort
MORRISON & FOERSTER, LLP
dvannort@mofo.com

PATENT OWNER:

Gregory S. Donahue
Andrew DiNovo
DINOVO PRICE LLP
gdonahue@dpelaw.com
adinovo@dpelaw.com