UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.,
`
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE,
`
`Patent Owner.
`
`__________________
`
`Case No. IPR2013-00635
`
`Patent No. 6,978,346
`
`__________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 3
`
`A.
`
`B.
`
`C.
`
`The ’346 Patent. .................................................................................... 3
`
`Prosecution History ............................................................................... 9
`
`Inter Partes Review No. IPR2014-00100 ........................................... 11
`
`III. TRIAL SHOULD NOT BE INSTITUTED .................................................. 11
`
`A.
`
`Interpretation of the ’346 Patent Claims. ............................................ 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`“Host Computers” ..................................................................... 13
`
`“RAID” ..................................................................................... 15
`
`“RAID Controller” .................................................................... 17
`
`“Connection Unit,” “Hub,” and “Switch” ................................ 18
`
`“Exchanges Information” .......................................................... 19
`
`B.
`
`Trial Should Not be Instituted Regarding Challenge 1, Based on
`Weygant as Allegedly Anticipatory Prior Art of Claims 1, 5,
`and 9. ................................................................................................... 20
`
`1. Weygant Fails to Disclose “Host Computers,” a “RAID,”
`and “RAID Controllers,” as Recited in Claim 1. ...................... 21
`
`a. Weygant’s PC Clients are Not “Host Computers.” ........ 21
`
`b. Weygant’s Disks Alone are Not a “RAID.” ................... 23
`
`c. Weygant’s Cluster Nodes are Not “RAID
`Controllers.” .................................................................... 24
`
`2.
`
`The Petition Improperly Mixes and Matches Features
`From Separate Embodiments of Weygant. ............................... 25
`
`IPR2013-00635
`
`Preliminary Response
`
`Page ii
`
`

`
`3. Weygant Fails to Disclose the “Exchanges Information”
`Limitations. ............................................................................... 28
`
`C.
`
`Trial Should Not be Instituted Regarding Challenges 2-4, Based
`on Weygant in view of at Least Mylex. .............................................. 29
`
`1. Weygant and Mylex Together Fail to Teach or Suggest
`“Host Computers,” a “RAID,” and “RAID Controllers,”
`as Recited in Independent Claims 1 and 9. ............................... 30
`
`2.
`
`Even With Mylex, the Petition’s § 102 and § 103
`Rejections Improperly Mix and Match Features From
`Separate Embodiments of Weygant. ......................................... 32
`
`3. Weygant and Mylex Together Fail to Teach or Suggest
`the “Exchanges Information” Limitations in Independent
`Claims 1 and 9. .......................................................................... 33
`
`4.
`
`The Weygant-Based § 102 Rejections and the Weygant-
`Mylex-Based § 103 Rejections are Vertically Redundant. ....... 33
`
`D.
`
`Trial Should Not be Instituted Regarding Challenge 5, Based on
`Hathorn as Allegedly Anticipatory Prior Art of Claims 1-3 and
`5-8. ....................................................................................................... 35
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Hathorn Fails to Explicitly or Inherently Teach “RAID
`Controllers.” .............................................................................. 36
`
`Even if Hathorn Teaches a “RAID Controller,” Hathorn
`Does Not Teach First and Second “RAID Controllers.” .......... 39
`
`Even if Hathorn Somehow Were to Teach Multiple
`“RAID Controllers,” Hathorn Does Not Teach The
`“Exchanges Information” Limitations. ..................................... 42
`
`Hathorn Fails to Disclose a “Hub,” as Required by Claim
`5. ................................................................................................ 43
`
`Challenge 5 is Horizontally Redundant With the Other
`Challenges. ................................................................................ 44
`
`IV. CONCLUSION .............................................................................................. 45
`
`IPR2013-00635
`
`Preliminary Response
`
`Page iii
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Arkley, 455 F.2d 586 (C.C.P.A. 1972) ............................................................ 26
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) ................ 38
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006) ................................. 14
`
`Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302 (Fed. Cir.
`2000) ........................................................................................................................ 14
`
`Gubelmann v. Gang, 408 F.2d 758 (C.C.P.A. 1969) ............................................... 38
`
`Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776 (Fed. Cir.
`2010) ........................................................................................................................ 14
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 32
`
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376 (Fed. Cir. 2001) .......... 25
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 32
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003,
`Paper 7 (Oct. 25, 2012) ................................................................................ 34, 35, 44
`
`In re Morris, 127 F.3d 1048 (Fed. Cir. 1997) .................................................... 12, 15
`
`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 26
`
`Oracle Corp. v. Clouding IP, LLC, IPR2013-00088, Paper 13 (June 13,
`2013) ........................................................................................................................ 34
`
`Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888 (Fed. Cir. 1984) ....... 26
`
`Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1297 (Fed. Cir.
`2002) ........................................................................................................................ 38
`
`
`
`
`
`IPR2013-00635
`
`Preliminary Response
`
`Page iv
`
`

`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................26
`
`35 U.S.C. § 103 ........................................................................................................29
`
`35 U.S.C. § 119 .......................................................................................................... 9
`
`35 U.S.C. § 311(b) ..................................................................................................... 2
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ............................................................................................ 11, 35
`
`
`
`Rules
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`Other Authorities
`
`INST. OF ELEC. & ELEC. ENG’RS, New IEEE Standard Dictionary of
`Electrical & Electronic Terms (5th Ed. 1993) ......................................................... 15
`
`MPEP § 2112(IV) .................................................................................................... 38
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14,
`2012) ........................................................................................................................ 12
`
`
`
`IPR2013-00635
`
`Preliminary Response
`
`Page v
`
`

`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, the Patent Owner
`
`hereby provides a Preliminary Response to the September 27, 2013 Petition for
`
`Inter Partes Review (herein “Petition” or “Pet.”). No fee is due with this
`
`Preliminary Response. If, however, the Office believes that any additional fee is
`
`due, it is authorized to charge deposit account No. 50-5836.
`
`The Patent Owner is the Electronics and Telecommunications Research
`
`Institute (“ETRI”), which was founded more than twenty-five years ago. ETRI
`
`employs approximately 1,700 researchers and technical staff, over 90 percent of
`
`which have advanced degrees (masters or doctoral). ETRI researchers are active in
`
`the electronics and telecommunications standard-setting processes and have
`
`authored on average over 200 technical publications each year. ETRI has been
`
`awarded 4,319 U.S. Patents and has received over $180 million in royalties since
`
`2007 on the technologies that it has developed.
`
`The Patent Owner respectfully requests that the Board deny the Petition and
`
`not institute trial. The Petition proposes five challenges, including three different
`
`challenges to independent claim 1 of the ʼ346 Patent (Ex. 1001). Four of the five
`
`challenges are based on Weygant (Ex. 1003). One of those posits Weygant as an
`
`anticipatory reference for some claims, including independent claim 1. Another
`
`one of the Weygant-based challenges asserts obviousness of claim 1 and some
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 1 of 46
`
`

`
`dependent claims based on Weygant in view of Mylex (Ex. 1007). The other
`
`Weygant-based challenges assert obviousness of various claims based on Weygant
`
`in view of Mylex and further in view of either ServiceGuard (Ex. 1004) or ANSI
`
`(Ex. 1008). The final challenge is anticipation by Hathorn (Ex. 1005), also
`
`directed at claim 1 and several of its dependent claims. Each challenge is flawed
`
`in some ways, as explained herein.
`
`Moreover, the Patent Owner does not concede that any of the references
`
`relied upon in the Petition qualify as prior art to the ’346 Patent or as printed
`
`publications. For example, the ServiceGuard document appears to be a proprietary
`
`software manual from the Hewlett-Packard Co. and contains “Legal Notices” that
`
`appear to restrict dissemination of the document. (Ex. 1005 at 2.) The Petition
`
`asserts (Pet. at 8-9) but presents no evidence to establish that ServiceGuard was
`
`publicly available so as to qualify as a “printed publication,” as required by 35
`
`U.S.C. § 311(b). It was the Petitioners’ burden to do so. In fact, one of the
`
`Petitioners, Hewlett-Packard Co., as the author of ServiceGuard, has unique access
`
`to that evidence (if any such evidence exists) but chose not to present any such
`
`evidence.
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 2 of 46
`
`

`
`II. BACKGROUND
`
`A. The ’346 Patent.
`
`The ʼ346 Patent is directed at useful and advantageous ways to interconnect
`
`a peripheral to its host computers. In particular, as described and claimed in the
`
`’346 Patent, that peripheral is a RAID, an acronym for redundant array of
`
`inexpensive disks. Although a RAID is formed of many disks, it may appear to its
`
`host(s) as a single disk storage peripheral. The inventors of the ’346 Patent did not
`
`invent the concept of RAID; nor were they the first to connect multiple host
`
`computers to a RAID. Instead, the invention described and claimed in the ’346
`
`Patent is a novel and advantageous interconnection between a RAID and multiple
`
`host computers. That interconnection provides both fault tolerance and enhanced
`
`performance measured in terms of bandwidth. Thus, the ’346 Patent is entitled
`
`“Apparatus for Redundant Interconnection Between Multiple Hosts and RAID”
`
`(emphasis added).
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 3 of 46
`
`

`
`The ’346 Patent describes several prior art systems. First, Figure 1
`
`(reproduced right) illustrates a prior art system interconnecting two host computers
`
`100 and 101 with a RAID 130. That system has two RAID controllers 140 and
`
`141 and two connections 120 and
`
`121 to the host computers 100 and
`
`101, respectively.
`
` That system
`
`provides twice the bandwidth of a
`
`single connection, but it is not fault
`
`tolerant. (’346 Patent 1:35-38.) If
`
`either
`
`connection
`
`or RAID
`
`controller fails, then one of the host
`
`computers is unable to communicate
`
`with the RAID.
`
`Second, Figure 2 (reproduced below right) illustrates a prior art system
`
`having a hub or switch 210 connecting host computers 200 and 201 with RAID
`
`controllers 230 and 231 of a RAID 240. The RAID controllers 230 and 231
`
`include communication controllers 221 and 222. One RAID controller is the
`
`backup for the other should the other or its connection to the hub or switch 210
`
`fail. While that interconnection provides fault tolerance, a fault in one of the
`
`RAID controllers or its connection to the hub or switch causes the system to have
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 4 of 46
`
`

`
`only half the bandwidth between
`
`each of the host computers 200-201
`
`and the RAID 240 as compared to
`
`its state before the fault.
`
`Third, Figure 3
`
`illustrates
`
`another prior art system but it, like
`
`the system illustrated in Figure 2,
`
`also has only half its bandwidth in
`
`the event of a fault.
`
`The inventions of the ’346
`
`Patent, as illustrated by way of example in Figures 4 and 5, provide enhanced
`
`redundancy to interconnect the host computers with a RAID. Referring to Figure 4
`
`(reproduced below) as an example, a RAID 490 has two RAID controllers 460 and
`
`461, each of which has two network interface controllers – 470 and 471 in the
`
`RAID controller 460, and 480 and 481 in the RAID controller 461. Two hubs or
`
`switches 440 and 441 connect each RAID controller to a plurality of host
`
`computers 400-405. This redundant interconnection scheme provides fault
`
`tolerance with the same bandwidth before and after a fault.
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 5 of 46
`
`

`
`
`
`For example, before a fault, the host computer 404 would communicate with
`
`the RAID 490 via the hub or switch 441 to the network interface controller 481 of
`
`the RAID controller 461. If there is a failure of the RAID controller 461 or its
`
`connection to the hub or switch 441, then the host computer 404 could
`
`communicate with the RAID 490 via the other RAID controller 460, specifically
`
`its network interface controller 471, which may serve as a standby backup for the
`
`network interface controller 481. The following annotated versions of Figure 4 of
`
`the ’346 Patent illustrate these two data transfer paths. The drawing on the left
`
`illustrates the primary data transfer path through the network interface controller
`
`481 before failover, and the drawing on the right illustrates the data transfer path
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 6 of 46
`
`

`
`through the network interface controller 471 after failure (shown by red X through
`
`Raid Controller 461).
`
`
`
`
`
`Similarly, the network interface controller 480 can be used if the network
`
`interface controller 470 in the other RAID controller fails. Thus, if either network
`
`interface controller 470 or 481 or its connection to the hub or switch fails, then
`
`network interface controller 480 or 471, respectively, in the other RAID controller
`
`can serve the same function, and the overall bandwidth between each of the host
`
`computers 400-405 and the RAID 490 remains the same. Accordingly, the present
`
`invention “provides an apparatus for a redundant interconnection between multiple
`
`host computers and a RAID, which is capable of supporting a fault tolerance of a
`
`RAID controller and simultaneously heightening a performance” relative to the
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 7 of 46
`
`

`
`prior art systems, i.e., maintaining bandwidth despite a fault. (See, e.g., ’346
`
`Patent 2:11-15.)
`
`To facilitate failover from one network interface controller to another,
`
`network interface controllers 470 and 480 exchange information, as do network
`
`interface controllers 481 and 471 (see, e.g., ’346 Patent 3:1-3, 3:62-66), as
`
`illustrated by way of example in the following annotated version of Figure 4 of the
`
`’346 Patent:
`
`
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 8 of 46
`
`

`
`B.
`
`Prosecution History
`
`The application that led to the ʼ346 Patent was filed on December 29, 2000
`
`(Ex. 20011 at 1) and claims priority under 35 U.S.C. § 119 to a patent application
`
`filed September 19, 2000 in Korea (id. at 24). The prosecution of this application
`
`was straight-forward. A first Office action rejected all originally filed claims 1-8
`
`as anticipated by U.S. Patent No. 5,812,754 (Lui). (Id. at 91-95.) The Patent
`
`Owner responded by amending claims 1-8 (id. at 102-03), adding new claim 9 (id.
`
`at 104), and arguing against the rejections (id. at 105-08). In doing so, the Patent
`
`Owner explained that pairs of network interface controllers exchange information
`
`through the connecting units:
`
`
`
`1 The Patent Owner’s Exhibit 2001 is the same ’346 Patent prosecution history as
`
`the Petitioners’ Exhibit 1002, but the former is in chronological order from oldest
`
`to newest paper, whereas the latter is not.
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 9 of 46
`
`

`
`
`
`(Id. at 106 (emphases added).)
`
`The Examiner again rejected all claims as anticipated by Lui. (Id. at 118-
`
`24.) The Patent Owner again responded by amending the claims further and
`
`arguing against the rejection. (Id. at 129-38.) Again, the Patent Owner explained
`
`that pairs of network interface controllers exchange information through the
`
`connecting units:
`
`
`
`
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 10 of 46
`
`

`
`
`
`
`
`(Id. at 135-36 (emphases added).) The Examiner then allowed all claims without
`
`providing any reasons for allowance. (Id. at 146.) The ʼ346 Patent thus granted
`
`having claims 1-9.
`
`C.
`
`Inter Partes Review No. IPR2014-00100
`
`On November 22, 2013, the Petitioners filed a second petition for inter
`
`partes review of the ʼ346 Patent, asserting two additional challenges to all claims
`
`of the ’346 Patent. That second inter partes review is case no. IPR2014-00100.
`
`III. TRIAL SHOULD NOT BE INSTITUTED
`
`The Petition should be denied and trial should not be instituted against the
`
`’346 Patent because each of the challenges presented in the Petition fails to have a
`
`reasonable likelihood of prevailing, as required by 35 U.S.C. § 314(a).
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 11 of 46
`
`

`
`A.
`
`Interpretation of the ’346 Patent Claims.
`
`The Office’s policy is to give the claims of a duly granted patent in a review
`
`proceeding their “broadest reasonable interpretation.”2 Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012). It is important to
`
`note that such an interpretation must be reasonable; in fact, it must be reasonable in
`
`light of the relevant intrinsic evidence, including the specification. A body of case
`
`law has held that in the context of original patent examination, where the applicant
`
`has an almost unfettered ability to amend its claims, the broadest reasonable
`
`interpretation must be in light of the specification, which is the only intrinsic
`
`evidence fixed at the time of filing. In re Morris, 127 F.3d 1048, 1054-55 (Fed.
`
`Cir. 1997) (“[T]he PTO is required to consult the specification during examination
`
`in order to determine the permissible scope of the claim.”). In that context, the
`
`broadest reasonable interpretation of claim language is the “meaning of the words
`
`in their ordinary usage as they would be understood by one of ordinary skill in the
`
`art, taking into account whatever enlightenment by way of definitions or otherwise
`
`
`2 The Patent Owner reserves all rights to argue, if necessary, that the broadest-
`
`reasonable-interpretation standard should not be employed during a review
`
`proceeding.
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 12 of 46
`
`

`
`that may be afforded by the written description contained in the applicant's
`
`specification.” Id. at 1054.
`
`For a patent under review, the entire original prosecution history is fixed at
`
`the time of filing of the review petition. In fact, courts have long recognized that
`
`the public relies on the prosecution history and accordingly held that such reliance
`
`is proper. For at least these reasons, it would be unreasonable for the Office during
`
`a review of a granted patent to ignore “whatever enlightenment by way of
`
`definitions or otherwise that may be afforded by” the concluded original
`
`prosecution history. Id.
`
`The Petition asserts incorrect interpretations of several claim phrases that are
`
`relevant to an analysis of the challenges raised in the Petition.3
`
`1.
`
` “Host Computers”
`
`The Petition asserts that the terms “host computers” or “host” should be
`
`interpreted synonymously to mean “network connected computers.” The Patent
`
`Owner agrees that the two terms should be interpreted synonymously and will refer
`
`
`
`3 The Patent Owner reserves all rights to offer additional or different claim
`
`interpretations in this proceeding if necessary.
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 13 of 46
`
`

`
`to these two claim terms as simply the “host computers” limitation. However, the
`
`Petition’s proposed construction fails to give proper meaning to the term “host.”
`
`Other language in the claims establishes that the “host computers” are connected to
`
`“connection units” or a “hub,” “switch,” or “network switch.” For example, claim
`
`9 recites “a plurality of connection units for connecting the host computers and the
`
`RAID”; claim 5 refers to “hub equipment connected with the numerous host
`
`computers”; and claim 6 refers to “network switch equipment connected with the
`
`numerous host computers.” Thus, the term “host” in “host computer” must mean
`
`something other than mere connection to a network. See Bicon, Inc. v. Straumann
`
`Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (claims must be “interpreted with an eye
`
`toward giving effect to all terms in the claim”); see also, e.g., Elekta Instrument
`
`S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (reversing
`
`construction that rendered term superfluous); see also Haemonetics Corp. v. Baxter
`
`Healthcare Corp., 607 F.3d 776, 781 (Fed. Cir. 2010) (“Patent claims function to
`
`delineate the precise scope of a claimed invention and to give notice to the public,
`
`including potential competitors, of the patentee’s right to exclude. . . . This notice
`
`function would be undermined, however, if courts construed claims so as to render
`
`physical structures and characteristics specifically described in those claims
`
`superfluous.” (citations omitted)).
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 14 of 46
`
`

`
`Indeed, the term “host” connotes to one skilled in the art that the computers
`
`are connected to a peripheral. The IEEE Dictionary defines “host” as “[a] device
`
`to which other devices (peripherals) are connected and that generally controls those
`
`devices.” INST. OF ELEC. & ELEC. ENG’RS, New IEEE Standard Dictionary of
`
`Electrical & Electronic Terms 607 (5th Ed. 1993) (Ex. 2002 at 4). This definition
`
`makes sense in the overall context of the claims of the ’346 Patent, as a RAID is a
`
`peripheral, in particular a peripheral to the host computers. Hence, the phrase
`
`“host computers” should be interpreted to mean “computers having the recited
`
`RAID connected to it as a peripheral and controlling the RAID as their peripheral.”
`
`The Hathorn reference also uses the term “host” in this way. (See Hathorn
`
`Figs 1-3 (Ex. 1005 at 2-4).) Hathorn is another piece of evidence showing that the
`
`Patent Owner’s proposed construction is what “would be understood by one of
`
`ordinary skill in the art.” In re Morris, 127 F.3d at 1054.
`
`2.
`
`“RAID”
`
`The Petition contends that the term “RAID” means “at least a redundant
`
`array of independent disks.” The well-known acronym itself stands for “redundant
`
`array of inexpensive disks,” as noted, for example, in the ’346 Patent’s Abstract.
`
`All embodiments described and illustrated in the ’346 Patent include hardware
`
`RAID controllers as part of the RAID (see ’346 Patent Figs. 1-6.), and the claims
`
`are consistent with that disclosure (see, e.g., claim 9: “a first and a second RAID
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 15 of 46
`
`

`
`controllers, included in the RAID”). Thus, in the context of the ’346 Patent, the
`
`term “RAID” should be interpreted to include hardware RAID controllers as part
`
`of the RAID. The Petition does not seem to disagree, as its proposed interpretation
`
`would permit RAID controllers to be part of the RAID. However, the Petition’s
`
`proposed interpretation, including the initial phrase “at least,” is too broad,
`
`seemingly chosen to permit the Petitioners to argue that rather large collections of
`
`computer equipment (e.g., a cluster including general-purpose computers and other
`
`hardware components) constitute a RAID. That unbounded interpretation is not
`
`reasonable given the context of the patent.
`
`Rather, the interpretation of the term “RAID,” as used in the ’346 Patent,
`
`should be bounded in this proceeding to reflect the basic fact that the RAID is a
`
`peripheral to the host computers. For that reason, it is appropriate to interpret the
`
`term “RAID” to include RAID controllers as well as the disk array itself, for it is
`
`the RAID controllers that enable the host computers to utilize the RAID as a disk
`
`storage peripheral. In other words, because the RAID controllers are responsible
`
`for presenting the disk array, which consists of multiple physical disks, to the host
`
`computers as if they were a single storage device, and because the “RAID” must be
`
`a peripheral to the “host” computers, the “RAID” must be construed as including
`
`the RAID controllers (and not merely the disk array itself).
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 16 of 46
`
`

`
`Overall, the broadest reasonable interpretation of the term “RAID,” as it
`
`appears in the claims of the ’346 Patent, is “a redundant array of independent
`
`disks, including RAID controllers, configured to be used as a peripheral by the host
`
`computers.”
`
`3.
`
` “RAID Controller”
`
`The Petition recognizes that the terms “RAID controller” and “RAID
`
`controlling unit” should be interpreted synonymously. The Patent Owner agrees
`
`and will refer to these two claim terms as simply the “RAID controller”
`
`limitations. The “RAID controller” limitations should be interpreted in this
`
`proceeding to mean “a hardware unit within a RAID that controls operation of the
`
`RAID so as to make the RAID a disk storage peripheral to the host computers.”
`
`The fact that the RAID controller is part of a RAID comes from the claim
`
`language itself (e.g., claim 9: “a first and a second RAID controllers, included in
`
`the RAID”) as well as the specification (e.g., all Figures 1-6 show the RAID
`
`controllers within the RAID). The fact that the RAID controllers are hardware also
`
`follows from the specification (e.g., Figures 1-6) as well as the claim language,
`
`which specify that the RAID controllers connect to other hardware (“connection
`
`units”) and include other hardware (network interface controllers). Only a
`
`hardware unit can connect to other hardware and include constituent hardware.
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 17 of 46
`
`

`
`The remainder of the interpretation of “RAID controller” – viz., “. . .
`
`controls operation of the RAID so as to make the RAID a disk storage peripheral to
`
`the host computers” – provides consistency with the interpretation of “RAID”
`
`discussed above.
`
`4.
`
`“Connection Unit,” “Hub,” and “Switch”
`
`The Petition does not propose an interpretation of “connection unit” but does
`
`propose that the term “hub” should be interpreted to mean “hub or switch.” (Pet. at
`
`6.) The Petition contends that the ’346 Patent specification defines “hub” as “hub
`
`or switch.” Although the ’346 Patent uses the shorter term “hub” as a shorthand
`
`for the longer phrase “hub or switch” (’346 Patent 3:10-18), that is not to suggest
`
`that a hub and a switch are the same thing. Rather, Figures 4 and 5 of the ’346
`
`Patent maintain this distinction, indicating that the connection units 440 and 441
`
`may be either a “HUB OR SWITCH.” That is how the claim phrase “connection
`
`unit” should be interpreted, viz., that a hub and a switch are non-limiting examples
`
`of a “connection unit.” In concordance with that, the term “hub” should be
`
`interpreted as simply a hub, and the term “switch” should be interpreted as simply
`
`a switch, rather than the non-sensical interpretations advanced by the Petition.
`
`The Petition does not propose an interpretation of “network interface
`
`controller.” As is clear from Figures 4 and 5 of the ‘346 Patent, the “network
`
`interface controllers” 470, 471, 480, and 481 are part of the “RAID controllers”
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 18 of 46
`
`

`
`460 and 461 (see explanation above). More specifically, a “network interface
`
`controller” is the part of a RAID controller that allows the RAID controller to
`
`communicate with the “connection units.”
`
`5.
`
`“Exchanges Information”
`
`Claim 1 states that “the first network controlling unit exchanges information
`
`with the fourth network controlling unit, and the second network controlling unit
`
`exchanges information with the third network controlling unit.” Claim 9 similarly
`
`states “wherein the first network controlling unit in the first RAID controlling unit
`
`exchanges information with the second network controlling unit in the second
`
`RAID controlling unit, and the second network controlling unit in the first RAID
`
`controlling unit exchanges information with the first network controlling unit in the
`
`second RAID controlling unit.” These limitations will be referred to as the
`
`“exchanges information” limitations herein.
`
`The Petition does not propose interpretations for these limitations.
`
`However, the prosecution history of the ’346 Patent establishes that the recited
`
`information exchange takes place via the “connection units.” (See § II-B supra at
`
`10-11.) Indeed, that is how the network interface controllers communicate – via
`
`the connection units with which they are designed to interface. Taking that into
`
`account, the broadest reasonable interpretation of the “exchanges information”
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 19 of 46
`
`

`
`limitations is that the information is exchanged via one or more of the connection
`
`units.
`
`B.
`
`Trial Should Not be Instituted Regarding Challenge 1, Based on
`Weygant as Allegedly Anticipatory Prior Art of Claims 1, 5, and
`9.
`
`The Petition proposes as “Challenge 1” that claims 1-3, 5, and 8 are
`
`anticipated by Weygant. While Weygant refers to a RAID or mirrored disks in
`
`several embodiments, the references are merely tangential. Weygant’s emphasis is
`
`teaching a particular approach for increasing the availability of a host computer by
`
`using a “cluster” of such computers rather than a single host computer. A cluster
`
`provides redundancy and therefore fault tolerance as compared to a single
`
`computer, according to Weygant. Weygant was published by Hewlett-Packard Co.
`
`to promote “specific enterprise cluster solutions provided by Hewlett-Packard.”
`
`(Ex. 1003 at 93.)
`
`Weygant’s disclosure of interconnection between host computers and their
`
`RAID is scant. Instead, Weygant teaches interconnections between a cluster
`
`(acting as a server) and client computers. This fundamental mismatch between the
`
`’346 Patent and Weygant leads the Petition to a strained reading of Weygant,
`
`contending that a cluster is a RAID, a computer within a cluster is a RAID
`
`controller, and a LAN (local area network) card in a cluster computer is a network
`
`interface controller of a RAID controller. These and other infirmities, as explained
`
`IPR2013-00635
`
`Preliminary Response
`
`Page 20 of 46
`
`

`
`in the subsections below, are reasons why trial should not be instituted with respect