Microsoft Corp v. Daedalus Group LLC

1. Case Identification

• Case #: IPR2021-00831
• Patent #: 8,671,132
• Filed: May 7, 2021
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Daedalus Blue, LLC
• Challenged Claims: 15-25

2. Patent Overview

• Title: System, Method, and Apparatus for Policy-Based Data Management
• Brief Description: The ’132 patent discloses a method for policy-based data management where file attributes are received from clients on different computing platforms. A "service class" is assigned to the file based on policy rules, and this class dictates how operations are conducted on the file and to which "storage pool" it is assigned for storage.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gelb and Tivoli - Claims 15-21 and 23-25 are obvious over Gelb in view of Tivoli.

• Prior Art Relied Upon: Gelb (Patent 5,018,060) and Tivoli ("Tivoli Storage Manager: A Technical Introduction," a 2001 IBM publication).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gelb taught a policy-based data management system using rules ("Automatic Class Selection" routines) to assign files to service classes (data, storage, and management classes) that determine how the file is handled, including which storage group (storage pool) it is assigned to. However, Gelb's system did not explicitly disclose receiving files from clients on different computing platforms. Petitioner asserted that Tivoli, a publication describing an IBM storage product, filled this gap by teaching a client-server storage architecture where clients run on various computing platforms (e.g., UNIX, Windows, Macintosh) and send files to a central server.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Gelb and Tivoli because both relate to IBM data storage systems with similar policy-based management functions. A POSITA would have been motivated to implement Tivoli’s flexible client-server architecture into Gelb’s system to accommodate multiple users on different computers in an enterprise network, a common and desirable configuration.
  • Expectation of Success: Petitioner contended there was a high expectation of success, as implementing a client-server model and providing multi-platform support were well-known and standard practices in software design at the time of the invention.

Ground 2: Obviousness over Gelb, Tivoli, and Callaghan - Claim 22 is obvious over Gelb in view of Tivoli and Callaghan.

• Prior Art Relied Upon: Gelb (Patent 5,018,060), Tivoli (a 2001 IBM publication), and Callaghan ("NFS Illustrated," a 2000 book).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed dependent claim 22, which adds the limitation of "translating the one or more attributes" for files received from different computing platforms. The combination of Gelb and Tivoli provided the base system with clients on different platforms. Petitioner argued that Callaghan, a book describing the Network File System (NFS) protocol, taught the necessity of translating file attributes (like file names and file size) when transferring files between different operating systems, such as a DOS/Windows client and a UNIX server, to resolve inherent incompatibilities. Callaghan explicitly described using mapping tables to perform this translation.
  • Motivation to Combine: A POSITA building the system described by Gelb and Tivoli would encounter the known problem of attribute incompatibility between different operating systems. It would have been natural to look to established solutions for distributed file systems, such as the NFS protocol detailed in Callaghan, to implement a translation mechanism. This would improve the system's flexibility and interoperability, a clear design goal for such systems.

Ground 3: Anticipation by Devarakonda - Claims 15-21 and 23-25 are anticipated by Devarakonda.

• Prior Art Relied Upon: Devarakonda (Patent 7,269,612).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Devarakonda disclosed every element of the challenged claims. Devarakonda described a "policy based storage manager" that used a policy set to manage data. The system received files with associated "data characteristics" (attributes) from client applications running on "application servers" (clients). Devarakonda explicitly taught that these clients could run on different operating systems through the use of middleware. The system applied rules to assign a file to "application" and "data containers" (service classes), which defined operational requirements and were associated with "management functions" (operations) to be performed on the file. Finally, Devarakonda taught assigning files to a "storage container" or "storage resource" (storage pool) to determine where the data would be stored.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was inappropriate because the co-pending district court litigation was in a very early stage. At the time of filing, no trial date had been set, discovery had not commenced, and no substantive court resources had been invested in analyzing invalidity.
• Petitioner further argued that the balance of Fintiv factors favored institution, noting the petition was filed diligently, only 4.5 months after the complaint. The significant overlap in issues also favored institution, as this inter partes review (IPR) challenged more claims (15-25) than were asserted in the litigation (claim 15 only), promoting efficiency by resolving the validity of claims that would otherwise remain unaddressed.
• Finally, Petitioner asserted that denial under §325(d) was unwarranted because the prior art references relied upon in the petition (Gelb, Tivoli, Callaghan, Devarakonda) were never cited or considered by the Examiner during the original prosecution of the ’132 patent.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 15-25 of Patent 8,671,132 as unpatentable.