KOM Software, Inc.

Patent Trials and Appeals Board

Jul 27, 2020

IPR2019-00592 (P.T.A.B. Jul. 27, 2020)

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)

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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).
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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).
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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.
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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
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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.
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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”
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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
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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).
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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,
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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-
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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
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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
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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.
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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
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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
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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
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“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
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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
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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.
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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.
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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
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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”
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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
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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.
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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:
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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.
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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;
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(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.
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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.
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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.
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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
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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).
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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
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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.
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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.
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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.”).
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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.
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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
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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.
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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
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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.
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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
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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
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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
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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.
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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.
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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
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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.
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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
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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
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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–
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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
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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
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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
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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

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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.
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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