Paper 49
`Entered: August 22, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ACCELERON, LLC,
`Patent Owner.
`_______________
`
`Case IPR2013-00440
`Patent 6,948,021 B2
`_______________
`
`
`
`Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`Entered: August 22, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ACCELERON, LLC,
`Patent Owner.
`_______________
`
`Case IPR2013-00440
`Patent 6,948,021 B2
`_______________
`
`
`
`Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`I. INTRODUCTION
`A. Background
`Dell Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–4, 6–20, 22–24, 30, and 34–36 of U.S. Patent No.
`6,948,021 B2 (Ex. 1001, “the ’021 patent”). Paper 7 (“Pet.”). We instituted
`trial on the following grounds: (1) anticipation of claims 1–4, 6–9, and 13–
`20 by Hipp;1 and (2) obviousness of claims 10–12, 30, and 34–36 over Hipp
`and Gasparik.2 Paper 10 (“Dec. on Inst.”). Trial was not instituted for
`claims 22–24. Dec. on Inst. 3, 11–13, 17. During trial, Patent Owner filed a
`Patent Owner Response (Paper 23, “PO Resp.”), and Petitioner filed a Reply
`to the Patent Owner Response (Paper 28, “Pet. Reply”). Oral argument was
`held on September 4, 2014, and a transcript of the hearing is in the record.
`Paper 40 (“Tr.”).
`On December 22, 2014, the Board issued a Final Decision in
`accordance with 37 C.F.R. § 42.73. Paper 41 (“Final Dec.”). The Board
`concluded that Petitioner had established, by a preponderance of the
`evidence, that claims 1–4, 6–9, 13, and 18–20 of the ’021 patent are
`unpatentable as anticipated by Hipp and claims 10–12 and 30 are
`unpatentable as obvious over the combination of Hipp and Gasparik. Final
`Dec. 26. The Board further concluded that Petitioner had failed to establish,
`by a preponderance of the evidence, that claims 14–17 and 34–36 of the
`’021 patent are unpatentable. Id. at 14–18, 23–24. Both parties appealed the
`decision to the United States Court of Appeals for the Federal Circuit.
`
`
`1 U.S. Patent No. 6,757,748 B1, issued June 29, 2004 (Ex. 1004, “Hipp”).
`2 U.S. Patent No. 6,157,974, issued Dec. 5, 2000 (Ex. 1007, “Gasparik”).
`2
`
`
`
`
`
`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`Claims 3, 14–17, 20, and 34–36 were the only claims involved in the
`appeals.
` On March 15, 2016, the Federal Circuit issued a decision affirming-
`in-part and vacating-in-part the Board’s decision, and remanding the case to
`the Board. Dell, Inc. v. Acceleron, LLC, 818 F.3d 1293 (Fed. Cir. 2016).
`The Federal Circuit affirmed the Board’s determination that claims 14–17
`and 34–36 are not unpatentable over Hipp or Hipp and Gasparik. Id. at
`1298–99. The Federal Circuit vacated the Board’s decision that claims 3
`and 20 are unpatentable over Hipp and remanded for reconsideration of
`those claims. Id. at 1299–1301.
`On May 26, 2016, and at the request of the parties, we granted
`additional briefing to permit the parties to address how the Federal Circuit’s
`decision affects this proceeding. Paper 46 (“Remand Order”). Petitioner
`and Patent Owner each filed the authorized briefing.3 Paper 47 (“Pet.
`Remand Br.”); Paper 48 (“PO Remand Br.”).
`In view of the guidance from the Federal Circuit, and for the reasons
`set forth below, we determine that Petitioner has failed to establish by a
`preponderance of the evidence that claims 3 and 20 are unpatentable.
`B. The ’021 Patent
`The ’021 patent is titled “Cluster Component Network Appliance
`System and Method for Enhancing Fault Tolerance and Hot-Swapping” and
`
`
`3 Petitioner’s Remand Brief urges us to consider the argument presented at
`oral hearing for claim 3 that the Federal Circuit found objectionable. See
`Pet. Remand Br. 6–7. That suggestion goes beyond the scope of our
`Remand Order, which limited the post-remand briefing for claim 3 to
`arguments presented in Petitioner’s prior written submissions. Remand
`Order 3. Accordingly, we do not consider that argument.
`
`
`
`3
`
`
`
`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`generally relates to a computer network appliance including CPU modules, a
`power module, and an Ethernet switch module having hot-swappable
`connectors corresponding to mating hot swap connectors on a backplane
`board. Ex. 1001, 3:18–23. The ’021 patent describes a computer network
`appliance that allows replacement of the various modules via hot swap
`connectors in order to reduce the mean time to repair the computer network
`appliance. Id. at 5:53–59.
`Figure 1 of the ’021 patent, reproduced below, is a schematic
`illustration of computer network appliance 100.
`
`
`As shown above in Figure 1, computer network appliance 100 includes CPU
`modules 102(a)–(e), power module 106, microcontroller module 108, and
`Ethernet switch module 110 connected to the backplane 104 via hot swap
`connectors. Id. at 3:18–23, 32–37. A chassis 150 encloses backplane 104
`
`
`
`4
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`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`and contains caddies 152 that hold the modules while providing air flow
`from the front to the rear of the chassis. Id. at 2:5–6, 3:32–34.
`C. Relevant Claims
`Claims 3 and 20 are the only claims at issue in this decision. Claim 3
`ultimately depends from claim 1 (by dependency from claim 2), and claim
`20 is independent. Each of those claims is reproduced below.
`1. A computer network appliance, comprising:
`a plurality of hot-swappable CPU modules, wherein each
`CPU module is a stand-alone independently-functioning
`computer;
`a hot-swappable power module;
`a hot-swappable ethernet switch module; and
`a backplane board having a plurality of hot swap
`mating connectors, wherein the at least one
`backplane board interconnects each of the CPU
`modules with the at least one power module and the
`at least one ethernet switch module, such that the at
`least one power module and the at least one ethernet
`switch module can be used as a shared resource by
`the plurality of CPU modules.
`Id. at 9:2–15.
`2. The computer network appliance of claim 1, further
`comprising a chassis providing physical support for a
`CPU module, the power module, the ethernet switch
`module and the backplane board.
`Id. at 9:16–19.
`3. The computer network appliance of claim 2,
`wherein the chassis comprises caddies providing air
`flow from the front to the rear of the chassis.
`Id. at 9:20–22.
`20. A computer network appliance comprising:
`a hot-swappable CPU module;
`
`
`
`5
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`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`
`a hot-swappable power module;
`a hot-swappable ethernet switch module; and
`a backplane board having a plurality of hot swap
`mating connectors; and
`a microcontroller module and a dedicated ethernet
`path, wherein the dedicated ethernet path is separate
`from a switched fast ethernet connection and
`provides
`the microcontroller module with a
`connection to remotely poll the CPU module, the
`power module and the ethernet switch module;
`wherein each of the CPU module, the power module
`and the ethernet switch module includes a hot swap
`connector for connecting with a specific hot swap
`mating connector of the backplane board.
`Id. at 10:18–33.
`
`II. DISCUSSION
`A. Claim 3
`1. The Federal Circuit Decision
`The Federal Circuit determined that, in our Final Decision, we
`improperly considered arguments presented by Petitioner for the first time at
`oral hearing. Dell, 818 F.3d at 1300–1301. In view of the guidance from
`the Federal Circuit, on remand, we consider Petitioner’s anticipation
`challenge to claim 3 based on the disclosure from Hipp cited in the Petition.
`We do not consider the arguments presented in the Petitioner’s Reply
`because those arguments are new and non-responsive to the Patent Owner
`Response, as explained below.
`2. Analysis
`There is no dispute between the parties as to the construction of the
`term “caddy.” Both parties agree that term means “a carrier for a module.”
`
`
`
`6
`
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`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`Tr. 17:16–18:5; PO Resp. 12. The dispute centers instead on the
`identification of the claimed caddies in Hipp, and whether the structure
`identified as a caddy in Hipp is a carrier for a module.
`The Petition identifies Hipp’s articulating door 262, which supports
`box fans 264–269, as corresponding to the caddies recited in claim 3. See
`Pet. 17 (“The articulating door [262] performs the same function as the
`caddies of the ’021 Patent.”). In response, Patent Owner notes that “the
`claim recites that the single chassis comprises multiple caddies” and
`contends that Hipp “includes only a single articulating door 262.” PO Resp.
`26. Patent Owner additionally contends that Hipp “fails to disclose any
`structure that is a carrier for a module.” Id. at 24.
`The issue of whether Hipp discloses caddies is addressed again in
`Petitioner’s Reply. There, Petitioner contends that “the mounting hardware
`for these box fans are ‘caddies,’ in the sense that they are carriers for the
`fans” and that “[t]he fan hardware are not the only caddies taught by Hipp”
`because “Hipp also discloses ‘two power supply mounting mechanisms
`278.’” Pet. Reply 5 (emphasis omitted). On remand, Patent Owner
`contends this is a new argument not properly raised in a Reply and should
`not be considered. PO Remand Br. 3–5. We agree.
`Petitioner’s Remand Brief includes only a footnote addressing why
`the argument that the fan mounting hardware elements are “caddies” is not
`new or non-responsive and therefore should be considered. See Pet. Remand
`Br. 3–4. Petitioner contends that a changed claim construction justified the
`inclusion of the argument in the Reply: “[Patent Owner] first proposed a
`construction for ‘caddy’ in its patent owner response. As such, [Petitioner]
`first addressed anticipation under that proposed construction in its reply as
`
`
`
`7
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`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`allowed by 37 C.F.R. § 42.23(b) (‘A reply may only respond to argument
`raised in the corresponding opposition or patent owner response.’).” Pet.
`Remand Br. 3 n.2.
`We are not persuaded by this argument. The “new” construction that
`Petitioner references is that a “caddy” means “a carrier for a module.” See
`PO Resp. 12. The difference between the arguments in the Petition and the
`Reply noted above is not about what is considered the module in Hipp, but
`about what is considered the carrier. Thus, the Petition identifies articulating
`door 262 in Hipp as carriers for box fans 264–269, while the Reply identifies
`the fan mounting hardware as the carrier. Pet. 17, Pet. Reply 5. Regardless
`of whether Petitioner refers to Hipp’s articulating door 262 or Hipp’s fan
`mounting hardware as the carrier, however, Petitioner still refers to box fans
`264–269 as the modules. Pet. 17; Pet. Reply 5. Accordingly, the “new”
`construction for “caddy” referring to “modules” could not have necessitated
`Petitioner’s change in position because Petitioner does not refer to a
`different “module” being carried by Hipp’s articulating door 262 or fan
`mounting hardware. We conclude, therefore, that the new argument inserted
`into Petitioner’s Reply was not responsive to a new claim construction from
`Patent Owner as Petitioner alleges.
`Petitioner’s new argument that Hipp’s fan mounting hardware
`corresponds to the claimed caddies was based on Patent Owner’s
`identification of deficiencies in Petitioner’s original position, namely, that
`the claim requires multiple “caddies,” rather than any new claim
`construction from Patent Owner. Petitioner offers no other credible basis for
`its new argument (i.e., that Hipp’s fan mounting hardware are “caddies”)
`being responsive to arguments made in Patent Owner’s Response. See Pet.
`
`
`
`8
`
`
`
`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`Remand Br. 3–4. Therefore, we determine that Petitioner’s new argument in
`its Reply was improper because, as the Federal Circuit instructed on remand,
`the agency “must allow ‘a party . . . to submit rebuttal evidence . . . as may
`be required for a full and true disclosure of the facts.’” Dell, 818 F.3d at
`1301 (quoting 5 U.S.C. § 556(d)).
`In addition, Petitioner offers no explanation as to why the arguments
`directed to power supply mounting mechanisms 278 presented in its Reply
`are not new or non-responsive and therefore should be considered. See Pet.
`Remand Br. 4–6 (explaining only why power supply mounting mechanisms
`278 allegedly are “caddies”). Finally, as noted supra, in light of the Federal
`Circuit’s decision, we are not considering the argument first presented at the
`oral hearing that the slides in Figure 12 of Hipp are the carriers.
`Having considered the arguments presented in light of the guidance
`provided from the Federal Circuit, we determine that the new arguments
`presented in Petitioner’s Reply identifying the fan mounting hardware in
`Hipp as the “caddies” in claim 3 should not be given weight. We consider
`instead the Petition’s identification of Hipp’s articulating door 262 as the
`“caddies” recited in claim 3. For the reasons that follow, we are not
`persuaded that Petitioner has established, by a preponderance of the
`evidence, that Hipp anticipates claim 3.
`Initially, we note that even if Hipp’s single articulating door 262 could
`properly be considered a “caddy,” neither the Petition nor the Petitioner’s
`Reply offers any explanation as to how articulating door 262 satisfies the
`requirement in claim 3 of multiple caddies. Petitioner’s challenge fails for
`this reason alone. Moreover, even if only one caddy were sufficient, we are
`not persuaded that Hipp’s articulating door 262 meets that requirement. The
`
`
`
`9
`
`
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`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`Petition focuses on how articulating door 262 allegedly “provid[es] air flow
`from the front to the rear of the chassis” as recited in claim 3. It does not
`explain how Hipp’s articulating door 262 provides the structural
`requirements of a caddy (i.e., a carrier for a module), stating only that
`articulating door 262 carries box fans 264–269. Pet. 17. In particular,
`neither the Petition nor the Reply offers any explanation as to why Hipp’s
`box fans 264–269 are modules.
`Based on the record before us, we are not persuaded that one skilled in
`the art would consider Hipp’s box fans 264–269 modules in view of how
`“module” is used in the ’021 patent. See, e.g., Ex. 1001, 3:17–34
`(discussing “CPU modules 102(a)-102(e) . . . a power module 106, a
`microcontroller module 108, an ethernet switch module 110” where “[e]ach
`module resides in a caddy 152 of the chassis such that when the module is
`inserted into the chassis the caddy ensures that the hot swap connectors are
`aligned”). Furthermore, the ’021 patent clearly distinguishes its modules
`from fans. See id. at 3:48–57 (“Heat generated by active elements in each of
`the modules is dissipated using forced air flow” with “[f]ans 120(a)-120(e) .
`. . to push outside air through the chassis” and “fans 122(a)-122(d) to draw
`heated air out of the chassis.”). Accordingly, we are not persuaded that
`Hipp’s articulating door 262 is a caddy (i.e., a carrier for a module). Even if
`we were to consider Petitioner’s arguments regarding the fan mounting
`hardware being caddies, those arguments would be unpersuasive because
`they, too, rely on box fans 264–269 being modules. As discussed supra, we
`have determined they are not.
`
`
`
`10
`
`
`
`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`
`3. Conclusion
`For these reasons, Petitioner has failed to establish by a
`preponderance of the evidence that claim 3 is anticipated by Hipp.
`B. Claim 20
`1. The Federal Circuit Decision
`Claim 20 recites
`a microcontroller module and a dedicated ethernet path, wherein
`the dedicated ethernet path is separate from a switched fast
`ethernet connection and provides the microcontroller module
`with a connection to remotely poll the CPU module, the power
`module and the ethernet switch module.
`Ex. 1001, 10:24–29. The Federal Circuit determined that this limitation
`requires a microcontroller module configured for remote polling. Dell, 818
`F.3d at 1299–1300. In view of the guidance from the Federal Circuit, we
`consider Petitioner’s anticipation challenge to claim 20 based on the
`disclosure from Hipp cited in the Petition.
`2. Analysis
`As Patent Owner notes (PO Remand Br. 9), the Petition proposes that
`“[t]he term ‘poll’ should be given its ordinary meaning in the art, which is
`‘sends routine, periodic requests for health or status information to the other
`components in the system’” (Pet. 10 (citing Ex. 1018 ¶ 35)). Patent Owner
`“does not dispute [that] construction for purposes of the IPR.” PO Remand
`Br. 9 (citing PO Resp. 11–15).
`The Petition cites single board computer 160 in Hipp as corresponding
`to the microcontroller module recited in claim 20. Pet. 26 (citing Ex. 1004,
`13:50–53); see also Pet. Remand Br. 8 (confirming that “in its petition . . .
`single board computer 160 on management network interface 49 in Hipp
`corresponds to the microcontroller module recited in claim 20”). The
`
`
`
`11
`
`
`
`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`Petition explains that because single board computer 160 detects a CPU that
`is about to fail, single board computer 160 actively polls the modules. Id. at
`27. Patent Owner responds that Hipp “does not disclose, either explicitly or
`inherently, that the detection is done using polling.” PO Resp. 44. More
`specifically, Patent Owner contends that “web server processing card 32
`merely transferring information is not the same as the single board computer
`160 polling the web server processing card 32.” Id. at 45 (citing Ex. 2001
`¶ 75).
`We are not persuaded by Petitioner’s argument. As Patent Owner
`notes (PO Remand Br. 10), Petitioner responds by a applying a different
`construction of “polling” than that proposed in the Petition (Pet. Reply 14–
`15). For the first time, in its Reply, and again in its Remand Briefing,
`Petitioner applies a construction of “polling” different than that proposed in
`the Petition. Compare Pet. 10 (“The term ‘poll’ should be given its ordinary
`meaning in the art, which is ‘sends routine, periodic requests for health or
`status information to the other components in the system.’”) with Pet. Reply
`15 (“a microcontroller module that gathers information about the web server
`processing cards . . . discloses ‘polling’”) and Pet. Remand Br. 9–10
`(“polling in claim 20 means to ‘gather information.’”). Petitioner changes
`its construction without explanation, other than alleging that in a separate
`proceeding Patent Owner had proposed the broader construction. Pet.
`Reply. 14–15; Pet. Remand Br. 9–10. Based on the record before us, we do
`not see sufficient reason to depart from the construction proposed in the
`Petition and accepted by Patent Owner in its Patent Owner Response.
`We now apply that original construction from the Petition in
`analyzing Hipp. Hipp explains that single board computer 160 may detect a
`
`
`
`12
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`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`CPU that is about to fail by analyzing information from CPU 84, which is
`transferred to network interface card 68 by web server processing card 32,
`and captured and stored within single board computer 160. Ex. 1004,
`20:16–36. Applying Petitioner’s own construction of “polling” (i.e., sending
`requests for information to other components of the system), we determine
`that Petitioner has failed to identify anything in Hipp that sufficiently
`discloses single board computer 160 polling. Although Hipp discusses
`collecting data (see, e.g., Ex. 1004, 14:46–49, 15:24–30, 20:30–36),
`Petitioner fails to explain persuasively why one skilled in the art would
`understand that discussion in Hipp as disclosing sending requests for
`information, rather than simply receiving the information from web server
`processing card 32 without sending a request. Accordingly, we are not
`persuaded that Hipp expressly discloses that single board computer 160 is
`configured to remotely poll as required by claim 20. The Petition does not
`set forth argument regarding the recited polling being inherent in single
`board computer 160.
`3. Conclusion
`For these reasons, we conclude that Petitioner has failed to establish
`by a preponderance of the evidence that Hipp anticipates claim 20.
`
`III. ORDER
`It is
`ORDERED that Petitioner has failed to establish that claims 3 and 20
`of U.S. Patent 6,948,021 are unpatentable; and
`
`
`
`13
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`IPRIPR2013-00440
`Patent 6,948,021 B2
`
`
`FURTHER ORDERED that parties to the proceeding seeking judicial
`review of this final written decision must comply with the notice and service
`requirements of 37 C.F.R. § 90.2.
`
`For PETITIONER:
`
`Kevin J. Meek
`Paula D. Heyman
`Nicholas A. Schuneman
`Catherine J. Garza
`BAKER BOTTS LLP
`kevin.meek@bakerbotts.com
`paula.heyman@bakerbotts.com
`nick.schuneman@bakerbotts.com
`catherine.garza@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`N. Andrew Crain
`Scott Horstemeyer
`Vivek A. Ganti
`Robert D. Gravois
`THOMAS | HORSTEMEYER LLP
`andrew.crain@thomashorstemeyer.com
`scott.horstemeyer@thomashorstemeyer.com
`vivek.ganti@thomashorstemeyer.com
`robert.gravois@thomashorstemeyer.com
`
`
`
`
`14
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