Sun Microsystems, Inc. v. Network Appliance, Inc.

Filing 357

ORDER Signed by Mag. Judge Elizabeth D. Laporte Granting re 346 Motion for Leave to File; Denying re 261 Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 6,868,417; Granting in Part & Denying in Part re 304 MOTION to Strike Improperly served Supplemental Expert Report of Gregory R. Ganger Regarding Infringement of U.S. Patent No. 6,868,417 and U.S. Patent No. 7,107,385. (edllc1, COURT STAFF) (Filed on 3/22/2010)

1 2 3 4 5 6 7 8 9 10 United United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION On October 29, 2007, Sun Microsystems, Inc. ("Sun") filed its Complaint, alleging that Network Appliance, Inc. ("NetApp") infringed and is infringing, directly and indirectly under 35 U.S.C. § 271, certain of its patents, by making, using, selling, or offering for sale certain data processing systems and related software. Sun seeks a declaratory judgment that certain patents owned by Sun are each not infringed, are invalid or unenforceable, as well as a permanent injunction and damages. On December 21, 2007, NetApp filed an Answer and Counterclaim, denying the material allegations of Sun's Complaint and asserting a number of affirmative defenses and counterclaims. Sun denies infringing any of the NetApp Patents, including the patent at issue in this motion (U.S. Patent Number 6,868,417 (the "`417 Patent")) and alleges that NetApp infringes a number of its patents instead. On December 23, 2008, this Court issued an Order Construing Claims (the "12/23/08 Order") in which it construed certain disputed terms and phrases contained in various claims in the patents at issue between the parties, including terms contained in the `417 patent. The parties subsequently conducted discovery, and each party has filed two motions in the abovev. NETWORK APPLIANCE, INC., Defendant. / SUN MICROSYSTEMS, INC., Plaintiff, No. C-07-05488 EDL ORDER DENYING SUN'S MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT OF U.S. PATENT NO. 6,868,417; GRANTING IN PART AND DENYING IN PART SUN'S MOTION TO STRIKE SUPPLEMENTAL EXPERT REPORT OF DR. GANGER; SUSTAINING NETAPP'S OBJECTION TO DECLARATION OF JEFF BONWICK; AND OVERRULING SUN'S OBJECTION TO ROBERT GITTENS' DEPOSITION TESTIMONY IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

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captioned 07-5488 case. On December 2, 2009, Sun filed a Motion For Summary Judgment Of Non-Infringement Of U.S. Patent No. 6,868,417 (the "`417 Motion") on the basis that its allegedly infringing product, ZFS, does not practice the "block level server providing service through implementation in terms of the [in]ode layer operations" claim limitation of the `417 patent. In Support of the `417 Motion, Sun filed a Declaration of Jeff Bonwick, to which NetApp objected in its opposition papers. In opposition to the Motion, NetApp filed a supplemental report of its expert, Dr. Ganger, and Sun objected to and moved to strike the supplemental expert report. The `417 Motion and Motion to Strike the Supplemental Report of Dr. Ganger were fully briefed, and a hearing was held on January 27, 2010. During oral argument, NetApp sought to introduce deposition testimony of Robert Gittens, and Sun objected to the evidence in a joint brief submitted following oral argument. Having considered the record in this case and the parties' statements at oral argument, and for the reasons set forth below, the Court hereby DENIES Sun's Motion For Summary Judgment Of NonInfringement of the `417 patent; GRANTS IN PART and DENIES IN PART Sun's Motion to Strike the Ganger Supplemental Report; SUSTAINS NetApp's objection to the Declaration of Jeff Bonwick; and OVERRULES Sun's objection to the deposition testimony of Robert Gittens. II. MOTION TO STRIKE SUPPLEMENTAL EXPERT REPORT OF DR. GANGER AND OBJECTIONS TO BONWICK DECLARATION AND GITTENS TESTIMONY On the evening that NetApp's Oppositions to the `417 and `385 summary judgment motions were due, NetApp served Sun with a Supplemental Expert Report of Gregory G. Ganger regarding infringement of the `417 and `385 Patents ("Supplemental Ganger Report"). In the Supplemental Ganger Report, Dr. Ganger states that he is providing the report "to address a number of statements in [the Court's Order Granting Sun's Summary Judgment Motion No. 2 Regarding the `211 Patent in the related -6053 case] that may be directly or indirectly relevant to my opinions concerning the `417 and `385 patents and that appear to misunderstand or misinterpret my opinions regarding ZFS." Corbett Decl. Ex. A (Ganger Supplemental Report) at ¶ 2. Dr. Ganger continues, "In this supplemental expert report, I clarify opinions provided in my Opening Report to avoid any future misunderstanding or misinterpretation of my opinions." Id. ¶ 3. 2

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The Court-ordered deadlines for initial and rebuttal expert reports were October 12 and November 2, 2009 (later modified to November 4) respectively, and the parties exchanged initial and rebuttal reports on these dates. There was no agreement to extend these deadlines. The only agreement between the parties concerning supplemental expert reports was contained in an email confirming that: "If circumstances require a liability witness to be deposed after expert reports are served, the parties may supplement their respective expert reports to address that deposition testimony and issues of documents reasonably related to that testimony." Williamson Reply Decl. Ex. A. Sun points out that the parties never agreed to allow supplementation of expert reports based on the Court's order in a related case, or anything other than subsequent depositions of liability witnesses. Sun moves to strike the Ganger Supplemental Report based on Federal Rule of Civil Procedure 26(a)(2)(c), which requires expert disclosures "at the times and in the sequence that the court orders." The Court-ordered deadlines for opening and rebuttal expert reports are undisputed. Sun argues that failure to comply with this rule requires that untimely expert testimony be excluded at trial, unless that party shows that its failure to disclose the information was substantially justified or harmless. See Fed. R. Civ. P. 37(c)(1). NetApp counters that the Supplemental Ganger Report is not untimely, and Sun's reliance on Rule 26(a) is misplaced, because the report is a proper Rule 26(e) supplementation. Rule 26(e)(1) provides for supplementation of parties' initial disclosures and discovery responses "in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect. . . " Rule 26(e)(2) is directed to expert witnesses specifically, and provides that: "For an expert whose report must be disclosed under Rule 26(a)(2)(B), the party's duty to supplement extends both to information included in the report and to information given during the expert's deposition. Any additions or changes to this information must be disclosed by the time the party's pretrial disclosures under Rule 26(a)(3) are due." NetApp contends that the supplemental report, triggered by the Court's summary judgment order in a related case on related issues, meets this standard. During oral argument on the `417 Motion, the parties agreed to submit their dispute 3

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regarding the Supplemental Ganger Report to the Court on the papers. A. Timeliness of the Supplemental Ganger Report

The Supplemental Ganger Report is not a proper Rule 26(e) supplement, which is reserved for the supplementation of "incomplete or incorrect" information. NetApp does not contend that the initial report contained any incorrect information, but instead states that the supplemental report "addresses opinions and subject matter that were disclosed and discussed in Dr. Ganger's October 12 Opening Report, but amplifies the explanation to respond to the Court's statements in its November 16 Order (or to newly discovered evidence)." Opp. at 3. NetApp argues that the new report does not break new substantive ground, but instead simply "explains his reasoning and basis for these opinions in direct response to the factual findings, characterizations, and discussion in the Court's November 16 Order, which he plainly could not have done" in the opening report. Opp. at 5. NetApp relies on cases where courts have allowed supplemental expert reports that clarify or amplify matters expressly referenced in the original report. See, e.g, Medtronic Vascular, Inc. v. Abbot Cardiovascular Systems, Inc., 2009 WL 2058245 (N.D. Cal. 2009) (noting that a party may not rely on Rule 26(e) as a way to remedy a deficient expert report or as a means of getting in a brand new report, but allowing portions of a supplemental report that "clarifies or amplifies matters expressly referenced in the original report without revising or reversing" the original opinion); Lucent Techs, Inc. v. Gateway, Inc., 2007 WL 5289734 (S.D. Cal. 2007) (denying motion to strike supplemental expert report made in response to court's earlier opinion regarding the expert's damage theory presented at earlier proceeding). However, Sun correctly points out that NetApp's timeliness argument ignores the parties' agreement regarding supplemental expert reports after liability witness depositions. This agreement clearly does not contemplate expert report supplementation every time the Court issues an order or expresses an opinion (even in a different but related case) on an ongoing basis in all three cases. Further, the cases Sun cites for its position are persuasive. In Leviton Mfg. Co. Inc. v. Nicor, Inc., 245 F.R.D. 524, 528 (D.N.M. 2007), a Court addressed whether to consider an untimely supplemental expert report filed after a summary judgment motion was fully briefed and before the 4

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hearing. The Court noted that Rule 26(e) "does not allow a party to file supplements intended to `deepen' or `strengthen' its own expert's prior rule 26(a)(2)(B)," and that the rule allowing an expert to supplement or correct "does not give license to sandbag one's opponent with claims and issues which should have been included in the expert witness' report . . . ." Id. (noting that the supplemental report appeared to be an effort to create an issue of fact for summary judgment). B. New Information

Sun further contends that the Supplemental Ganger Report is improper even under Rule 26(e), and there is no substantial justification for it, because it contains new opinions and substantially expands on prior opinions which could and should have been included in Dr. Ganger's opening expert report, which was served on October 12, 2009. Dr. Ganger was fully aware of Sun's non-infringement positions following the summary judgment briefing and hearing in the 07-6053 case, which occurred before he produced his initial report. Further, Sun argues that, to the extent that Dr. Ganger is attempting to clarify points made in his initial report, he should have made his points clear initially, particularly where he had all of the information and evidence he now relies on (other than the Court's summary judgment order) at that time. Finally, Sun contends that most of the depositions and documents Dr. Ganger relies on in the supplemental report were taken and produced well before his opening report. Corbett Decl. ¶ 4-5. However, because paragraphs 10-12 of the Supplemental Report address the recent deposition of Mike Shapiro, which Sun admits took place after Dr. Ganger's initial expert report was prepared, they are a proper supplement pursuant to the parties' agreement and the motion to strike is denied as to these paragraphs. NetApp counters that Sun placed the Court's prior summary judgment order at issue by relying heavily on it in its `417 summary judgment moving papers, and NetApp could not have known this when Dr. Ganger issued his opening report. However, the Court does not rely on its prior order regarding another patent to reach a decision in this matter, and any reliance on the Order by Sun, that is not also tethered to evidence and argument with respect to the patent at issue here,

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has been given no weight with respect to the `417 Motion.1 C. Prejudice 1. Case Management Mayhem

Sun argues that allowing the supplemental report will result in prejudice because the doors to discovery in this and the related cases will "come flying open" and the parties will spend additional time and resources on additional expert reports and depositions if Court orders become grounds for supplementing expert reports. Sun contends that, if the supplemental report is allowed, it will need to respond with another report, and then another round of expert depositions will be required. The Court agrees that, if this cycle continues with respect to all or even some of the Court's summary judgment orders in the cases going forward, a seemingly endless cycle of supplementation may well ensue, imposing skyrocketing costs and delays on all involved. 2. Opportunity to Respond

Sun argues that the Supplemental Ganger Report should also be excluded as prejudicial and unfair because Dr. Ganger prepared it with the benefit of having reviewed Sun's rebuttal expert report, an advantage that Sun did not have in preparing its own expert reports. See Lee v. City of Novato, 2004 WL 1971089 (N.D. Cal. 2004) (refusing to allow initial expert report where it was not produced until the date for rebuttal reports because of prejudice in giving other side chance to review opposing expert report and respond, essentially making it a rebuttal report and depriving opponents of opportunity to respond). NetApp counters that any prejudice can be cured by allowing Sun to depose Dr. Ganger again, and notes that Dr. Ganger's deposition based on his prior reports remains incomplete, so Sun has a day of his deposition remaining. Sun counters that one day is insufficient to question Dr. Ganger on his previous opinions as well as 60 pages of additional testimony, and that a deposition The supplemental report also purports to respond to the declaration of Jeff Bonwick submitted by Sun in support of its `417 summary judgment motion. See Ganger Supplemental Report at ¶ 26; Bonwick Decl. NetApp objects to the Bonwick Declaration as improper expert testimony that was not timely disclosed, does not conform to Rule 26, and should be stricken. The Court agrees with NetApp that the Bonwick Declaration contains improper expert testimony and will not be considered in connection with the `417 Motion. The Court notes that during oral argument, Sun stated that its `417 Motion does not reply on the Bonwick Declaration, so the Court's decision to sustain the objection to this evidence does not impact its substantive analysis of the Motion. To the extent that the Ganger Supplemental Report was submitted to rebut the Bonwick Declaration, that rebuttal is unnecessary.
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cannot cure the prejudice from his ability to preview Sun's expert reports in connection with the summary judgment motions before preparing his own. The Court agrees.

3.

Sun's Prior Supplemental Expert Reports

NetApp contends that Sun's opposition to the supplemental report is untenable in light of its own history of supplementing expert reports at least nine times, at times relying on NetApp's ability to depose the expert again to ameliorate any prejudice. Homrig Decl. ¶ 2. Sun responds that it has supplemented expert reports only four times, and each time was following a liability witness deposition, as specifically agreed upon by the parties. On balance, and considering the parties' arguments, the Court GRANTS IN PART Sun's Motion to Strike the Supplemental Ganger Report (as well as its Objection to Evidence concurrently filed), but DENIES the motion as to paragraphs 10-12. The report is generally untimely under Rule 26(a), and for the most part does not comport with the requirements of either Rule 26(e) or the parties' prior agreement concerning supplemental expert reports. It does not correct "incorrect or incomplete" information based on new information, but instead simply provides an additional gloss on a prior opinion that could have and should have been included initially. Further, Sun has persuasively shown both that it will be prejudiced if the supplemental report is allowed, and that allowing this report may create a cycle of discovery mayhem in all of the related cases going forward. The Court notes that during oral argument NetApp stated that its opposition is not dependent on the Supplemental Ganger Declaration. Therefore, the Court's decision to strike the Supplemental Ganger Report (except paragraphs 10-12) does not affect on its decision with respect the merits of the `417 Motion and will not prejudice NetApp. D. Sun's Objection to the Gittens Deposition Testimony

During oral argument on Sun's `417 Motion, NetApp cited the recent deposition testimony of Sun employee Robert Gittens, who testified in essence that Jeff Bonwick was someone who could abscond with somebody else's ideas. See 1/27/10 Tr. at 97. NetApp argued that this testimony calls into question Mr. Bonwick's credibility regarding, among other things, Sun's description of ZFS technology. Sun objected to the introduction of the Gittens testimony, and the Court ordered further 7

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briefing on the issue. On February 10, 2010, the parties submitted a joint brief on the issue of the Gittens testimony. NetApp argues that the Gittens testimony is relevant to Jeff Bonwick's credibility and whether there was an effort on the part of Mr. Bonwick (and therefore Sun) to conceal Sun's infringement of NetApp patents by crafting documents with an eye towards disguising infringement. NetApp cites cases in which courts have denied summary judgment where "the opposing party offers specific facts that call into question the credibility of the movant's witnesses." See Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1158 (Fed. Cir. 2004). NetApp argues that this testimony creates an issue of fact to defeat summary judgment. Sun counters that the Gittens testimony is irrelevant to the non-infringement issues before the Court. Sun contends that, despite NetApp's protestations, there is really no disputed issue as to the actual design and operation of the accused ZFS technology and the issue is one of characterization and nomenclature. The Court agrees that NetApp has not shown that Sun's description of how its product operates is inaccurate, and instead challenges whether what Sun calls a dnode is actually an inode. Therefore, to the extent NetApp believes that Gittens' testimony calls into question Bonwick's credibility regarding product nomenclature, the Court does not consider Mr. Bonwick's testimony for this purpose and, in any event, may not make a credibility determination as to his testimony. To the extent that Gittens' testimony challenges Bonwick's testimony on other points, Sun notes that NetApp does not specifically explain what should be discredited or why. While the Court finds Sun's points persuasive, the Court will not refuse to consider the Gittens testimony at this time. The Court does not believe that this testimony necessarily raises a triable issue of fact, but it denies the `417 Motion on other grounds and therefore there is no prejudice to Sun in allowing the evidence to come in. Therefore Sun's objection to the Gittens deposition testimony is OVERRULED. III. SUN'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,868,417 A. LEGAL STANDARD 1. Summary Judgment

Summary judgment shall be granted if "the pleadings, discovery and disclosure materials on 8

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file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. Pro. 56(c). Material facts are those which may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id. The court must view the facts in the light most favorable to the non-moving party and give it the benefit of all reasonable inferences to be drawn from those facts. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The court must not weigh the evidence or determine the truth of the matter, but only determine whether there is a genuine issue for trial. Balint v. Carson City, 180 F.3d 1047, 1054 (9th Cir. 1999). A party seeking summary judgment bears the initial burden of informing the court of the basis for its motion, and of identifying those portions of the pleadings and discovery responses that demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the moving party will have the burden of proof at trial, it must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party. On an issue where the nonmoving party will bear the burden of proof at trial, the moving party can prevail merely by pointing out to the district court that there is an absence of evidence to support the nonmoving party's case. Id. If the moving party meets its initial burden, the opposing party "may not rely merely on allegations or denials in its own pleading;" rather, it must set forth "specific facts showing a genuine issue for trial." See Fed. R. Civ. P. 56(e)(2); Anderson, 477 U.S. at 250. If the nonmoving party fails to show that there is a genuine issue for trial, "the moving party is entitled to judgment as a matter of law." Celotex, 477 U.S. at 323. 2. Patent Infringement a. Literal Infringement

"To prove infringement, the patentee must show that the accused device meets each claim limitation either literally or under the doctrine of equivalents." Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002). A determination of infringement, whether literal or under the doctrine of equivalents, is a question of fact. Id. "Literal infringement requires the patentee to prove that the accused device contains each limitation of the asserted claim." 9

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Id. "Summary judgment of no literal infringement is proper when, construing the facts in a manner most favorable to the nonmovant, no reasonable jury could find that the accused system meets every limitation recited in the properly construed claims." Id. Where the parties do not dispute any relevant facts regarding the accused product, but disagree over possible claim interpretations, the question of literal infringement collapses into claim construction and is amenable to summary judgment. General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997); Rheox, Inc. v. RMT, Inc., 276 F.3d 1319, 1324 (Fed. Cir. 2002) (same); Rambus, Inc. v. Hynix Semiconductor, Inc., 642 F. Supp. 2d 970, 977, n.6 (N.D. Cal. 2008) ("where two experts disagree about infringement, but do not dispute the facts regarding the accused device . . . the question of infringement is more appropriately viewed as a legal question of claim construction," and finding that because the parties' agreed as to the structure and function of the accused devices but disputed how the court's claim construction applied to those structures and functions, the dispute collapsed into questions of law for the court); cf. Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1375 (Fed. Cir. 2004) (distinguishing General Mills on the basis that only the structure of the accused devices had been stipulated to, not the disputed factual determination of whether the device met the claims as construed, but not addressing the scenario in which no reasonable juror could find that a certain claim limitation was met). In MyMail Ltd. v. America Online, Inc., 476 F.3d 1372, 1378 (Fed. Cir. 2007), the Federal Circuit reviewed a District Court order granting summary judgment of non-infringement. Because there were no material factual disputes as to the operation of the accused systems, and the parties' disagreements concerned whether the defendants' systems performed "authentication" as defined by the patent and construed by the district court, the Federal Circuit found that the issue reduced to a question of claim interpretation and affirmed summary judgment. See id. (noting that the accused product did not satisfy the authentication requirement as it did not validate the user's ID and password, as required by the patent's authentication process). These cases teach that the Court cannot leave it to the jury to decide the proper scope of the patent claim terms. 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) ("When the parties raise an actual dispute regarding the proper scope of the[] claims, the court, not the jury, must resolve the 10

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dispute."). NetApp disputes the applicability of this legal standard to the `417 Motion, arguing that the motion is one in which the parties dispute the relevant facts and disagree on claim interpretations, unlike in General Mills. NetApp argues that here the dispute is over application of claim terms, not their scope, and a "material issue of fact concerning how the asserted claims should be applied to the accused device may exist even where there is no dispute over the structure of the accused device." Opp. at 3. NetApp relies on Dorel v. Juvenile Group, Inc. v. Graco Children's Products, Inc., 429 F.3d 1043, 1047 (Fed. Cir. 2005), where the Federal Circuit reversed the trial court's decision that an accused car seat could not infringe as a matter of law because it lacked a seat separate from the base, which was required by the patent claims as construed. The Federal Circuit found that the question of "whether the top and bottom structures of the [accused] products are in fact the claimed `seat' and `base' of the asserted patents . . . is a question of fact that cannot be determined on summary judgment." Id. NetApp equates this to the question at play in the `417 Motion, which it views as whether what Sun has labeled a dnode is properly characterized as an inode under the Court's construction of the term. NetApp contends that this question is like that in Dorel, requiring "comparison of the accused product to a construed term with dense technical opinions, analyses and evidence proffered by each side," and is not subject to summary judgment. Opp. at 4. However, Dorel is distinguishable because it does not address the situation of an undisputed structure and operation of an accused device, and is instead a situation where the trial court endeavored to define the structure of the device despite the lack of evidence before it on the issue. Further, NetApp's Opposition makes no effort to explain why the general holding of General Mills, MyMail, and Rheox ­ that summary judgment is appropriate where there is no dispute as to the design of an accused product and the issue is whether the claim is broad enough to encompass the product is not applicable to this case. The fact that the issues raised involve dense technical opinions, analyses and evidence does not mean that the question cannot be decided as a matter of law. After all, density is hardly unusual in patent cases. b. Doctrine of Equivalents

"Infringement under the doctrine of equivalents requires the patentee to prove that the 11

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accused device contains an equivalent for each limitation not literally satisfied." Id. The Court may not apply the doctrine of equivalents so as to vitiate a claim limitation. Warner-Jenkinson, 520 U.S. at 29, 39 n.8. The Federal Circuit articulates the test for equivalence in two different ways. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008). Under the insubstantial differences test, "[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial." Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed.Cir. 2004); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)). Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it "performs substantially the same function in substantially the same way to obtain substantially the same result." Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001). "Where the evidence is such that no reasonable jury could determine two elements to be equivalent," summary judgment of non-infringement under the doctrine of equivalents is proper. Warner-Jenkinson, 520 U.S. at 39 n. 8. Summary judgment has been rejected because of conflicting expert testimony on the application of the function-way-result test. Crown Packaging Tech., Inc. v. Rexam Bev. Can Co., 559 F.3d 1308, 1315 (Fed. Cir. 2009) (holding that conflicting expert evidence regarding function establishes material issue of fact). "The doctrine of prosecution history estoppel prevents a patent owner from recapturing within the doctrine of equivalents subject matter surrendered to acquire a patent." Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304, 1312 (Fed. Cir. 2008) (citing Festo Corp. v. Sholetsu Kinzoku Kogyo Kabushiki, 344 F.3d 1359, 1365 (Fed. Cir. 2003)). Amendment-based prosecution history estoppel applies if an applicant amends a claim element during prosecution which narrows the scope of the claim in order to comply with a provision of the Patent Act. Festo, 344 F.3d at 1365-66. In such a case, the amendment creates a presumption of a "general disclaimer of the territory between the original claim and the amended claim." Felix v. American Honda Motor Co., 562 F.3d 1167, 1182 (Fed. Cir. 2009). To overcome the presumption, a patentee must show one of the following: "(1) that the equivalent was unforeseeable at the time of the patent application; (2) that the rationale underlying the amendment bore `no more than a tangential relation to the equivalent in question'; or (3) `some other reason suggesting that the patentee could not reasonably 12

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be expected to have described the insubstantial substitute in question." Voda v. Cordis Corp., 536 F.3d 1311, 1325 (Fed. Cir. 2008). If the patentee cannot overcome the presumption, prosecution history bars the patentee from relying on the doctrine of equivalents for the accused element. Festo, 344 F.3d at 1367. B. Patent Prosecution, Claims and Claim Construction Background

The '417 Patent, "Mechanism for Handling File Level and Block Level Remote File Access Using the Same Server," is directed to an apparatus and method for handling both file level and block level remote file accesses. The Abstract of the patent explains: An apparatus for handling file level and block level remote file accesses. The apparatus includes a block level server. The apparatus includes a file level server. The apparatus includes a storage layer implementing an inode layer performing inode operations, and storing data accessed by the file level and block level servers. The apparatus includes a management layer connected to the storage layer underlying the block and file level servers, which performs data management operations upon the underlying data. A method of handling file level and block level network file accesses. The method includes the steps of performing management operations by a management layer for a block level server and a file level server. Then there is the step of performing the servers' data accessing and updating operations using a vnode layer implemented on top of an inode layer. Then there is the step of storing data from the block level server or the file level server in a storage layer connected to the management layer. Williamson Decl. Ex. 1 ('417 Patent), Abstract. In the patent, "NAS" file servers utilize protocols that operate at the file level, while "SAN" servers utilize protocols that operate at the disk and block level. See id. at 15-21. The claimed invention has a file level server and a block level server, as well as a storage layer that implements an "inode layer" that performs "inode operations." Id. at 2:14-19, 3:20-23, 11:21-32, Fig. 11. Independent claim 1 of the patent provides: 1. An apparatus for handling file level and block level remote file accesses comprising: a block level server for serving block level data; a file level server for serving file level data and combined with the block level server;

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a storage layer implementing an [in]ode2 layer performing [in]ode operations, and storing data accessed by the file level and block level servers, the block level server and the file level server sharing the storage layer, the block level server providing service through implementation in terms of the [in]ode layer operations; and a management layer connected to the storage layer underlying the block and file level servers, which performs identical data management operations upon the underlying block level and file level data from either the block level server or the file level server, respectively. Williamson Decl. Ex. 1 ('417 Patent) at 11:21-37 (emphasis added). The parties agree that the `417 Patent contains several definitional teachings relevant to this Motion: · · "file systems" are called "volumes" within the meaning of the patent (`417 Patent at 5:30-36; Opp. at n.10; Beebe Decl. Ex. 3 (Ganger Report) at ¶ 50); the patent discloses at least two types of file systems ­ an "NAS volume" file system and a "SAN volume" filesystem (`417 Patent at 5:29-35, 10:50-53; Opp. at 6, 11; Ex. 3 at ¶ 50); the NAS volume filesystem contains a set of files in a directory tree (`417 Patent 5:30-36, 9:65-10:4; Opp. at 6, 11; Ex. 3 at ¶ 50); and the SAN volume filesystem contains a single file (`417 Patent at 5:30-36, 9:65-10:4, 10:48-53; Opp. at 6, 11; Ex. 3 at ¶ 50, 56).

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The parties also appear to agree that the `417 Patent contemplates an "inode" that can store status information about a file, opp. at 17-18; Reply at 9, though pursuant to the Court's claim construction order is not required to do so. During prosecution of the `417 Patent, the Examiner issued a rejection of claim 1 (and others) in light of two prior art references. Williamson Ex. 3 ('417 Patent file history, June 24, 2003 Office Action) at 2-3. The applicants responded by arguing that the prior art combination did not teach the specific layered architecture set forth in claim 1, referring to a management layer that is below the storage layer. Id. Ex. 4 ('417 Patent file history, November 24, 2003 response). On December 18, 2003, the PTO issued an Advisory Action rejecting the applicants' response. Id. Ex. 5 ('417 Patent File History, Dec. 18, 2003 Advisory Action). As a result, the applicants filed a

In its Claim Construction Order, the Court corrected a typographical error in the patent and changed "mode" to inode." 12/23/08 Claim Construction Order at 38. Hereinafter, any quotation of the patent term will reflect the Court's change to "inode."
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Preliminary Amendment, adding the claim language, "the block level server providing service through implementation in terms of the inode layer operations." Id. Ex. 6 ('417 Patent File History, Jan. 26, 2004 Preliminary Amendment) at 2. The applicants explained: As the examiner has stated in the Office Action, the lock server locks a block, and this can be interpreted as somehow or other the lock server 130 serves a block. Accordingly, applicants have amended Claims 1 and 12 to more specifically define the operation of the block level server. That is "the block level server providing service through implementation in terms of the inode layer operations." Thekkath does not teach or suggest this limitation whatsoever. Id. at 9. The Examiner ultimately allowed the amended claims, including claim 1, after concluding, "The prior art of record . . . fails to anticipate and/or suggest: a method and an apparatus for handling file level and block level remote file accesses comprising: a block level server providing service through implementation in terms of the inode layer operations as recited in claims 1 and 12." Id. Ex. 7 ('417 Patent File History, March 2, 2004 Notice of Allowability) at 2. The Notice of Allowability did not mention the management layer, or the position of servers relative to the storage layer. Id. The Court has previously construed the terms "inode operations" and "the inode layer operations" to mean "operations performed on inodes, where an inode is a file system structure for pointing directly or indirectly to data blocks of a file, including blocks that only include metadata." 12/23/08 Claim Construction Order at 38 (emphasis added). In its Claim Construction Order, the Court noted that: [A]t the hearing, both sides' experts and Sun's counsel agreed that inode as used in the patent could be defined as a file system structure for pointing directly and/or indirectly to data blocks, including blocks that only contain metadata, RT 184-195, and NetApp's expert in effect conceded that the phrase "of a file" could be added after "blocks," provided that "file" is interpreted broadly. RT 196. The Court therefore accepts this construction. However, other than the description of inode in the preferred embodiment, which cannot suffice by itself, there is no support for the limitation "contains status information about the file" that was initially proposed by Sun. The Court therefore declines to adopt that limitation. As the parties did not brief the issue of the meaning of "file," which was raised for the first time at oral argument, the Court declines to construe "file" at this time. Id. at 37. 15

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C.

NetApp's Infringement Assertions

Sun describes its ZFS product in great detail at pages 5 through 15 of its Motion. Because NetApp does not actually challenge Sun's description of the pertinent structure and operation of ZFS (though it challenges how certain features are labeled), the Court relies generally on Sun's description of ZFS. See Motion at 5-15; Opp. at 14-18 (citing Sun's description of ZFS in the moving papers as evidence of how ZFS operates); Opp. n.15 ("no dispute" that the ZFS On-Disk Specification generally describes ZFS structures accurately). For ease of reference, Sun's nomenclature as to "file," "filesystem," "object," "volume," "inode," are used in the following general description of the technology at issue, but the Court notes that a primary dispute in this Motion is whether Sun's labels for the various parts of ZFS are accurate. Sun's own nomenclature as to the various parts of its product is not determinative of whether the accused device meets the patent claims, and the Court has not relied on Sun's labels in its infringement analysis. ZFS is a universal storage system that operates as a pool of storage to support what Sun refers to as "filesystems," as well as other types of data sets, including "volumes," that operate on top of the storage pool. ZFS has the ability to create filesystems for file storage using the ZFS POSIX Layer ("ZPL") software module, and has separate software for creating volumes ("ZVOLs") for block-based, or volume, storage. See generally Williamson Decl. Ex. 10 (ZFS Specification) at 5, 45, 55. According to Sun, this is different from a traditional filesystem, where the basic building blocks are a set of physical disks which are combined into "volumes," and within each volume the user can create a filesystem that can be used to manage files. A traditional filesystem typically spans the entire volume and its size is limited by the size of the volume it is in. This type of filesystem can create and manage files, directories and other file system structures. In ZFS, the physical disks form a pool of storage and sets of disks are not combined into separate volumes, so the same storage pool can be shared by numerous ZPL filesystems as well as, among other things, ZVOLs. Therefore, a ZPL filesystem typically does not span the entire storage pool, and each ZPL filesystem is not assigned a 16

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predefined range of blocks. Instead, storage is allocated from the pool to ZPL filesystems and ZVOLs on an as-requested basis, so that these objects can grow and shrink dynamically. See Williamson Decl. Ex. 12 at Figs. 1-2. ZFS includes a data management unit ("DMU") software layer that creates storage "objects," which consist of blocks of storage allocated from the data pool. ZFS objects are generic data structures used for storage of blocks, files, snapshots and metadata. The ZFS Specification explains that the DMU "consumes blocks and then groups them into logical units called objects. Objects can be further grouped by the DMU into object sets." Id. Ex. 10 at 22. There are many different types of objects within ZFS, including one that contains the data for a ZPL "plain file" and another that contains the data for a ZVOL. Id. at 22-23, 27. Some objects created by the DMU layer are used by the ZPL to create what look like POSIX filesystems, while others are used by the ZFS Volume Emulator to create ZVOLs. Id. at 45, 55; see also id. at 26, 29; Motion at 14, Fig. 2. ZFS does not implement ZVOLs via the ZPL filesystem layer or its files, but instead by using two objects provided by the DMU layer. One of these objects (DMU_OT_ZVOL_PROP) contains the volume size attribute of the ZVOL, and the other (DMU_OT_ZVOL) stores the contents of the ZVOL. See Williamson Decl. Ex. 13 at 8; Bonwick Reply Decl. ¶ 5. Objects in the DMU are managed with data structures known as "dnodes." A number of other file systems (including NetApp's WAFL and the `417 Patent) use structures known as "inodes" to manage files. According to Sun, dnodes and inodes both contain pointers to data blocks on disk, but dnodes were designed to differ from inodes in two respects. First, dnodes do not all point to the data blocks of a "file," and instead point to the data blocks of an "object," which may be a ZPL plain file or may instead be something other than a file, such as a ZVOL, that is not used by the ZPL layer. Second, dnodes do not contain at least some of the information typically associated with "traditional" inodes that refer to files, such as permissions, access and modification times, and other file-related metadata. Bonwick Reply Decl. ¶ 6. Instead, according to Sun, a ZFS dnode is a generic data structure that lacks file-specific information and operates at a 17

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different software level (the DMU) than the layer that creates "files" (the ZPL). ZFS also uses "znodes" for ZPL filesystem objects. According to Sun, these are necessary because dnodes are generic and do not contain file-specific information,. Znodes are contained in the "bonus buffer" of the dnode for filesystem objects and store information about ZPL files that are needed in a filesystem. Only those objects that contain a znode in their dnode bonus buffer are recognized by ZFS as filesystem objects, because znodes are only present in object types used by the ZPL filesystems and are not present in the dnodes of other object types, such as those used to store ZVOLs.3 In the Court's prior Orders Granting Summary Judgment of Non-Infringement of U.S. Patent No. 6,892,211 in favor of Sun, the Court examined evidence concerning the structure and function of Sun's ZFS technology, the same technology at issue in this Motion. In its `417 Motion, Sun relies on statements made by the Court in those prior Orders as support for its description of ZFS and arguments in favor of summary judgment. See Motion at 15-17. NetApp counters that the Court's prior Orders were directed to an entirely different aspect of ZFS and the patents have two entirely different understandings of the term "filesystem," and thus the Court's statements in those Orders are not binding for purposes of this Motion. Opp. at n.7. Neither party cites any caselaw to support their position on the Court's prior statements regarding ZFS. However, the Court's prior description of ZFS in the context of the prior motions was necessarily based on the evidence before it at the time, and the Court was not making all-purpose "findings of fact" that would be applicable in future proceedings. Therefore, the Court's prior statements in a different (albeit related) case, in a different context, relating to a different patent, are not binding as to this Motion. NetApp does not dispute Sun's characterization of its infringement contentions as follows:

The Court reiterates that Sun's own labels and nomenclature do not resolve the issue of whether what Sun's calls a "dnode" or "znode" actually meets the patent's "inode" claim term. They are used in this description of ZFS to signify the features themselves, but are analyzed below without regard to the labels given by Sun.
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· · · ·

The "block level server for serving block level data" is satisfied through the creation and use of a ZFS Volume (ZVOL); The "file level server for serving file level data" is satisfied by the ZFS POSIX Layer (ZPL) which serves file level data; The "storage layer" is satisfied by the ZFS DMU; The requirement that the "block level server provid[e] service through implementation in terms of the inode layer operations" is satisfied by operations performed on two ZVOL dnodes, the DMU_OT_ZVOL and DMU_OT_ZVOL_PROP dnodes.

Motion at 17. Sun correctly notes that, under the Court's construction of the relevant claim terms, the infringement contentions require that the ZVOL dnodes constitute "inodes," that is, "file system structures" that point to "data blocks of a file." Id. at 22. Despite its arguments as to the appropriate legal standard, NetApp does not actually challenge Sun's description of the structure of the accused product or its functionality, or provide any evidence that the product operates other than as Sun describes. Instead, NetApp challenges the nomenclature used by Sun to label the various parts and functions of its ZFS product, in particular the "dnode," and argues that under the definitions stated in the `417 Patent itself there is at least a triable issue of fact regarding literal infringement. See Opp. at 4 ("The relevant fact in dispute is whether what Sun has self-servingly labeled a dnode is properly characterized as an inode under the Court's construction of that term.") D. Sun's Motion 1. Literal Infringement a. Is a ZVOL a "Filesystem" as Defined By the `417 Patent?

Sun's Motion first argues that it is undisputed that a ZVOL is not a filesystem or part of a filesystem (and thus a ZVOL dnode is not a "filesystem structure"). It relies on the Court's prior `211 Patent summary judgment order, in which the Court stated that, "ZFS as a whole does more than the filesystems that it includes below the MOS, such as manage the relationships between the filesystems, and also manages other components 19

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besides filesystems such as volumes." `211 Order at 18; see also id. at 9, 5. Sun then points generally to the ten pages of its brief discussing the technical aspects of ZFS, but does not specifically point to any portion of the `417 Patent defining "filesystem" or the evidence regarding ZFS or ZVOLs, to support its contention that ZFS is a universal storage system that supports both filesystems and other types of data sets including ZVOLs. See Motion at 22. Sun simply contends that "file systems and ZVOLs are separate object sets that are created by separate ZFS software modules," again simply referring back to pages 5-15 of its brief generally explaining the technology. Id. NetApp counters that a ZVOL itself is a filesystem as the term is used in the patent, by pointing to the SAN filesystem described in the `417 Patent. NetApp contends that one object within a ZVOL contains blocks representing a virtual disk, and that this object corresponds to a SAN filesystem which also contains only one file. On Reply, Sun argues that the foregoing constitutes a new argument not found in either NetApp's infringement contentions or Dr. Ganger's Expert Report or Supplemental Expert Report, and should therefore be ignored for purposes of this Motion. The Court declines to ignore the argument, but does not find it persuasive. Sun disputes NetApp's equation of a ZVOL to a SAN filesystem, noting that a SAN filesystem contains a single file, while it is undisputed that a ZVOL has at least two objects. At oral argument, Sun further specified that the `417 Patent only defines two types of filesystems (called "volumes" in the patent): (1) NAS volumes containing a set of files in a directory tree; and (2) SAN volumes containing a single file whose blocks represent a virtual disk. `417 Patent at 5:30-36; see also id. at 9:65-10:4, 10:48-53. Sun cited the portions of NetApp's Opposition and Dr. Ganger's report which concede that the patent only contemplates these two types of filesystems. See Opp. at 6, 11; Beebe Decl. Ex. 3 (Ganger Report) ¶¶ 50, 56. Sun contends that a ZVOL does not correspond to either of these types of filesystems. It is not a SAN file because it does not contain a single file; rather, it contains no files. Alternatively, even if an "object" is equated to a "file," a position that the Court agrees with as set forth below, a ZVOL could still not be a SAN 20

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filesystem because it contains two objects, not one. Less persuasively, Sun notes that Dr. Ganger has previously testified that a "logical volume" or "logical disk" is not a filesystem. See Williamson Reply Decl. Ex. A (Ganger Depo.) at 171, 184-85, 255. Dr. Ganger has also indicated that ZVOLs at least create "logical volumes," which according to Dr. Ganger are not filesystems. See Ganger Report ¶¶ 141, 145 (ZVOL creates "logical volumes" or "block devices"). Sun argues that this testimony establishes that ZVOLs are not filesystems, but the Court disagrees that the evidence is so clear. To support its position that a ZVOL is a filesystem, NetApp points to internal Sun documents relating to ZFS Intent Logs ("ZIL"), which save transaction records of system calls that change the file system in memory, and statements that there is "one ZIL per file system" and ZILs permit ZFS to provide consistent data on disk by following "traditional filesystem semantics." See Beebe Decl. Ex. 19 (ZFS On-Disk Specification) at 51; see also Ex. 24 (ZFS Intent Log) at SUN00101986. NetApp notes that ZILs are not only associated with ZFS filesystems, as might be expected given Sun's position that filesystems are separate from and entirely different than ZVOLs, but are also associated with ZVOLs, indicating that ZFS engineers treated ZVOLs as equivalent to filesystems for this limited purpose. See Beebe Decl. Ex. 19 at 51; Ex. 24 at SUN00101985, SUN00102001 ("Every object set (ZFS/ZVOL) has a ZIL associated with it."). This argument is not entirely persuasive, because the fact that a ZVOL is associated with something that is also associated with filesystems does not necessarily turn a ZVOL into a filesystem. Given the foregoing, Sun has a somewhat stronger argument that a ZVOL is not filesystem, as the term is understood in the `417 Patent. However, the Court need not and does nor decide this issue, because there is a triable issue of fact as to whether ZFS as a whole is a filesystem. Even if arguably no reasonable juror could find a ZVOL itself to be a filesystem, if ZFS as a whole can be a filesystem then a ZVOL and its dnode structure contained therein can be a "filesystem structure." b. Is ZFS as a Whole A "Filesystem"? 21

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Sun relies heavily on the Court's `211 Patent summary judgment order for the position that ZFS as a whole is not a filesystem, without any explanation or citation to evidence. Motion at 23 (generally citing `211 Order at 5-9, 12-18). At oral argument, Sun also cited the ZFS On-Disk Specification's "Object Set Overview" for the position that ZFS in more than a filesystem because it provides the ability to create four types of object sets: filesystems, clones, snapshots and volumes. Williamson Decl. Ex. 10 at 29; see also id. at 22-23 (distinguishing between plain file objects and ZVOL objects), Ex. 13 at 8. Sun contends that its position that ZFS as a whole is not a filesystem is further supported by NetApp founder David Hitz's statements regarding the question, "Is WAFL A Filesystem?" See Williamson Decl. Ex. 17. In a December 2008 blog entry, Mr. Hitz states, "This top half/bottom half structure explains the confusion about WAFL. My current view is that WAFL contains a filesystem, multiple filesystems actually, but that's different from being a filesystem." Id.4 From this document, Sun concludes that the Court, NetApp and Sun agree that technologies like ZFS and WAFL contain filesystems but are not themselves filesystems. NetApp correctly counters that there is at least a triable issue of fact on this point. See Beebe Decl. Ex. 3 (Ganger Report) at ¶ 44-51 (ZFS is a filesystem). As discussed above, the Court has sustained NetApp's objection to the Bonwick Declaration, and stricken most of Dr. Ganger's supplemental report, so much of the evidence discussed in this context is not being considered. However, Dr. Ganger's initial expert report, coupled with other evidence referring to ZFS as a whole as a filesystem, does create a fact question as to whether ZFS as a whole is a filesystem under the patent. See Beebe Decl. Ex. 51 (BigAdmin System Administration Portal) at 2 (generally referring to ZFS as a "transaction-based file system," but also stating that it is a combination of a filesystem and volume manager); Ex. 46 (Ahrens Weblog) at SUN00011643 (same). However, Sun fails to note that the cited blog entry is from December 2008, more than a decade after WAFL was created, and the first line of the entry states, "Many people think WAFL is a filesystem. I certainly thought so fifteen years ago when I wrote it . . ." Id. NetApp points out that this can be explained by the fact that Mr. Hitz used the term "filesystem" more broadly in his earlier patent than in the blog entry years later.
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In its Reply, Sun contends that the patent discloses at least two types of filesystems (NAS and SAN filesystems), but does not disclose that either is or can be a part of the other. Reply at 9. At oral argument, Sun elaborated that the `417 Patent states that these filesystems can reside on a "partition" of a storage pool (`417 Patent at 5:29-35) and that nothing in the patent indicates that the partition or the storage pool is an overarching filesystem. Therefore, according to Sun, ZFS as a whole cannot be seen as a filesystem of which a ZVOL is a filesystem structure. Sun notes that Dr. Ganger's expert report does not directly cite the `417 patent for his opinion that ZFS as a whole is a filesystem, and instead his opinion relates primarily to another patent. See Beebe Decl. Ex. 3 (Ganger Report) at ¶ 44-51. However, paragraph 50 of Dr. Ganger's report cites the `417 Patent specification, acknowledges that the patents use the term "filesystem" somewhat differently, but contends that the `417 patent's usage of the term is inconsistent with a narrow definition. Given that the evidence that Sun cites is equivocal on this point at best, and that NetApp points to some expert testimony in its favor, reasonable jurors could disagree as to whether ZFS as a whole is a file system. If there is a triable issue as to whether ZFS as a whole can be considered a filesystem, then it follows that there is a question as to whether a ZVOL dnode contained therein can be considered a "filesystem structure," an issue discussed further below.5 c. Are ZVOL Dnodes "Inodes"?

Sun next contends that ZFS cannot infringe as a matter of law because the two ZVOL-specific dnodes that NetApp accuses of being the claimed "inode" ­ DMU_OT_ZVOL and DMU_OT_ZVOL_PROP ­ are not in fact inodes. Sun's argument appears to be as follows: ZFS supports a variety of object sets, including both filesystems and volumes. Typically in other technology, an "inode" points to files, and therefore The Court notes that in the context of the `211 Patent summary judgment order, it indicated that it did not think a reasonable juror could find ZFS as a whole to constitute a "filesystem," regardless of the labels attributed to ZFS and under either parties' proposed construction of the term. However, the issues and evidence presented to the Court were different in considering the previous motion, and the Court has considered this motion in the context of the evidence and argument as to the `417 Patent.
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contains file-specific information and can be part of a filesystem. In the case of ZFS, because ZFS can support both files and volumes, there is nothing as specific as an inode, so Sun named the corresponding feature a "dnode" because it does not just point to files but can also point to volumes. In the case of ZVOLs, there are two types of dnodes that point to ZVOLs, but neither contains "file-specific information" and neither is part of a "filesystem," as Sun contends is required to be an "inode." Instead, it is only in the case of ZFS filesystems (as opposed to ZVOLs) that a structure called a "znode" contains filerelated information and is placed in the "bonus buffer" of the dnode pointing to the filesystem. Since the dnodes pointing to ZVOLs do not have znodes containing filespecific information and are therefore not related to filesystems, and also because they do not point to data blocks "of a file," according to Sun they do not constitute inodes as claimed in the patent (where inodes have been construed by the Court as "a file system structure for pointing directly or indirectly to data blocks of a file"). i. Are ZVOL Dnodes "File System Structures"?

Sun argues that the universal storage nature of ZFS results in the use of intentionally generic objects that can support a variety of object sets, including filesystems and ZVOLs. These generic objects are represented by dnodes, which are also generic structures. Sun contends that ZVOL dnodes differ from inodes because they do not contain much of the information typically associated with inodes that refer to files (i.e., they do not contain file specific information and cannot be used as part of a filesystem). To support this contention, Sun generally cites various pieces of evidence without analysis. See Motion at 23 (referring to Williamson Decl. Ex. 8 (Bonwick Depo.) at 24145 (discussing whether a dnode is an inode and stating that "inode" is not a well defined term outside of particular filesystems); Ex. 14 (Maybee Depo.) at 125-31 (stating that dnodes and znodes are different than inodes, but agreeing that the ZFS team uses the term "inode" as a point of reference to describe dnodes and znodes to those unfamiliar with the ZFS system); Ex. 10 (ZFS On-Disk Specification- Draft) at 45 ("All filesystem objects contain a znode_phys_t structure in the bonus buffer of it's [sic] dnode. This structure 24

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stores the attributes for the filesystem object."). Sun contends that, when a dnode is used as part of a ZFS filesystem, a znode containing the necessary file related information is placed in the bonus buffer of the dnode. See Williamson Ex. 10 at 45; Ex. 16 (Ahrens Depo.) at 312, 320; Ex. 8 at 241-42. However, with respect to ZVOLs, neither of the two ZVOL-specific dnodes include a znode (or the file-specific information contained in znodes) and, therefore, according to Sun, they do not and can not represent files. See Ex. 10 at 55 (describing ZVOLs as simple object sets with two objects (or dnodes), neither of which is a znode). Because dnodes do not and cannot represent files, Sun contends that they are not "file system structures" as required of an inode. NetApp counters with internal Sun evidence equating dnodes with inodes. See Beebe Decl. Ex. 31 (Bonwick Email) at SUN00261431 (email from Jeff Bonwick agreeing that "ZFS inodes are dnodes"). NetApp also counters with evidence that a dnode can be considered a "filesystem structure." NetApp first points to the `417 Patent itself, which NetApp argues takes a broad view of what constitutes a "filesystem." It notes that the patent discloses two different types of filesystems: an NAS filesystem containing a set of files in a directory tree; and a SAN filesystem containing a file holding a representation of a virtual disk, with no directories or hierarchical relationship between files. Beebe Decl. Ex. 4 (`417 Patent) at 5:31-36. NetApp also argues that the patent discloses a third type of filesystem, shown in Figure 3 as a "Superblock," but the testimony that it cites to support this theory is equivocal and speculative at best, and therefore unpersuasive. See Ex. 20 (Brandt Depo.) at 828-29 (stating that Figure 3 appeared to be "reusing a file system structure," but he was unsure whether or not that means it is part of a file system). NetApp argues that the Superblock is a filesystem or filesystem structure because it contains inodes pointing to other filesystems. NetApp also points to Dr. Ganger's opinion that a "dnode is a ZFS structure (i.e., a file system structure) for pointing directly or indirectly to data blocks of a file." Beebe Decl. Ex. 3 at ¶ 58. NetApp argues that Sun's interpretation of a "file system structure" as only meaning a structure within a file system 25

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is too narrow, because the patent takes a broader view of what a filesystem is. Sun's Reply focuses on its position that neither a ZVOL or ZFS as a whole is a filesystem and therefore their constituent parts cannot be filesystem structures. Reply at 12. Sun argues that NetApp's position that something outside of a filesystem (i.e., a ZVOL) can be a "filesystem structure" has no basis in the patent. Sun notes that, in the `417 Patent, the claimed "inode layer operations" through which the claimed "block level server provid[es] service" are only performed on the inode of the single block of a SAN filesystem, and are not performed on inodes outside of a SAN filesystem, indicating that the patent only contemplates inode operations being performed on structures within the SAN filesystem and not other, more tangentially related structures. See `417 Patent at 11:29-31; 9:61-10:14; see also Beebe Dec. Ex. 3 (Ganger Report) at ¶ 18. Sun also cites NetApp's expert Dr. Ganger's