KOM Software, Inc.Download PDFPatent Trials and Appeals BoardJul 27, 2020IPR2019-00592 (P.T.A.B. Jul. 27, 2020) Copy Citation Trials@uspto.gov Paper 35 571-272-7822 Date: July 27, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NETAPP, INC., Petitioner, v. KOM SOFTWARE, INC., Patent Owner. IPR2019-00592 Patent 6,438,642 B1 Before KIMBERLY McGRAW, DANIEL J. GALLIGAN, and BRENT M. DOUGAL, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a) IPR2019-00592 Patent 6,438,642 B1 2 I. INTRODUCTION In this inter partes review, NetApp, Inc. (“Petitioner”)1 challenges the patentability of claims 1–7, 10, 12–17, and 20 of U.S. Patent No. 6,438,642 B1 (“the ’642 patent,” Ex. 1001), which is assigned to KOM Software, Inc. (“Patent Owner”). We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and arguments raised during the trial in this inter partes review. For the reasons discussed below, we determine that Petitioner has proven by a preponderance of the evidence that claims 1–7, 10, 12–17, and 20 of the ’642 patent are unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). A. Procedural History On January 24, 2019, Petitioner requested inter partes review of claims 1–7, 10, 12–17, and 20 of the ’642 patent on the following grounds: Claims Challenged 35 U.S.C. § Reference(s)/Basis 1–6, 12–14, 16 103(a)2 Dibble3 1 Hewlett Packard Enterprise Company (“HPE”) was a petitioner on the original Petition, but this inter partes review has since been terminated as to HPE. See Paper 26. 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103, and 112 that became effective after the filing of the application for the ’642 patent. Therefore, we apply the pre-AIA versions of these sections. 3 Peter C. Dibble, A Parallel Interleaved File System (March 1990) (Ph.D. thesis, University of Rochester) (Ex. 1005). IPR2019-00592 Patent 6,438,642 B1 3 Claims Challenged 35 U.S.C. § Reference(s)/Basis 7, 10, 15, 17, 20 103(a) Dibble, Cannon4 Paper 3 (“Pet.”), 11. Patent Owner filed a Preliminary Response. Paper 9. We instituted trial on all grounds of unpatentability. Paper 10 (“Dec. on Inst.”), 22. During the trial, Patent Owner filed a Response (Paper 13, “PO Resp.”), Petitioner filed a Reply (Paper 15, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 19, “PO Sur-reply”). An oral hearing was held on May 6, 2020, a transcript of which appears in the record. Paper 34 (“Tr.”). B. Related Matters As required by 37 C.F.R. § 42.8(b)(2), the parties identify various related matters. Pet. 68–69; Paper 5, 2–3; Paper 8, 2–3; Paper 29, 1–2. Petitioner also challenges claims of the ’642 patent in IPR2019-00591, in which a final written decision is issuing concurrently with this Decision. C. Real Parties in Interest The parties identify themselves as the real parties in interest. Pet. 68; Paper 5, 2; Paper 8, 2; Paper 29, 1. D. The ’642 Patent and Illustrative Claim The ’642 patent relates to computer storage and characterizes the art as having certain drawbacks. Ex. 1001, 1:14–65. For example, the ’642 patent explains that computers have limited storage in their hard drives and that increasing storage may require adding a hard drive, which can be costly and inconvenient. Ex. 1001, 1:14–45. To address this and other 4 US 5,983,239, issued Nov. 9, 1999 (Ex. 1008). IPR2019-00592 Patent 6,438,642 B1 4 drawbacks of the art, the ’642 patent discloses providing a virtual storage medium that is made up of physical storage media and that can be upgraded without affecting users. Ex. 1001, 1:66–2:1. Figures 2 and 3 of the ’642 patent are reproduced below. Figure 2, reproduced above on the left, depicts a virtual storage device having an index data area and having a data storage area made up of three hard disk drives, denoted 11a, 11b, and 11c. Ex. 1001, 3:26–40. The index data area stores information used to locate data stored in the virtual storage medium. Ex. 1001, 3:41–54. Figure 3, reproduced above on the right, shows “the virtual storage device of FIG. 2 in a network configuration.” Ex. 1001, 4:7–9. Figure 3 depicts a network of three computers, 10a, 10b, and 10c, having disk drives 11a, 11b, and 11c that are used to form a single virtual storage medium. Ex. 1001, 3:57–62. The ’642 patent explains that each of the disk drives has an area for local file storage for the user of that computer and another area that forms part of the virtual storage medium. Ex. 1001, 3:62–64. IPR2019-00592 Patent 6,438,642 B1 5 Of the challenged claims, claims 1, 12, and 16 are independent. Claim 16 is illustrative and is reproduced below. 16. A method of storing data in a virtual file-based non- volatile storage comprising the steps of: providing a virtual file-based non-volatile storage medium having an automated file management file system having in turn, and interfacing with, a plurality of file system partitions of a plurality of corresponding physical non-volatile storage media associated therewith, locations within each physical non-volatile storage medium from the plurality of corresponding physical non-volatile storage media corresponding to locations within said virtual file-based non-volatile storage medium; providing data for storage in said virtual file-based non- volatile storage medium; determining free space at locations within the virtual file- based non-volatile storage medium, the free space sufficient for storing the provided data, the locations corresponding to locations within the plurality of corresponding physical non- volatile storage media having available storage space therein; storing the provided data at the locations corresponding to the free space; and storing index information for the stored data, wherein the physical non-volatile storage media form parts of different computer systems in communication with each other via a communication network. II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill at the time of the invention of the ’642 patent (a “POSITA”) 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. 11–12 (citing Ex. 1002 ¶ 35). Patent Owner provides a IPR2019-00592 Patent 6,438,642 B1 6 similar definition, stating “a POSITA 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. 7 (citing Ex. 2001 ¶ 39). Thus, the parties dispute whether a POSITA must have a degree in computer science/engineering or whether a POSITA could instead have a degree in electrical engineering as well as whether the POSITA’s experience must be in data storage management or could encompass experience in the field of computing systems development. See Ex. 2001 ¶ 39 (Dr. Melendez testifying that a POSITA may also have a degree in electronics engineering or applied mathematics). Although the parties articulate different levels of skill for a POSITA, 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 ’642 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. IPR2019-00592 Patent 6,438,642 B1 7 B. Claim Interpretation The Petition was accorded a filing date of January 24, 2019. Paper 4, 1. In an inter partes review for a petition filed on or after November 13, 2018, 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) (2018); see Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). In applying this claim construction standard, we are guided by the principle that the words of a claim “are generally given their ordinary and customary meaning,” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citation omitted). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy presumption” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). 1. Virtual storage medium Independent claims 1 and 16 recite a “virtual file-based non-volatile storage medium,” and independent claim 12 recites a “virtual file-based non- volatile storage device.” Patent Owner argues that the claimed “virtual” IPR2019-00592 Patent 6,438,642 B1 8 storage device or medium “may not be understood as consisting of a single computer having more than one storage device (volatile and/or non- volatile).” PO Resp. 8–9 (citing Ex. 2001 ¶ 32). In other words, according to Patent Owner, the ’642 patent “requires the virtual storage medium/device to comprise more than one computer each having at least one non-volatile storage medium.” PO Resp. 9–10 (citing Ex. 2001 ¶ 28). Petitioner disagrees with this interpretation (see Pet. Reply 2–6), but Petitioner’s contentions as to several of the claims that require multiple computers, such as claims 6, 12, and 16, address this interpretation in any event. See Pet. 46– 48 (address claim 6); see also PO Resp. 10 (“Claim 6 further clarifies that the first and second non-volatile storage medium of the claims are not of the same computer system.”). Because, as explained below, we are persuaded that the prior art teaches or suggests a virtual storage having multiple computers, each having at least one non-volatile storage medium, we need not resolve this claim construction dispute between the parties. Patent Owner also “proposes that a ‘virtual file-based non-volatile storage medium’ be defined as ‘a virtual non-volatile storage medium comprising a globally accessible file data structure index to files stored within the medium’” and that “a ‘file-based automated file management file system’ be construed as an ‘automated file management file system comprising a globally accessible file data structure index of files stored within the medium.’” PO Resp. 8. Patent Owner also proposes these constructions in IPR2019-00591. See PO Resp. 8 (referring to arguments in IPR2019-00591). In its Sur-reply, Patent Owner states that it is not relying on arguments from IPR2019-00591 or incorporating those arguments by reference into this proceeding but, rather, is including these constructions “to IPR2019-00592 Patent 6,438,642 B1 9 clarify that Patent Owner’s construction here is in addition to, and not in lieu of, its construction in” IPR2019-00591. PO Sur-reply 1 n.1. None of the disputes at issue in the present proceeding relates to this proposed construction, and the proposed construction does not impact our unpatentability analysis. Thus, we need not address this proposed construction in this proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating only claims in controversy need to be construed and only to the extent necessary to resolve the controversy). No further constructions of the “virtual” terms are necessary. 2. Means-plus-function limitations Petitioner proposes constructions for four phrases it contends are means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6 as follows: Limitation Petitioner’s Proposed Function and Structure Claim 12: means for storing data at locations within said virtual file- based non-volatile storage device Function: storing data at locations within said virtual file-based non-volatile storage device Structure: a data storage area of one or more hard disk drives or portions thereof. Pet. 13 (citing Ex. 1001, 3:26–40, 3:57–64, 4:7– 20, Figs. 2–5). Claim 12: means for storing index data Function: storing index data Structure: an index area of one or more hard disk drives or portions thereof. Pet. 14–15 (citing Ex. 1001, 3:26–42, 3:57–64, 4:7– 23, 4:34–37, Figs. 2–5). IPR2019-00592 Patent 6,438,642 B1 10 Limitation Petitioner’s Proposed Function and Structure Claims 13, 14: means for updating index data Function: updating index data Structure: algorithm for (1) receiving location data for updating index data for the stored data, and (2) writing or updating such index data to reflect the received location data. Pet. 15–16 (citing Ex. 1001, 3:15–17, 3:19–21, 3:57–58, 4:7–9, 4:18–23, 4:26–29, Figs. 3, 4). Claim 15: means for archiving data stored within said virtual file-based non-volatile storage device Function: archiving data stored within said virtual file-based non- volatile storage device Structure: optical media or hard disk drives and an algorithm to move files to the optical media or hard disk drives that has not been accessed for over a predetermined amount of time. Pet. 16–17 (citing Ex. 1001, 4:64–5:29, 6:9–34, 7:56– 67, Fig. 7). Patent Owner argues that the limitations reciting “means for storing data at locations within said virtual file-based non-volatile storage device” and “means for storing index data” in claim 12 are not subject to 35 U.S.C. § 112, ¶ 6 because they “can be understood according to [their] plain and ordinary meaning.” PO Resp. 13 (citing Ex. 2001 ¶¶ 33–34; TecSec, Inc. v. Int’l Business Machines Corp., 731 F.3d 1336, 1348 (Fed. Cir. 2013)); see Tr. 46:13–47:5 (Patent Owner’s counsel confirming Patent Owner’s position that claim 12 does not recite means-plus-function limitations). Patent Owner argues that, if 35 U.S.C. § 112, ¶ 6 applies to these recitations of claim 12, IPR2019-00592 Patent 6,438,642 B1 11 then the corresponding structure disclosed in the ’642 patent involves “a virtual non-volatile storage medium comprised of the non-volatile storage of two or more computer systems,” consistent with Patent Owner’s argument as to the “virtual” limitations discussed above in § II.B.1. PO Resp. 13. Patent Owner does not take a position on the means-plus-function recitations of claims 13–15. See PO Resp. 13–14; see also Tr. 47:14–48:1. Each of the limitations listed above recites “means” and further recites a function, thus creating a presumption that 35 U.S.C. § 112, ¶ 6 applies. See 35 U.S.C. § 112, ¶ 6 (“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part) (quoting Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998)) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We agree with Petitioner that these limitations are means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6. We are not persuaded that the decision in TecSec compels a different conclusion. In that case, the Federal Circuit determined that “a system memory means for storing data” was not a means-plus-function limitation subject to 35 U.S.C. § 112, ¶ 6 because that limitation itself recited structure. TecSec, 731 F.3d at 1347 (“To those skilled in the art, a system memory is a specific structure that stores data.”). Here, claim 12 recites more specific functions: “storing data at locations within said virtual file-based non- IPR2019-00592 Patent 6,438,642 B1 12 volatile storage device” and “storing index data.” Patent Owner’s declarant, Dr. Melendez, testifies that a person of ordinary skill in the art “would understand the plain and ordinary meaning of these terms to be storing index data in a virtual non-volatile storage medium comprised of the nonvolatile storage of two or more computer systems that is not limited to hard drives.” Ex. 2001 ¶ 33. This testimony, however, recites a function and then additional structure (two or more computer systems) not recited in the “means for storing” limitation of claim 12. It does not provide a basis for concluding that a person of ordinary skill in the art would have understood claim 12 itself to recite structure sufficient to perform the recited function. “The sufficient structure inquiry focuses on whether the claim recites sufficient structure to perform ‘the functions in question.’” TecSec, 731 F.3d at 1348 (quoting TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1260 (Fed. Cir. 2008)) (emphasis added). Dr. Melendez further testifies that “[t]he ’642 patent teaches a [person of ordinary skill in the art] that virtual storage devices for storing index data are comprised of the physical storage of multiple computers. Thus, such means and the storing of such index information would exclude a single computer using multiple drives.” Ex. 2001 ¶ 33. This testimony, which identifies additional alleged requirements from the Specification of the ’642 patent, is essentially a recognition that claim 12 itself does not recite sufficient structure to perform the recited functions. Because we determine these are means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6, we turn to the parties’ dispute as to whether the limitations of claim 12 reciting “means for storing data at locations within said virtual file-based non-volatile storage device” and “means for IPR2019-00592 Patent 6,438,642 B1 13 storing index data” require structure virtual storage having multiple computers each having at least one non-volatile storage medium, as Patent Owner argues, or may be met by a virtual storage having only a single hard drive, as Petitioner argues. PO Resp. 13; Pet. 13–15. As noted above in § II.B.1, several claims require multiple computers, and for reasons explained below, we are persuaded that the prior art teaches or suggests a virtual storage having multiple computers each having at least one non- volatile storage medium. Thus, to resolve the obviousness inquiry for the means-plus-function limitations of claim 12, we apply Petitioner’s constructions as narrowed by Patent Owner’s proposal to require a virtual storage having multiple computers each having at least one non-volatile storage medium. For the remaining means-plus-function limitations identified above, we agree with and adopt Petitioner’s constructions, which are undisputed. C. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any secondary IPR2019-00592 Patent 6,438,642 B1 14 considerations, if in evidence.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). D. Obviousness over Dibble (Claims 1–6, 12–14, and 16) Petitioner asserts claims 1–6, 12–14, and 16 of the ’642 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. Pet. 11, 17–56. 1. Dibble Dibble is a Ph.D. thesis titled “A Parallel Interleaved File System” bearing a copyright year of 1990. Ex. 1005. Petitioner argues Dibble was available to the public as a printed publication more than one year before the May 18, 1999, filing date of the ’642 patent and, therefore, qualifies as prior art under 35 U.S.C. § 102(b). Pet. 17–19 (citing Ex. 1011 ¶¶ 1, 3–6; Ex. 1012 ¶¶ 1, 6; Ex. 1013, 1–2; Ex. 1014; Ex. 1015; Ex. 1016, 2). Patent Owner does not challenge the prior art status of Dibble. See generally PO Resp. We are persuaded Petitioner has shown Dibble qualifies as prior art under 35 U.S.C. § 102(b). See Exs. 1011–1016. Dibble “describes the design, implementation, and evaluation of a parallel interleaved file system (PIFS).” Ex. 1005, 1.6 Dibble’s Figure 2.1 is reproduced below. 5 Patent Owner does not present any objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. 6 Consistent with the parties’ arguments in the Petition and the Patent Owner Response, we refer to the page numbers in Dibble rather than the exhibit page numbers assigned by Petitioner. IPR2019-00592 Patent 6,438,642 B1 15 Figure 2.1 of Dibble, reproduced above, shows the components of a PIFS, including a Bridge server, local file systems (LFSs), and tools. Ex. 1005, 19. Dibble explains that “[a] PIFS has two layers and an unlimited number of components. The top layer contains a parallel interleaved file server (PIF Server) and a set of tools. The bottom layer is an array of Local File Systems (LFS’s).” Ex. 1005, 18. Dibble discloses using the Elementary File System (EFS) to implement the LFSs. Ex. 1005, 29. Dibble discloses using an experimental file system named Bridge to implement the prototype PIFS. Ex. 1005, 28. Dibble explains that “[i]n our implementation of Bridge the Bridge Server is a single centralized process.” Ex. 1005, 33. Dibble further explains that “[t]he PIF Server defines and maintains the structure of parallel interleaved files” but relies on LFSs, which “are complete, self-sufficient file systems,” “to implement every feature of the file system that doesn’t in some way involve parallelism.” Ex. 1005, 18, 20. Thus, a local file system “must implement all the operations and concepts IPR2019-00592 Patent 6,438,642 B1 16 expected from a general-purpose file system: read, write, file creation, current position, end of file, and (optionally) file deletion.” Ex. 1005, 20. The details of Dibble’s parallel interleaved file system (PIFS) will be discussed more fully below in our analysis of the claimed subject matter. 2. Independent Claim 16 a) Providing virtual non-volatile storage medium Independent claim 16 recites “[a] method of storing data in a virtual file-based non-volatile storage comprising” five steps recited in the claim. The first step of claim 16 recites the following: providing a virtual file-based non-volatile storage medium having an automated file management file system having in turn, and interfacing with, a plurality of file system partitions of a plurality of corresponding physical non-volatile storage media associated therewith, locations within each physical non-volatile storage medium from the plurality of corresponding physical non-volatile storage media corresponding to locations within said virtual file-based non-volatile storage medium. Claim 16 further recites “wherein the physical non-volatile storage media form parts of different computer systems in communication with each other via a communication network.” Thus, claim 16 requires multiple computers as part of the virtual storage, which is how Patent Owner argues the term “virtual storage” should be understood even absent such a recitation. See PO Resp. 8–12. Petitioner asserts Dibble teaches this subject matter. Pet. 24–32, 46– 48, 54–56. Patent Owner argues that Dibble does not teach (1) “virtual” storage (PO Resp. 16–19), (2) “the physical non-volatile storage media form[ing] parts of different computer systems in communication with each other via a communication network” (PO Resp. 24–27), and (3) an “automated file management file system” (PO Resp. 20–23). We address IPR2019-00592 Patent 6,438,642 B1 17 arguments 1 and 2 together in the next section and argument 3 in § II.D.2.a.ii below. i. Virtual storage and different computer systems Petitioner contends Dibble discloses a file system that makes a collection of physical devices appear as a single storage device and that makes data stored via the file system “appear to the application and/or end user as if stored in a single (virtual) location,” thereby teaching a virtual storage medium. Pet. 26 (citing Ex. 1005, 8, 17; Ex. 1002 ¶¶ 66–67). Petitioner also argues that Dibble’s local file systems (LFSs) teach “different computer systems in communication with each other via a communication network.” Pet. 46–48 (citing Ex. 1005, 5, 36–37; Ex. 1002 ¶¶ 114–118; Ex. 1006, 1:50–56, 5:48–6:11). Patent Owner argues that “Dibble discloses only a single super- computer system, consisting of a single multiprocessor parallel computer with a parallel interleaved file system (PIFS) having several attached hard disk drives with each hard disk drive having a local file system (LFS).” PO Resp. 16 (citing Ex. 1005, iv, 2, 7–8; Ex. 2001 ¶ 45). Patent Owner argues, therefore, that Dibble does not teach the claimed subject matter because “a ‘virtual’ storage [medium]/[device] may not be understood as consisting of a single computer having more than one storage device (volatile and/or non- volatile).” PO Resp. 8–9 (brackets in original) (citing Ex. 2001 ¶ 32). Patent Owner also argues that Dibble’s LFSs are not separate “computer systems in communication with each other via a communication network,” as recited in claim 16. PO Resp. 24–27. There is no dispute that Dibble discloses an implementation of the PIFS on a single supercomputer. Indeed, Petitioner acknowledges that IPR2019-00592 Patent 6,438,642 B1 18 “Dibble implemented a prototype system on a 120-processor BBN Butterfly computer system.” Pet. 21 (citing Ex. 1005, 29). Dibble discloses the following: “We implemented Bridge on a 120-processor BBN Butterfly running the Chrysalis operating system. Each node in a Butterfly has a megabyte of memory, an 8 mHz 68000, and a microcoded processor that implements fast interprocessor communications.” Ex. 1005, 29 (citations omitted). Petitioner also notes that Dibble “explained that ‘[n]o aspect of the design or the implementation is specific to the Butterfly or a shared memory architecture.’ Instead, the ‘PIFS design should run well on any reasonable hardware’ and ‘was carefully written as a generic parallel program.’” Pet. 21 (quoting Ex. 1005, 44); see Tr. 15:5–8 (Petitioner’s counsel stating that Dibble’s “environment was a . . . supercomputer. But he makes clear that he was not limiting his parallel interleave file system to this particular environment.”). Thus, although Dibble discloses a particular implementation on a supercomputer, Dibble makes clear that its disclosure is not so limited. For the reasons explained below, we find Dibble’s disclosure of LFSs suggests multiple computer systems communicating with each other over a communication network. Patent Owner argues that Petitioner’s reliance on Dibble’s LFSs to teach computer systems communicating with each other over a communication network fails because a person of ordinary skill in the art “understands that all hard disks have processors and file systems but that does not make hard disks computers.” PO Resp. 24–25 (citing Ex. 1005, 2; Ex. 2001 ¶¶ 58–59). We disagree with Patent Owner’s characterization of an LFS in Dibble as simply a hard drive with a processor and a file system. As Petitioner correctly points out, Dibble discloses that multiple hard drives IPR2019-00592 Patent 6,438,642 B1 19 can be connected to each LFS, that the LFSs handle the hard drives, and that processors run the LFSs. Pet. Reply 9 (citing Ex. 1005, 36, 45, 56). In particular, Dibble discloses that “[a]n LFS file is identified by the processor ID of the processor that runs the LFS and the LFS’s internal file name.” Ex. 1005, 36, quoted in Pet. 38. Dibble further discloses that “the LFSs may not have identical disk subsystems” and that “one LFS [may] use[] a large drive and another LFS [may] use[] two small drives.” Ex. 1005, 36. Dibble further discloses that there may be situations in which “at least three or four disk drives are attached to each LFS.” Ex. 1005, 45. Dibble discloses that “[a]ctual disk drives are not really a concern at the PIFS level since they are handled by the LFSs.” Ex. 1005, 56. As shown by this disclosure cited by Petitioner, Dibble’s system employs multiple processors, each of which runs an LFS, each of which in turn may handle multiple hard disks. Thus, the processors that run the LFSs in Dibble are not merely processors embedded within hard drives, as Patent Owner suggests. See PO Resp. 24–25. Patent Owner argues that [w]hen one or more physical storage mediums is attached directly to a single computer, there is no need for a virtual storage device because the actual file system of the computer can directly manage the attached storage (with or without an intermediary local file system), meaning there is no virtual file-based non- volatile storage device. PO Resp. 18. This hypothetical configuration and operation, however, are quite different from Dibble’s disclosure in which the LFSs handle the attached storage, as detailed above. Indeed, Dibble states that “[l]ocal file systems are complete, self-sufficient file systems. The PIFS relies on them to implement every feature of the file system that doesn’t in some way involve parallelism.” Ex. 1005, 20. Thus, Dibble does not use a “single IPR2019-00592 Patent 6,438,642 B1 20 computer” to manage the attached storage but, rather, relies on the LFS running on each processor to manage the attached disk drives. Furthermore, Dibble discloses that LFSs may be “used as autonomous file systems as well as components in a PIFS. In that case the Bridge Server does not have complete control over the LFSs . . . .” Ex. 1005, 36. Thus, contrary to Patent Owner’s argument, Dibble’s higher layer PIFS Bridge Server does not “directly manage the attached storage” and, indeed, cannot manage the attached storage when the LFSs are autonomous. See PO Resp. 18. Patent Owner also argues that only specific processes, but not applications, run on Dibble’s processors, thus “further affirm[ing] Patent Owner’s view that Dibble does not disclose LFS computers.” PO Sur- reply 10. We disagree with this argument. Patent Owner directs us to no persuasive evidence that a computer is defined by its ability to run “applications,” as opposed to some other “processes.” We find Dibble’s disclosure that tools “start processes that execute on the processors running the LFSs” (Ex. 1005, 8, cited in Pet. Reply 9) supports a finding that Dibble teaches or suggests that the LFSs are computers that execute processes. Additional evidence supporting this finding is Dibble’s disclosure that each LFS may “include[] a backup device” and that “backup can run entirely at the LFS level.” Ex. 1005, 56, quoted in Pet. Reply 8–9. Dibble also discloses that “the LFS implements all the file system security.” Ex. 1005, 20, quoted in Pet. Reply 10. Based on these disclosures of the capabilities and operations of Dibble’s LFSs, we credit Dr. Long’s testimony that “a person of ordinary skill would consider each LFS to be ‘a different computer system’” (Ex. 1002 ¶ 115, cited in Pet. 46), and we find that Dibble teaches that its LFSs are different computer systems. IPR2019-00592 Patent 6,438,642 B1 21 Having determined that Dibble teaches or suggests that its LFSs are different computer systems, we turn to the issue of whether Dibble teaches or suggests that the LFSs are “in communication with each other via a communication network,” as recited in claim 16. Petitioner relies on Dibble’s disclosures of interprocessor communication (IPC) and communications through a network. Pet. 46–48 (citing Ex. 1005, 5, 36–37; Ex. 1002 ¶¶ 115–117; Ex. 1006, 1:50–56, 5:48–6:11). Patent Owner argues that Dibble does not teach that the LFSs communicate with each other via a communication network. PO Resp. 25 (citing Ex. 2001 ¶ 60). According to Patent Owner, Dibble “does not disclose that any communications exist between LFSs (even through IPCs).” PO Resp. 26 (citing Ex. 2001 ¶ 61). We disagree because, as Petitioner persuasively explains, Dibble discloses multiple instances of communications between LFSs. See Pet. 47 (citing Ex. 1005, 36–37 (§ 3.1.3 “Interprocessor Communication”); Pet. Reply 18–19 (citing Ex. 1005, 8, 25). For example, Dibble discloses that “[m]any tools will only send a small, fixed volume of data between processors.” Ex. 1005, 8, quoted in Pet. Reply 18. Dibble also discloses that “a character-counting application would move the entire file between processors when it would actually suffice to exchange only two small messages with each processor controlling a disk if local counts were computed on those processors.” Ex. 1005, 25, quoted in Pet. Reply 18. These disclosures teach communication between processors. Patent Owner further argues that “Dibble does not disclose communication as described in Fig. 3 of the ’642 Patent.” PO Sur-reply 17. Figure 3 of the ’642 patent is reproduced below. IPR2019-00592 Patent 6,438,642 B1 22 Figure 3 of the ’642 patent, reproduced above, illustrates “[t]hree computers 10a, 10b, and 10c [that] are in communication through a network 12.” Ex. 1001, 3:60–61. Patent Owner argues that in Dibble, although the Bridge Server can take information from one LFS and move that information to another LFS, an LFS “does not and cannot initiate a message” to another LFS via the Bridge Server. PO Sur-reply 17–18. Patent Owner argues that LFSs could initiate such messages if they “were in communication via a network, as are the computer systems in Fig. 3 of the ’642 Patent.” PO Sur- reply 17–18. Claim 16 does not recite that the computer systems must be able to initiate messages to each other, and Patent Owner does not direct us to any disclosure in the ’642 patent supporting this purported requirement. Figure 3 of the ’642 patent shows connections between some of the computers but does not speak to any message initiation capability of the devices. Patent Owner also notes Dibble’s disclosure that “[e]ven within the IPR2019-00592 Patent 6,438,642 B1 23 context of a PIFS the instances of EFS are self-sufficient and operate in ignorance of one another.” Ex. 1005, 31, quoted in PO Resp. 25. Patent Owner contends that this ignorance shows that the processors are not in communication with each other. PO Resp. 25. The fact that instances of the file system software (EFS) operating on each processor “are self-sufficient and operate in ignorance of one another,” as disclosed in Dibble, does not contradict Dibble’s other disclosures of interprocessor communication, discussed in the preceding paragraph. See Ex. 1005, 8, 25. Based on these express disclosures in Dibble of communications “between processors,” we find that Dibble teaches “computer systems in communication with each other,” as recited in claim 16. We next turn to the issue of whether Dibble teaches or suggests communications “via a communication network,” as recited in claim 16. Petitioner argues that Dibble expressly discloses interprocessor communications passing through a network. Pet. 47 (quoting Ex. 1005, 36). In particular, Dibble discloses “[p]erformance might change if our IPC mechanism were replaced with operations that passed through a slower network, but our choice of algorithms would remain the same.” Ex. 1005, 36 (emphasis added). Patent Owner argues that Petitioner’s and Dibble’s reference to a “slower network” in this context is related to a different supercomputer architecture and is limited to the same interprocessor communication (IPC) with potentially different communication paths between the processors (and slower performance than the Butterfly, as described in Dibble)—not to multiple computers in communications with each other via a communication network. PO Sur-reply 9–10. Patent Owner’s acknowledgement that the “slower network” relates to “different communication paths between the processors” IPR2019-00592 Patent 6,438,642 B1 24 actually supports Petitioner’s argument that Dibble teaches a network connecting the processors. We find Dibble’s disclosure of interprocessor communications passing through a “network” teaches communications “via a communication network,” as recited in claim 16. Even if this disclosure relates to a “different supercomputer architecture” from the actual implementation of Dibble, as argued by Patent Owner (PO Sur-reply 9–10), Dibble’s disclosure at the very least suggests communication “via a communication network.” See MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (stating that the test for obviousness is what the “teachings of the references would have suggested to those of ordinary skill in the art”). Patent Owner also argues that “Dibble’s ‘virtual parallelism’ is not the same as the virtualization within the ‘642 Patent’s virtual file-based non- volatile storage medium because Dibble virtualizes the path to the storage, and the ’642 Patent is about virtualizing the storage itself.” PO Resp. 18 (citing Ex. 2001 ¶ 49). We addressed a similar argument in the Decision on Institution as follows: On this record, we are persuaded Dibble teaches a virtual storage system by disclosing a file system that appears to a user as a single storage device but stores data in different physical devices. Ex. 1005, 7, 8, 18; Ex. 1002 ¶ 67. This is consistent with the ’642 patent’s description of a virtual storage device as using portions of different physical disks to store data but appearing as one repository to a user or an application. For example, referring to Figure 2, the ’642 patent explains that a virtual storage medium uses portions of three different hard disk drives. Ex. 1001, 3:26–40. Referring to Figure 6, the ’642 patent explains that, when a computer system selects a file to read from the virtual storage device, the file name is used to search the IPR2019-00592 Patent 6,438,642 B1 25 index data area of the virtual storage device to find “a location within a physical storage device and a specific physical storage device.” Ex. 1001, 4:30–37. In the ’642 patent, therefore, the storage is virtual in the sense that the underlying physical media that are used for storage do not need to be known by a user or an application using the virtual storage medium. Dec. on Inst. 11. Patent Owner does not dispute this understanding of what it means for storage to be “virtual” in the ’642 patent; rather, Patent Owner argues that Dibble’s disclosure of virtualism does not teach “virtual storage” as recited in the claims. PO Resp. 18–19. Petitioner’s contention that Dibble teaches virtual storage is, however, supported by a preponderance of the evidence and is persuasive. Dr. Long provides the following testimony: Dibble’s two-level system (with (1) the PIF Server and tools sitting above (2) the local file system) comprises the claimed “virtual file-based non-volatile storage medium” because the system “distribute[s] data among its constituent processors and disk drives” in a manner that hides the “hardware details.” [Ex. 1005], 8. In my opinion, a person of ordinary skill would have understood Dibble to mean that the data stored and retrieved via a file system employing a PIF Server would appear to the application and/or end user as if stored in a single (virtual) location, thus virtualizing the actual parallel-interleaved storage Dibble provided through the PIF Server. Ex. 1002 ¶ 67. We credit this testimony because it is consistent with Dibble’s disclosures, discussed above, of providing a file system (PIFS) that uses subsidiary file systems (LFSs) to store data but appears as a single file system. Therefore, we find Dibble teaches “virtual” storage, as recited in claim 16. IPR2019-00592 Patent 6,438,642 B1 26 ii. Automated Claim 16 recites “an automated file management file system.” With respect to this subject matter, Petitioner argues the following: Dibble discloses “automated file management” in two ways. First, a person of ordinary skill would have understood Dibble’s management of file storage and retrieval through the PIF Server, as well as its software tools in a layer that sits above the LFS’s, to automate file management. And second, Dibble discloses that the system can be used to facilitate automated file management beyond the storage and retrieval of files by allowing load balancing, as explained below. Pet. 24 (citing Ex. 1005, 7–8, 18; Ex. 1002 ¶¶ 61–63). Turning to Petitioner’s first assertion that Dibble teaches this subject matter, Petitioner argues that “Dibble’s storage and retrieval teaches automated file management because it uses a parallel interleaved file server (PIF server) that ‘defines and maintains the structure of parallel interleaved files, and repackages the parallelism provided by the [Local File Systems] LFS’s into virtual parallelism that meets applications’ requirements.’” Pet. 25 (alteration added by Petitioner) (quoting Ex. 1005, 18) (citing Ex. 1002 ¶ 64). Petitioner argues that “[t]hese operations occur without user intervention, so a person of ordinary skill would have understood the PIF Server and LFS’s to provide automated file management.” Pet. 25 (citing Ex. 1005, 18; Ex. 1002 ¶ 64). Patent Owner argues that, simply because every standard file system provides basic operations that may “occur without user intervention” does not make such file systems “automated.” PO Resp. 21 (citing Ex. 2001 ¶ 52). Dr. Melendez provides the following testimony in support of Patent Owner’s position: IPR2019-00592 Patent 6,438,642 B1 27 A [person of ordinary skill in the art] understands that every standard file system, whether automated or not, will provide basic operations that create files, write data to files, read data from files, and delete files hence defining and maintaining the structure of its files in accordance with its approach or architecture. (compare with Long at ¶64; Dibble at p. 16). A [person of ordinary skill in the art] understands that while such file actions may be initiated by a user, the operations themselves, “occur without user intervention.” This does not mean that every standard file system is a “file-based automated file management file system.” Ex. 2001 ¶ 52. The evidence of record supports Patent Owner’s and Dr. Melendez’s position that standard file systems at the relevant time provided basic operations, including create, write, read, and delete. In describing “[t]he elements common to most file systems used on general- purpose computers,” Dibble explains that “[t]he basic I/O operations are read and write. A standard file system also supplies create and delete operations that create and destroy files.” Ex. 1005, 16, cited in Ex. 2001 ¶ 52. These basic file system operations, however, are not the disclosures on which Petitioner relies to assert Dibble teaches an automated system. Rather, Petitioner relies on Dibble’s disclosure that “[t]he PIF Server defines and maintains the structure of parallel interleaved files, and repackages the parallelism provided by the LFS’s into virtual parallelism that meets applications’ requirements.” Ex. 1005, 18, quoted in Pet. 25. Dr. Melendez testifies that a person of ordinary skill in the art “understands that every standard file system, whether automated or not, will provide basic operations that create files, write data to files, read data from files, and delete files hence defining and maintaining the structure of its files in accordance with its approach or architecture.” Ex. 2001 ¶ 52 (emphasis added). Dr. IPR2019-00592 Patent 6,438,642 B1 28 Melendez’s use of the word “hence” suggests that the basic file operations themselves “define[] and maintain[] the structure of parallel interleaved files,” as described in Dibble. Ex. 1005, 18. We disagree. Dibble’s PIFS requires this basic functionality in its constituent LFSs, as explained in the following disclosure: Local file systems are complete, self-sufficient file systems. The PIFS relies on them to implement every feature of the file system that doesn’t in some way involve parallelism. At a minimum, a LFS must implement all the operations and concepts expected from a general-purpose file system: read, write, file creation, current position, end of file, and (optionally) file deletion. Ex. 1005, 20. This disclosure shows that Dibble’s PIF Server implements parallelism separate from basic file system operations, which are implemented in the LFSs. We credit Dr. Long’s testimony that “a person of ordinary skill would have understood the PIF Server and LFS’s to provide automated file management” based on Dibble’s disclosure of the operation of the PIF Server to “‘define[] and maintain[] the structure of parallel interleaved files’” as well as the operation of tools in the PIFS, not merely based on the basic file system operations cited by Patent Owner and Dr. Melendez. Ex. 1002 ¶ 64 (quoting Ex. 1005, 18). Patent Owner also argues that “[a]utomated file management is disclosed in the ‘642 Patent, consistent with its plain and ordinary meaning, as the movement of files occurring not directly as a result of a user’s intervention such as part of a specific access or manipulation request.” PO Resp. 21–22 (citing Ex. 1001, 4:64–5:13). Patent Owner argues that [e]xamples of automated file management disclosed in the ‘642 Patent include functions (1) where frequent accesses to files automatically results in the files being moved local to the user; IPR2019-00592 Patent 6,438,642 B1 29 (2) where files not accessed after a predetermined period of time automatically results in the files being moved for archiving; and (3) where files determined to be important automatically results in their being stored in several locations. PO Resp. 22 (citing Ex. 1001, 4:64–5:13). According to Patent Owner, “[t]he file movement in all of these examples is automatic and represents automated file management because the user did not request the file to be moved for storage or duplication into another non-volatile storage location.” PO Resp. 22 (citing Ex. 2001 ¶ 54). We agree with Patent Owner’s general proposition that the ’642 patent discusses automatic file movement as well as “automated storage device optimisation.” Although claim 16 recites “an automated file management file system,” it does not recite the particular automatic operations that Patent Owner cites in the Specification of the ’642 patent. Indeed, Patent Owner notes that these are “[e]xamples of automated file management” (PO Resp. 22), and Patent Owner does not present persuasive argument and evidence to limit the claims to these operations. Furthermore, citing the same exemplary disclosure of the ’642 patent Specification, Patent Owner seeks to limit the “automated” aspect of the claim to file movement. PO Resp. 21–22 (citing Ex. 1001, 4:64–5:13). Claim 16 recites “an automated file management file system” (emphasis added) and does not recite any particular “movement” of files, as opposed to dependent claim 17, which recites a step of “moving” data. Based on Dibble’s disclosure of its PIF Server’s management of the file system and Dr. Long’s testimony regarding that disclosure, which we credit as discussed above, we are persuaded, and we find, that Dibble teaches “an automated file management file system.” Ex. 1005, 18; Ex. 1002 ¶ 64. IPR2019-00592 Patent 6,438,642 B1 30 Even if claim 16 required automated movement of files, as proposed by Patent Owner, Petitioner persuasively explains how Dibble teaches this subject matter, citing Dibble’s disclosure of backup operations. See Pet. Reply 15–16 (citing Ex. 1005, 56–577). Dibble discloses the following: “The backup operation is an appropriate application for a tool. The operation can be phrased as ‘take every record in the file system and put it somewhere safe;’ that is, there are no inter-record dependencies. A backup tool could therefore run at the parallelism of the file system.” Ex. 1005, 56, quoted in Pet. Reply 15. Patent Owner argues that “Petitioner’s reliance on Dibble’s tools for this functionality is also misplaced, as these tools are applications separate from Dibble’s parallel interleaved file system.” PO Sur-reply 16 (citing Pet. Reply 15; Ex. 1005, iv, 208). Patent Owner is incorrect in this regard because Dibble states that tools are part of the PIFS in the following passage: “A PIFS has two layers and an unlimited number of components. The top layer contains a parallel interleaved file server (PIF Server) and a set of tools. The bottom layer is an array of Local File Systems (LFS’s).” Ex. 1005, 18; see also Ex. 1005, 19 (Fig. 2.1 depicting tools as “Components of a PIFS”). We are persuaded, and we find, the Dibble’s 7 Dibble’s page numbers 56–57 correspond to exhibit page numbers 69–70, which were cited by Petitioner. 8 Based on context we understand Patent Owner to be referring to Dibble’s pages iv and 20, which correspond, respectively to exhibit page numbers 9 and 33. For example, page 20 of Dibble has sections titled “The Local File System” and “Tools and LFS.” We have also reviewed pages 9 and 33 of Dibble, and nothing in those pages would change our decision. IPR2019-00592 Patent 6,438,642 B1 31 disclosure of a tool that performs a backup operation teaches automated file movement. We also are persuaded by Petitioner’s contention that Dibble’s load balancing teaches “an automated file management file system.” Pet. 25 (citing Ex. 1005, 56; Ex. 1002 ¶ 65). Dibble discloses the following: The PIFS create operation can be instructed to allocate various classes of files across different subsets of the available processors. This capability would let files that are frequently used together occupy disjoint sets of processors, and let the system administrator lighten the load on less powerful processors. Different user communities could occupy their own sets of processors while making the entire set of processors available for the jobs that need full I/O parallelism. The location and span of files within a large PIFS can be changed with mechanisms analogous to those used for adding and removing processors from the file system. When the allocation rules for a class of files are changed, files in the class will migrate to the new allocation. The residue can be moved with copy operations. Ex. 1005, 56. Patent Owner notes that the system administrator is involved in load balancing and, therefore, the process is not automated. PO Resp. 23 (citing Ex. 1005, 44; Ex. 2001 ¶ 56). Dr. Melendez testifies (Ex. 2001 ¶ 56) that Dibble only mentions load balancing as background in the following passage: “System administrators like to add disk drives and adjust load balance to fit their concept of optimization. A good file system must certainly accommodate system administrators.” Ex. 1005, 44. Patent Owner argues, and Dr. Melendez testifies, that this disclosure in Dibble involving system administrators “teach[es] away from automation.” PO Resp. 23; Ex. 2001 ¶ 56. IPR2019-00592 Patent 6,438,642 B1 32 There is no question that Dibble contemplates the involvement of a system administrator, as evident from the passages quoted above, but the ’642 patent also describes the involvement of a system administrator. For example, in the upgrade context, the ’642 patent discloses the following: In order to upgrade the 50 old devices with one new one, a new system is installed having a single large hard drive partition. An administrator indicates that the data from the group is to be moved onto the hard drive partition and that partition is to be the group. The data is moved in the background and, once moved, the indices are updated to reflect the move. Once the move is completed the old hard disk drives are reallocated to a pool of available resources. Ex. 1001, 7:10–18. Thus, a system administrator is involved in some aspects of the automated system described in the ’642 patent. Patent Owner does not direct us to persuasive evidence or argument showing that the ’642 patent describes a fully autonomous system that operates with no human involvement. Dibble discloses similar involvement of a system administrator. Just as an administrator is involved in upgrading a disk in the ’642 patent, Dibble discloses that, “[w]hen the file system gains a new processor the system administrator can simply add that processor to the list of processors available for file allocation. From that time on files that are created can use that processor.” Ex. 1005, 55. In Dibble, the system administrator allows a processor to be used for file allocation, but Dibble does not suggest that the system administrator then manually creates each file. Although “[t]he set of disks available to new files can be controlled by the system administrator” (Ex. 1005, 55), the system itself performs the file creation, as evident in the following passage: “For create and delete operations, the server will create or delete the PIFS file, issuing commands IPR2019-00592 Patent 6,438,642 B1 33 to the LFSs as necessary, and maintaining the PIFS directory to reflect the change.” Ex. 1005, 19. Dibble also discloses that “[w]hen the allocation rules for a class of files are changed, files in the class will migrate to the new allocation.” Ex. 1005, 56. Thus, Dibble discloses that a system administrator may set rules under which the automated system operates. This same human involvement would happen in the “[e]xamples of automated file management disclosed in the ‘642 Patent” discussed by Patent Owner. See PO Resp. 22. For example, Patent Owner argues that automation includes “where files not accessed after a predetermined period of time automatically results in the files being moved for archiving.” PO Resp. 22. The system must be instructed what the “predetermined period of time” is that results in the automatic movement. Thus, we are persuaded by Petitioner’s contention that Dibble discloses that “[s]ystem administrators can set various system parameters,” under which the system operates automatically. See Pet. Reply 16 (citing Ex. 1005, 55–56; Ex. 1002 ¶ 65).9 Dibble’s involvement of a system administrator does not negate its teachings of automated functionality, as Patent Owner’s argument suggests. 9 Patent Owner argues that “Petitioner’s new arguments with respect to Dibble are consistent with its own apparent understanding of the meaning of ‘automated file management.’ As such this new argument is inappropriate in a reply brief and entirely unjust to Patent Owner.” PO Sur-reply 16. We see no impropriety in Petitioner’s reply arguments, which “squarely respond[] to [the] Patent Owner Response.” See Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020). For example, Petitioner’s reply arguments as to “load balancing” are directly responsive to Patent Owner’s arguments that Dibble’s load balancing does not teach the claimed “automated” requirement. See PO Resp. 23; see also Pet. 24–25 (asserting that Dibble’s load balancing teaches automated file management). IPR2019-00592 Patent 6,438,642 B1 34 For all of the reasons discussed above, we find Dibble teaches “an automated file management file system,” as recited in claim 16. iii. Remaining undisputed subject matter of preamble and first step Petitioner contends Dibble teaches that its storage space is “non- volatile,” as recited in claim 16, “because it comprises hard disks that store data in a persistent form, which is how a person of ordinary skill in the art would have understood the term ‘non-volatile’ at the time the ’642 patent was filed.” Pet. 27 (citing Ex. 1002 ¶¶ 68–69; Ex. 1005, 8–9, 16, 28, 38, 61–64, 106); see Pet. 54–55 (referring to contentions for claim 1 for similar limitations). For example, Dibble discloses that “[e]ach PIFS processor requires at least one disk drive.” Ex. 1005, 61. Petitioner also contends Dibble’s file system is “file-based,” as recited in claim 16. Pet. 28 (citing Ex. 1005, 7–8, 15–17; Ex. 1002 ¶¶ 70–71); see Pet. 54–55 (referring to contentions for claim 1 for similar limitations). For example, Dibble discloses that the PIF server “administers the parallel aspects of the file system” and that, “[t]ogether with the tools discussed below, it forms the top layer of the file system. The lower level of the PIFS consists of a collection of self-sufficient Local File Systems that store the pieces of parallel interleaved files.” Ex. 1005, 7–8. Patent Owner does not separately dispute Petitioner’s contentions as to the “non-volatile” and “file-based” recitations of claim 16. Based on Petitioner’s persuasive evidence and argument, summarized above, we find Dibble teaches this subject matter. Petitioner also contends Dibble teaches that its virtual storage system interfaces with “a plurality of file system partitions of a plurality of IPR2019-00592 Patent 6,438,642 B1 35 corresponding physical non-volatile storage media associated therewith, locations within each physical non-volatile storage medium from the plurality of corresponding physical non-volatile storage media corresponding to locations within said virtual file-based non-volatile storage medium,” as recited in claim 16. Pet. 29–32; see Pet. 54–55 (referring to contentions for claim 1 for similar limitations). In particular, Petitioner relies on Dibble’s disclosure that a PIFS has multiple local file systems (LFSs). Pet. 29–30 (citing Ex. 1005, 19, 61, Fig 2.1; Ex. 1002 ¶¶ 75–76). Petitioner also relies on Dibble’s disclosure of distributing data among processors and disk drives that are part of the system and maintaining a Bridge directory. Pet. 21, 26, 32, (citing Ex. 1005, 17, 19, 36). Patent Owner does not separately dispute Petitioner’s contentions as to this subject matter. Dibble’s Figure 2.1 shows multiple LFSs as “Components of a PIFS.” Ex. 1005, 19. Dibble further discloses that “[a] parallel file system must distribute data among its constituent processors and disk drives.” Ex. 1005, 8. We are persuaded, and we find, that Dibble’s disclosure of using multiple local file systems and distributing data among multiple drives teaches interfacing with a plurality of file system storage partitions. Dibble also discloses the following: “The Bridge directory contains the Bridge names of files and a list of the LFS files that make up each Bridge file. An LFS file is identified by the processor ID of the processor that runs the LFS and the LFS’s internal file name.” Ex. 1005, 36. We are persuaded, and we find, that Dibble’s disclosure of a Bridge directory that keeps track of stored files teaches a correspondence between virtual storage locations in the system and physical storage locations in each LFS. IPR2019-00592 Patent 6,438,642 B1 36 iv. Summary finding for preamble and first step Based on the foregoing discussions, we are persuaded by Petitioner’s contentions and evidence, and we find that Dibble teaches [a] method of storing data in a virtual file-based non-volatile storage comprising the steps of: providing a virtual file-based non-volatile storage medium having an automated file management file system having in turn, and interfacing with, a plurality of file system partitions of a plurality of corresponding physical non-volatile storage media associated therewith, locations within each physical non-volatile storage medium from the plurality of corresponding physical non-volatile storage media corresponding to locations within said virtual file-based non-volatile storage medium, . . . wherein the physical non- volatile storage media form parts of different computer systems in communication with each other via a communication network, as recited in claim 16.10 See Pet. 24–32, 46–48, 54–56. b) Providing data for storage Claim 16 recites “providing data for storage in said virtual file-based non-volatile storage medium.” Petitioner contends Dibble discloses that, “during a write operation, the data itself is included as an argument for the write command,” thereby teaching this subject matter. Pet. 32–33 (citing Ex. 1005, 8, 20–21, 34, Table 3.3, Fig. 1; Ex. 1002 ¶ 84); see Pet. 54–55 (referring to contentions for claim 1 for similar limitations). Patent Owner does not dispute Petitioner’s contentions as to this limitation. We are persuaded, and we find, that Dibble teaches this subject matter because Dibble discloses that data is an argument for write commands to the Bridge server. Ex. 1005, 34 (Table 3.3). 10 We need not decide whether the preambles of the challenged claims are limiting because we find that Petitioner has shown that these preamble recitations are taught by the cited art. IPR2019-00592 Patent 6,438,642 B1 37 c) Determining free space Claim 16 recites “determining free space at locations within the virtual file-based non-volatile storage medium, the free space sufficient for storing the provided data, the locations corresponding to locations within the plurality of corresponding physical non-volatile storage media having available storage space therein.” Petitioner contends Dibble’s disclosure that the elementary file systems (EFSs), which implement the LFSs, “maintain[] free space as a bit map” (Ex. 1005, 32) teaches this subject matter. Pet. 33–35 (citing Ex. 1005, 30, 32; Ex. 1002 ¶¶ 85–92); see Pet. 54–55 (referring to contentions for claim 1 for similar limitations). During the trial, Patent Owner did not dispute Petitioner’s contentions as to this limitation.11 We are persuaded, and we find, that Dibble’s disclosure that an “EFS maintains free space as a bit map” (Ex. 1005, 32) teaches this subject matter because the bit map would show the free space for that EFS. See Ex. 1002 ¶ 85 (Dr. Long testifying that, through Dibble’s disclosure of maintaining free space as a bit map, “a person of ordinary skill would recognize that the LFS’s can ‘determine any free space’ and store data in the free space”). Based on Petitioner’s persuasive argument and evidence, we find Dibble teaches “determining free space at locations within the virtual file- based non-volatile storage medium, the free space sufficient for storing the 11 Patent Owner provided an argument for this limitation in its Preliminary Response. Prelim. Resp. 15–18. We addressed this argument in the Decision on Institution. Dec. on Inst. 15–17. Patent Owner did not contest the issue during trial and, therefore, waived any arguments for this limitation. See Paper 11 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). IPR2019-00592 Patent 6,438,642 B1 38 provided data, the locations corresponding to locations within the plurality of corresponding physical non-volatile storage media having available storage space therein,” as recited in claim 16.12 d) Storing the provided data Claim 16 recites “storing the provided data at the locations corresponding to the free space.” Petitioner contends Dibble teaches storing data at locations with free space. Pet. 37–38 (citing Ex. 1005, 20–22, Fig. 2.2; Ex. 1002 ¶¶ 95–96); see Pet. 54–55 (referring to contentions for claim 1 for similar limitations). Dibble discloses that a “Write” operation “transfers one or more records from program memory to the specified file,” and it also discloses a “record placement rule” by which “[a] PIFS must distribute data among its LFSs.” Ex. 1005, 20–22. Patent Owner does not dispute Petitioner’s contentions as to this limitation. We are persuaded, and we find, that Dibble’s disclosure of writing data to LFSs teaches “storing the provided data at the locations corresponding to the free space,” as recited in claim 16. e) Storing index information Claim 16 recites “storing index information for the stored data.” Petitioner contends that Dibble’s disclosure of a Bridge directory and associated information in LFSs used to find stored data teaches this subject matter. Pet. 38–40 (citing Ex. 1005, 33, 36; Ex. 1002 ¶¶ 97–102); see 12 Petitioner also argues that Dibble teaches the subject matter recited in this limitation “if one were to interpret ‘free space’ as requiring storage locations that have either never held data or have had any residual data expunged.” Pet. 36. Neither party argues for this interpretation of “free space,” and we do not view the claims as being so limited. Therefore, we need not rely on this alternative argument. IPR2019-00592 Patent 6,438,642 B1 39 Pet. 54–55 (referring to contentions for claim 1 for similar limitations). Dibble discloses that “the Bridge Server is a single centralized process” and “maintains the Bridge directory.” Ex. 1005, 33. Dibble discloses the following: “The Bridge directory contains the Bridge names of files and a list of the LFS files that make up each Bridge file. An LFS file is identified by the processor ID of the processor that runs the LFS and the LFS’s internal file name.” Ex. 1005, 36. Dr. Long testifies that “a person of ordinary skill in the art would have understood that Dibble’s Bridge Directory and information stored in the LFS’s are used together to resolve the physical locations for a file and collectively constitute ‘index information for the stored data,’ as claimed.” Ex. 1002 ¶ 102. Patent Owner does not dispute Petitioner’s contentions as to this limitation. We are persuaded, and we find, that Dibble’s disclosure of a Bridge directory and associated information in LFSs used to find stored data teaches “storing index information for the stored data,” as recited in claim 16. f) Determination of unpatentability of claim 16 For the reasons discussed above, we find Dibble teaches or suggests all of the limitations and the overall method of claim 16. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, and we determine that Petitioner has proven by a preponderance of the evidence that claim 16 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 3. Independent Claim 1 Independent claim 1 is directed to a “method of providing automated file management comprising the steps of storing data in a virtual file-based IPR2019-00592 Patent 6,438,642 B1 40 non-volatile storage medium comprising” steps that are similar to those recited in claim 16, except that claim 1 does not recite “wherein the physical non-volatile storage media form parts of different computer systems in communication with each other via a communication network.” Patent Owner’s arguments for claim 1 have been fully addressed by our discussion of claim 16 above in § II.D.2. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence for the reasons given in § II.D.2 for claim 16, and we determine that Petitioner has proven by a preponderance of the evidence that independent claim 1 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 4. Dependent Claim 2 Claim 2 recites, “The method as defined in claim 1 wherein the index information comprises data indicative of a file identifier, and locations within said virtual file-based nonvolatile storage medium for the stored data.” Referring to its contentions for the limitation of claim 1 reciting “storing index information for the stored data,” Petitioner argues that Dibble’s “directory entries include the ‘LFS-level name of the file,’” thereby teaching the claimed “data indicative of a file identifier,” and that Dibble’s “directory entry ‘includes identifiers for the LFS’s participating in the file,’” thereby teaching the claimed “locations within said virtual file-based nonvolatile storage medium for the stored data.” Pet. 40–41 (quoting Ex. 1005, 18–19) (citing Ex. 1002 ¶¶ 103–104). Patent Owner does not separately address the additional limitations recited in claim 2. See generally PO Resp. IPR2019-00592 Patent 6,438,642 B1 41 We are persuaded that Dibble teaches the subject matter of claim 2 for the reasons given by Petitioner, summarized above, and because, as discussed above in § II.D.2.e, Dibble discloses storing index information for the file data so that the file can be retrieved from the locations where the data are stored. Ex. 1005, 18–19, 33, 36. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, summarized above, and we determine that Petitioner has proven by a preponderance of the evidence that claim 2 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 5. Dependent Claim 3 Claim 3 recites, “The method as defined in claim 1 wherein the index information comprises data indicative of a file identifier, an indication of said physical non-volatile storage medium on which the stored data is stored, and the corresponding locations within said physical non-volatile storage medium for the stored data.” Like claim 2, claim 3 recites that “the index information comprises data indicative of a file identifier.” Petitioner argues Dibble teaches this subject matter for the same reasons given for claim 2 (see Pet. 41), and we are persuaded by Petitioner’s contentions (see § II.D.4 above). Claim 3 differs from claim 2 in reciting that the index information comprises “an indication of said physical non-volatile storage medium on which the stored data is stored, and the corresponding locations within said physical non-volatile storage medium for the stored data.” Petitioner argues that “[t]he LFS’s are responsible for identifying the physical medium and corresponding location within the physical non-volatile storage medium for IPR2019-00592 Patent 6,438,642 B1 42 stored data.” Pet. 41–42 (citing Ex. 1005, 32, 56; Ex. 1002 ¶ 107). Petitioner also relies on Dibble’s disclosure of the Bridge server providing “correct hints” as to the location for the data. Pet. 42 (citing Ex. 1005, 29– 32; Ex. 1002 ¶¶ 106–108). Patent Owner does not separately address the additional limitations recited in claim 3. See generally PO Resp. We are persuaded that Dibble teaches the subject matter of claim 3 for the reasons given by Petitioner, summarized above, and because, as discussed above in §§ II.D.2.e and II.D.4, Dibble discloses storing index information for the file data so that the file can be retrieved from the locations where the data are stored. Ex. 1005, 18–19, 29–32, 56. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, summarized above, and we determine that Petitioner has proven by a preponderance of the evidence that claim 3 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 6. Dependent Claim 4 Claim 4 recites, “The method as defined in claim 3 wherein some of the stored data stored within one of said physical non-volatile storage media is duplicated data of data stored in another of said physical non-volatile storage media.” Petitioner contends Dibble’s disclosure of implementing data redundancy teaches this subject matter. Pet. 43–44 (citing Ex. 1005, 9, 45; Ex. 1002 ¶ 109). For example, Dibble discloses the following: “Simple redundancy involves writing all data to at least two disks. This type of data protection is common for ordinary file systems.” Ex. 1005, 9, quoted in Pet. 43. IPR2019-00592 Patent 6,438,642 B1 43 Patent Owner does not separately address the additional limitations recited in claim 4. See generally PO Resp. We are persuaded that Dibble’s disclosure of “writing all data to at least two disks” (Ex. 1005, 9) teaches the data duplication recited in claim 4. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, summarized above, and we determine that Petitioner has proven by a preponderance of the evidence that claim 4 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 7. Dependent Claim 5 Claim 5 recites, “The method as defined in claim 3 wherein a portion of the stored data less than the whole is stored on a first physical non-volatile storage medium and another portion of the stored data less than the whole is stored on a second physical non-volatile storage medium.” Petitioner argues that Dibble’s disclosure of distributing data across multiple LFSs teaches this subject matter. Pet. 44–46 (citing Ex. 1005, 19–21; Ex. 1002 ¶¶ 110–113). For example, Dibble discloses that “[a] PIFS must distribute data among its LFSs.” Ex. 1005, 20. Patent Owner does not separately address the additional limitations recited in claim 5. See generally PO Resp. We are persuaded that Dibble’s disclosure of distributing data among multiple LFSs teaches that less than all of the stored data is on one physical medium. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, summarized above, and we determine that Petitioner has proven by a preponderance of the evidence IPR2019-00592 Patent 6,438,642 B1 44 that claim 5 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 8. Dependent Claim 6 Claim 6 recites, “A method as defined in claim 3 wherein said first physical non-volatile storage medium and said second physical non-volatile storage medium form part of different computer systems in communication one with the other via a communication network.” Petitioner contends Dibble teaches this subject matter for the reasons discussed above in § II.D.2.a.i for the limitation of claim 16 reciting “wherein the physical non- volatile storage media form parts of different computer systems in communication with each other via a communication network.” Pet. 46–48, 56. Petitioner also notes that, although claim 6 recites that it depends from claim 3, the terms “said first physical non-volatile storage medium” and “said second physical non-volatile storage medium” are introduced in claim 5 and have no antecedent basis in claim 3. Pet. 46. Petitioner argues that the subject matter of claim 6 would have been obvious whether claim 6 is considered to depend from claim 3 or claim 5. Pet. 46–48. Patent Owner does not respond to the antecedent basis issues raised by Petitioner, but Patent Owner argues that Dibble does not teach the subject matter of claim 6 for the reasons discussed above with respect to the “wherein” clause of claim 16. PO Resp. 24–27; PO Sur-reply 17–18. We have addressed all of the parties’ arguments as to this subject matter above in § II.D.2.a.i. Notwithstanding the antecedent basis issues identified by Petitioner, we address claim 6 as dependent from claim 3 based on the express language of claim 6. As discussed above in § II.D.2.a.i for claim 16, we are persuaded IPR2019-00592 Patent 6,438,642 B1 45 that Dibble teaches physical storage media that are in different computer systems communicating over a network. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, and we determine that Petitioner has proven by a preponderance of the evidence that claim 6 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 9. Independent Claim 12 Petitioner notes that claim 12 recites subject matter similar to several other claims, relies on its contentions as to the other claims where appropriate, and addresses additional subject matter recited in claim 12, including the means-plus-function limitations. See Pet. 48–52. Patent Owner’s arguments for claim 12 are all based on arguments that have been addressed above with respect to other claims. See PO Resp. 16–19 and 24– 27 (arguing that the claims require multiple computers), 19–20 (arguing means-plus-function limitations require multiple computers), 20–23 (arguing automated file management file system). Independent claim 12 is directed to “[a] virtual file-based non-volatile storage device comprising: an automated file management file system.” For the reasons explained above in §§ II.D.2.a.i–iii, we find Dibble teaches or suggests this subject matter. See Pet. 48 (referring to contentions for claim 1). Claim 12 recites a plurality of computers each comprising one or more file system partitions on a physical non-volatile storage medium, locations within a plurality of said physical non-volatile storage media corresponding to locations within the virtual file-based non- volatile storage device, said physical non-volatile storage media forming parts of two different computer systems wherein each of IPR2019-00592 Patent 6,438,642 B1 46 said file system partitions is interfaced to said automated file management file system. In this limitation, for the recitation of “said physical non-volatile storage media forming parts of two different computer systems,” Petitioner refers to its contentions for claims 6 and 12, which recite similar subject matter. Pet. 50. For the remainder of this limitation, Petitioner refers to its contentions for claim 1. Pet. 48. For the reasons explained above in § II.D.2.a, we find Dibble teaches or suggests this subject matter. Claim 12 further recites “means for storing data at locations within said virtual file-based non-volatile storage device.” Referring to its contentions for claim 1, Petitioner argues Dibble’s disclosure of disk drives for storing data in the virtual storage teaches the structure and function required. Pet. 50–51. Patent Owner argues that Dibble does not teach virtual storage using at least two computer systems. PO Resp. 19–20. For the reasons discussed above in § II.D.2.a.i, we are persuaded that Dibble teaches or suggests virtual storage using multiple computer systems, and we find that Dibble teaches or suggests the function and structure for the “means for storing data” limitation, with Patent Owner’s added requirement of multiple computer systems. Claim 12 further recites portions less than the whole of the data stored at locations within a first physical non-volatile storage medium from the plurality of physical non-volatile storage media and other portions less than the whole of the data stored at locations within a second other physical non-volatile storage medium from said plurality of physical non-volatile storage media corresponding to the locations within said virtual file-based non-volatile storage device. IPR2019-00592 Patent 6,438,642 B1 47 For this limitation, Petitioner refers to its contentions with respect to similar language in claim 5. Pet. 51. For the reasons explained above in § II.D.2 with respect to claim 1 and in § II.D.7 with respect to claim 5, we find Dibble teaches or suggests this subject matter. Claim 12 further recites “means for storing index data.” Referring to its contentions for claim 1, Petitioner argues that in Dibble the LFS maps the file to a physical location and that a person of ordinary skill in the art “would have understood this type of information to be index information, and that at least the LFS portion of the index data would have been stored in an index area of the disclosed hard disk within the LFS.” Pet. 52 (citing Ex. 1005, 36, 61; Ex. 1002 ¶ 125). Patent Owner does not separately argue the “means for storing index data” limitation. We are persuaded by Petitioner’s contentions and evidence, and we find that Dibble teaches the function and structure for the “means for storing index data” limitation. Claim 12 further recites “the index data for locating and retrieving data stored within said virtual file-based non-volatile storage device.” For reasons explained above in §§ II.D.4–5 with respect to claims 2 and 3, we find that the index data comprises data that indicates locations for the data so that the data can be located and retrieved. Therefore, we find Dibble teaches “the index data for locating and retrieving data stored within said virtual file- based non-volatile storage device,” as recited in claim 12. As discussed above in § II.B.2, Patent Owner argues that the “means for storing data” and “means for storing index data” limitations are not subject to 35 U.S.C. § 112, ¶ 6. See PO Resp. 13. We disagree for the reasons discussed above in § II.B.2, but we note that Dibble teaches storing data and storing index data, as discussed above in §§ II.D.2.d and e. IPR2019-00592 Patent 6,438,642 B1 48 Therefore, our determination on patentability would not change if we adopted Patent Owner’s proposed constructions for “means for storing data” and “means for storing index data.” Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, and we determine that Petitioner has proven by a preponderance of the evidence that independent claim 12 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. 10. Dependent Claims 13 and 14 Dependent claim 13 recites the following: The virtual file-based non-volatile storage device as defined in claim 12 wherein the means for storing index data comprises: means for updating index data, the index data indicative of a location within said virtual file-based non-volatile storage medium where the data is stored, the location corresponding to locations within said physical non-volatile storage media. Dependent claim 14 recites the following: The virtual file-based non-volatile storage device as defined in claim 12 wherein said means for storing index data comprises: means for updating index data, the index data indicative of said physical non-volatile storage medium and a location within said physical non-volatile storage medium where the data is stored. Petitioner contends that Dibble discloses “us[ing] a Bridge Server and Bridge Directory to keep track of a file’s component LFS’s, and the individual LFS’s, in turn, keep track of the location of the file’s components within the LFS” and that “[a] person of ordinary skill would have understood that software in the Bridge Server and LFS’s would include algorithms for ‘receiving location data for updating index data for the stored IPR2019-00592 Patent 6,438,642 B1 49 data, and writing or updating such index data to reflect the location data,’” thereby teaching the function and structure required of the “means for updating index data” limitations of claims 13 and 14. Pet. 53 (citing Ex. 1002, 18–19; Ex. 1002 ¶¶ 128–129); see Pet. 15–16 (construing “means for updating index data”); see also § II.B.2 above (adopting Petitioner’s proposed construction for this limitation). For the remaining limitations of claims 13 and 14 reciting features of the index data, Petitioner refers to its contentions for claims 2 and 3. Pet. 53–54. Patent Owner does not separately address the additional limitations recited in claims 13 and 14. See generally PO Resp. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, summarized above, and for the reasons given above in § II.D.4 for claim 2 and § II.D.5 for claim 3, and we determine that Petitioner has proven by a preponderance of the evidence that claims 13 and 14 of the ’642 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of Dibble. E. Obviousness over the Combination of Dibble and Cannon (Claims 7, 10, 15, 17, 20) Petitioner asserts claims 7, 10, 15, 17, and 20 of the ’642 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the combined teachings of Dibble and Cannon. Pet. 11, 56–68. 1. Cannon Cannon relates to file storage and discloses various file management techniques, including data migration and archiving. Ex. 1008, 1:9–18, 5:35– 37, 6:24–29, 17:50–18:9. IPR2019-00592 Patent 6,438,642 B1 50 2. Claims 7 and 17 Claim 7 recites the following: The method as defined in claim 1 comprising the steps of: monitoring access to stored data; determining from the monitored access a location within the virtual file-based non-volatile storage medium for the stored data; moving the stored data to the determined location; and updating the index data to reflect the new storage location of the stored data being the determined location. Ex. 1001, 8:54–62, 10:34–42 (emphasis added). Claim 17 depends from claim 16 and recites everything in claim 7 except for the phrase “being the determined location,” which is italicized above. Petitioner first argues that Dibble alone teaches this subject matter. Pet. 57–59. In particular, Petitioner relies on Dibble’s disclosure of configuring the system using allocation rules that may, for example, cause file migration. Pet. 57–58 (citing Ex. 1005, 56; Ex. 1002 ¶¶ 138–140). For example, Dibble discloses the following: The PIFS create operation can be instructed to allocate various classes of files across different subsets of the available processors. This capability would let files that are frequently used together occupy disjoint sets of processors, and let the system administrator lighten the load on less powerful processors. Different user communities could occupy their own sets of processors while making the entire set of processors available for the jobs that need full I/O parallelism. The location and span of files within a large PIFS can be changed with mechanisms analogous to those used for adding and removing processors from the file system. When the allocation rules for a class of files are changed, files in the class IPR2019-00592 Patent 6,438,642 B1 51 will migrate to the new allocation. The residue can be moved with copy operations. Ex. 1005, 56. Petitioner argues that Dibble discloses that the index information is updated when files are moved so that the system can locate data. Pet. 58–59 (citing Ex. 1005, 19; Ex. 1002 ¶¶ 141–142). Patent Owner argues that the processes cited by Petitioner are not automated because they are performed by a system administrator. PO Resp. 29–30 (citing Ex. 2001 ¶ 68). According to Patent Owner, because claims 1 and 16, from which claims 7 and 17 depend, respectively, require “automated file management,” Dibble’s system administrator approach cannot teach the claimed subject matter. For the reasons discussed above in § II.D.2.a.ii, we are persuaded that Dibble teaches an automated system notwithstanding the involvement of a system administrator. Based on Petitioner’s persuasive evidence and argument and in view of the foregoing discussion and the discussion above in § II.D.2.a.ii, we are persuaded, and we find, that Dibble’s disclosures of storing data in certain processors based on frequency of use and migrating data based on changing allocation rules teach the subject matter of claims 7 and 17. Ex. 1005, 55– 56; Ex. 1002 ¶¶ 138–142. Petitioner notes that its arguments that Dibble teaches the subject matter of claim 7 are “based on the understanding that claim 7 is not limited to migrating data to archive it,” and Petitioner further argues that “if one were to narrowly read claim 7 to require archiving, Cannon provides this teaching and it would have been obvious to incorporate into Dibble’s system.” Pet. 59 (citing Ex. 1002 ¶ 143). Claims 7 and 17 do not recite archiving, and we do not interpret claims 7 and 17 as requiring archiving. Nonetheless, we are persuaded by Petitioner’s contentions based on the IPR2019-00592 Patent 6,438,642 B1 52 combination of Cannon with Dibble. See Pet. 59–63. In particular, Petitioner relies on Cannon’s disclosure of “automatic data migration.” Pet. 59–61 (citing Ex. 1008, 5:35–37, 6:25–26, 7:4–7, 7:20–21, 17:23–29, 17:50–18:7, Fig. 4; Ex. 1002 ¶¶ 144–146). Cannon discloses that “a migration operation” may “start[] automatically in response to the existence of a predetermined condition,” which “may be related to the data’s recency of use, frequency of use, age, etc.” Ex. 1008, 17:58–62. Cannon discloses that, in response to the condition, the files are copied to “target locations,” which “may be selected under many different techniques, considering factors such as the size of the data, availability of potential target locations, etc.” Ex. 1008, 17:67–18:2. Cannon further discloses “updat[ing] the database . . . to reflect the new locations of the managed files.” Ex. 1008, 18:3–4. Patent Owner argues that Cannon’s data migration disclosure is directed to archiving, which, according to Patent Owner, “is only performed when there is “no access” and the new/determined location is predetermined rather than determined as a function of the monitored access.” PO Resp. 30 (citing Ex. 2001 ¶ 69). This description of archiving, however, is Patent Owner’s characterization of how archiving operates in the ’642 patent. For example, Patent Owner argues that “[i]n the archiving example of the ‘642 Patent, the location for archiving is predetermined independent of monitoring access to stored data for a location.” PO Resp. 28–29 (citing Ex. 2001 ¶ 66). Regardless of whether the ’642 patent performs archiving in a certain way in the Specification, the relevant inquiry is whether Cannon teaches the claimed subject matter. Petitioner relies on Cannon’s disclosure of selecting target locations for the data. Pet. 61 (citing Ex. 1008, 17:64– IPR2019-00592 Patent 6,438,642 B1 53 18:2; Ex. 1002 ¶ 146). Patent Owner’s argument that Cannon discloses using predetermined locations (PO Sur-reply 21) ignores Cannon’s disclosure of selecting target locations for the data. Ex. 1008, 17:67–18:2. We are persuaded, and we find, that the combination of Dibble and Cannon teaches the subject matter recited in claims 7 and 17. As discussed above, we find Dibble alone teaches the subject matter of claims 7 and 17. We likewise are persuaded, and we find, that Dibble’s disclosures, discussed above, in combination with Cannon’s disclosure of migrating data in response to conditions such as frequency of use and recency of use of the data, teach monitoring access to the data and determining where to move the data from that monitoring. Ex. 1008, 17:58–18:2. We also find that Cannon’s disclosure of “updat[ing] the database . . . to reflect the new locations of the managed files” (Ex. 1008, 18:3–4) teaches updating the index data, as recited in claims 7 and 17. We also are persuaded by Petitioner’s contention that a person of ordinary skill in the art would have been motivated to combine the teachings of Dibble and Cannon to “allow[] less-frequently used data to be moved to slower, cheaper, or less-utilized storage areas, as taught in Cannon,” which “would result in optimized performance for the more frequently used data, which could reside on faster or more expensive media because the less used data would all migrate to the slower or cheaper media.” Pet. 62 (citing Ex. 1002 ¶¶ 147–148). During the trial, Patent Owner did not challenge Petitioner’s reasons to combine Dibble and Cannon. See generally PO Resp. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, and we determine that Petitioner has proven by a preponderance of the evidence that dependent IPR2019-00592 Patent 6,438,642 B1 54 claims 7 and 17 of the ’642 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the combined teachings of Dibble and Cannon. 3. Claims 10 and 20 Claim 10 recites the following: The method as defined in claim 1 comprising the steps of: monitoring access to stored data; archiving stored data that is not accessed for more than a predetermined amount of time. Claim 20 depends from claim 16 but otherwise adds the same limitations as recited in dependent claim 10. Petitioner argues that the combination of Dibble and Cannon teaches “monitoring access to stored data” for the same reasons discussed with respect to the same limitation of claims 7 and 17 (see Pet. 64), and we agree for the reasons discussed above in § II.E.2. Petitioner argues that Cannon’s disclosure of moving data downward in the file hierarchy based on the data’s recency of use teaches “archiving stored data that is not accessed for more than a predetermined amount of time.” Pet. 64 (citing Ex. 1008, 17:60–62; Ex. 1002 ¶¶ 154–155). Referring to Figure 7, Cannon discloses that “a storage pool backup operation 700 is performed in response to various conditions (step 704).” Ex. 1008, 18:54– 55. As discussed above in § II.E.2, Cannon discloses that “predetermined condition[s]” in step 704 of Figure 7 “may be related to the data’s recency of use, frequency of use, age, etc.” Ex. 1008, 17:58–62. Petitioner refers to its reasons to combine the teachings of Dibble and Cannon discussed with respect to claims 7 and 17. Pet. 64–65. Patent Owner does not dispute Petitioner’s contentions with respect to claims 10 and 20 and acknowledges that Cannon teaches archiving. See PO IPR2019-00592 Patent 6,438,642 B1 55 Resp. 30 (“[T]he archiving discussed in Cannon may disclose the archiving limitations of dependent claims 10 and 20 but cannot disclose the localized storage limitations of dependent claims 7 and 17 of the ‘642 Patent.”). Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, discussed above in this section and discussed above in § II.E.2, and we determine that Petitioner has proven by a preponderance of the evidence that dependent claims 10 and 20 of the ’642 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the combined teachings of Dibble and Cannon. 4. Claim 15 Claim 15 recites, “The virtual file-based non-volatile storage device as defined in claim 12 comprising: means for archiving data stored within said virtual file-based non-volatile storage device.” Petitioner argues that Cannon’s disclosures of archiving and automatic data migration teach the function and structure required of the “means for archiving” limitation of claim 15. Pet. 65–66 (citing Ex. 1008, 7:4–25, 17:27–29, 17:50–57, Fig. 4; Ex. 1002 ¶¶ 157–159); see Pet. 16–17 (construing “means for archiving data stored within said virtual file-based non-volatile storage device”); see also § II.B.2 above (adopting Petitioner’s proposed construction for this limitation). Petitioner refers to its reasons to combine the teachings of Dibble and Cannon discussed with respect to claims 7 and 17. Pet. 66. Patent Owner does not separately address the additional limitations recited in claim 15. See generally PO Resp. Having considered the full record developed during trial, we are persuaded by Petitioner’s contentions and evidence, and we determine that Petitioner has proven by a preponderance of the evidence that dependent IPR2019-00592 Patent 6,438,642 B1 56 claim 15 of the ’642 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the combined teachings of Dibble and Cannon. III. CONCLUSION13 For the reasons discussed above, we determine Petitioner has proven, by a preponderance of the evidence, that the challenged claims are unpatentable, as summarized in the following table: 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. 16654 (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). Claims 35 U.S.C. § Reference(s)/Basis Claims Shown Unpatentable Claims Not Shown Unpatentable 1–6, 12– 14, 16 103(a) Dibble 1–6, 12–14, 16 7, 10, 15, 17, 20 103(a) Dibble, Cannon 7, 10, 15, 17, 20 Overall Outcome 1–7, 10, 12– 17, 20 IPR2019-00592 Patent 6,438,642 B1 57 IV. ORDER Accordingly, it is: ORDERED that claims 1–7, 10, 12–17, and 20 of the ’642 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. IPR2019-00592 Patent 6,438,642 B1 58 PETITIONER: Erika Arner Erika.arner@finnegan.com Joshua Goldberg Joshua.goldberg@finnegan.com Jason Stach Jason.stach@finnegan.com Cory Bell Cory.bell@finnegan.com Rachel Emsley Rachel.emsley@finnegan.com Andrew Devkar Andrew.devkar@morganlewis.com Diek Van Nort dvannort@mofo.com PATENT OWNER: Gregory S. Donahue gdonahue@dpelaw.com Andrew DiNovo adinovo@dpelaw.com Copy with citationCopy as parenthetical citation