Trials@uspto.gov
`571-272-7822
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`
`
`
`
` Paper 39
`Entered: February 27, 2015
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`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 IPR2013-00635
`Patent 6,978,346 B2
`
`___________
`
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

`

`IPR2013-00635
`Patent 6,978,346 B2
`
`
`I. INTRODUCTION
`
`On September 27, 2013, Dell, Inc., Hewlett-Packard Company, and
`
`NETAPP, Inc. (collectively, “Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1 through 9 of U.S. Patent No. 6,978,346 B2
`
`(Ex. 1001, “the ’346 patent”). Paper 1 (“Pet.”). On March 20, 2014, we
`
`instituted trial for claims 1–3 and 5–8 of the ’346 patent on certain of the
`
`grounds of unpatentability alleged in the Petition. Paper 19 (“Decision on
`
`Institution” or “Dec. Inst.”).
`
`After institution of trial, Electronics and Telecommunications
`
`Research Institute (“Patent Owner”) filed a Patent Owner Response. Paper
`
`28 (“PO Resp.”). Petitioner filed a Reply. Paper 33 (“Pet. Reply”).
`
`An oral hearing was held on December 18, 2014. The transcript of
`
`the consolidated hearing has been entered into the record. Paper 38 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a).
`
`A. Related Proceedings
`
`The ’346 patent has been asserted against Petitioner in the following
`
`actions: Safe Storage LLC v. Dell Inc., 1-12-cv-01624 and Safe Storage LLC
`
`v. NetApp Inc., 1-12-cv-01628. Pet 1–2. Petitioner advises us of an
`
`additional seventeen actions involving the ’346 patent against third parties,
`
`all pending in the United States District Court for the District of Delaware.
`
`Id.
`
`B. The ’346 Patent
`
`The ’346 patent describes an apparatus with “redundant
`
`interconnection between multiple hosts and a redundant array of inexpensive
`
`disks (hereinafter referred to as ‘RAID’).” Ex. 1001, Abstract. As a result
`
`
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`IPR2013-00635
`Patent 6,978,346 B2
`
`of the redundant interconnection, the apparatus allows increased bandwidth
`
`in the event one of the two RAID controllers 460 and 461 has a failure. Id.
`
`at 3:1–9.
`
`
`
`Figure 4 of the ’346 patent is reproduced below:
`
`
`
`Figure 4 is a block diagram of a host matching system including
`
`RAID 490 and its interconnection to host computers 400–405. Ex. 1001,
`
`2:643:6. RAID 490 includes two RAID controllers 460, 461 and hubs 440,
`
`441. Id. at 3:10–18. Each RAID controller includes a pair of network
`
`interface controllers. For example, RAID controller 460 includes network
`
`interface controllers 470, 471, and RAID controller 461 includes network
`
`interface controllers 480, 481. Id. at 3:11–13. Each host computer has its
`
`own network interface controller (410–415), which connects the host
`
`computer through the hubs and to the network interface controllers (470,
`
`471, 480, 481) of RAID controllers 460, 461. Id. at 3:31–35.
`
`
`
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`3
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`IPR2013-00635
`Patent 6,978,346 B2
`
`
`The ’346 patent describes that the result is two independent networks
`
`with twice the bandwidth of a single network and a “communication
`
`passage” between the two RAID controllers. Id. at 3:62–64. The
`
`communication passage creates a “fault tolerant function” should one of the
`
`RAID controllers 460 or 461 fail. Id. at 3:64–66. According to Figure 4,
`
`communications line 450 interconnects network interface controller 480 of
`
`RAID controller 461 and network interface controller 470 of RAID
`
`controller 460. Id. at 4:2–6; Fig. 4. Then, RAID controller 461 may send
`
`information to RAID controller 460. Id. In like manner, network interface
`
`controller 471 of RAID controller 460 may be connected over
`
`communications lines to network interface controller 481 of RAID controller
`
`461, allowing RAID controller 460 to send information to RAID controller
`
`461. Id. at 3:66–4:2.
`
`In summary, and as shown in Figure 4, a communication circuit is
`
`provided for an error recovery, while maintaining bandwidth communication
`
`between two RAID controllers 460, 461. Ex. 1001, 3:1–5. Even though one
`
`RAID controller 460 or 461 has an occurrence of a trouble, the bandwidth
`
`becomes twice the single connection bandwidth. Id. at 3: 6–9.
`
`C. Illustrative Claim
`
`Independent claim 1 is reproduced below:
`
`1. An apparatus for a redundant interconnection between
`multiple hosts and a RAID, comprising:
`
`a first RAID controlling units and a second RAID
`controlling unit for processing a requirement of numerous host
`computers, the first RAID controlling unit including a first
`network controlling unit and a second network controlling unit,
`and the second RAID controlling unit including a third network
`controlling unit and a fourth network controlling unit; and
`
`
`
`
`4
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`

`IPR2013-00635
`Patent 6,978,346 B2
`
`
`a plurality of connection units for connecting the first
`
`RAID controlling units and the second RAID controlling unit to
`the numerous host computers, wherein the first RAID
`controlling unit and the second RAID controlling unit directly
`exchange information with the numerous host computers
`through the plurality of connecting units, and 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.
`
`
`D. Ground Upon Which Trial Was Instituted
`
`Trial was instituted on the ground alleging that claims 1–3 and 5–8 of
`
`the ’346 patent are anticipated under 35 U.S.C. § 102(b) by Hathorn, U.S.
`
`Patent No. 5,574,950, issued November 12, 1996.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`1. Principles of Law
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`
`2. “RAID” (Claim 1)
`
`In the Decision on Institution we found that “RAID” is well
`
`understood by a person of ordinary skill in the art as an acronym for
`
`“redundant array of inexpensive disks.” Dec. Inst. 8 (citing Ex. 1001,
`
`Abstract). Patent Owner does not dispute the interpretation, but points out
`
`that each word of the construction conveys additional significance. PO
`
`Resp. 10.
`
`With regard to the word “disks,” Patent Owner argues that “disks”
`
`means “disk drives,” and that a RAID is an “array of multiple disk drives
`
`configured for redundancy.” Id. (citing Declaration of Dr. Thomas M.
`
`
`
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`5
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`IPR2013-00635
`Patent 6,978,346 B2
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`Conte, Ex. 2003 ¶¶ 16, 18). Based on the presence of “array” in our
`
`preliminary construction, Patent Owner offers evidence that an “array” is “a
`
`single logical storage unit of disk drives.” Id. at 11 (citing Webster’s
`
`Computer Dictionary 308 (9th ed. 2001) (Ex. 2004, 11); Microsoft
`
`Computer Dictionary 437 (5th ed. 2002) (Ex. 2005, 3)1; Ex. 2003 ¶ 19).
`
`Patent Owner also directs us to Dr. Conte’s testimony for additional support.
`
`See Ex. 2003 ¶¶ 16–21. Patent Owner also cites to Weygant, which it
`
`alleges “only states that combinations of striping and mirroring do not
`
`appear as a single logical unit, but other forms of RAID like RAID Level 1
`
`mirroring do.” Tr. 38:9–13; Ex. 1003, 153.2 Lastly, Patent Owner points to
`
`Chen which states that disk arrays “organize multiple independent disks into
`
`a large high-performance logical disk.” Tr. 38:14–19; Ex. 1011, 5. Thus,
`
`Patent Owner contends that “RAID” should be construed as “a single logical
`
`unit for mass storage that provides fault tolerance and recovery via
`
`employing multiple physical disk drives.” PO Resp. 12 (citing Ex. 2003 ¶
`
`38).
`
`Petitioner proposes a construction of “RAID” consistent with the
`
`construction we provided in the Decision on Institution. Pet. 8. In response
`
`to Patent Owner’s proposal, Petitioner argues that “the data mirroring
`
`
`1 The dictionary definitions are dated in 2001 and 2002, respectively, after
`the foreign priority date of the ’346 patent, September 19, 2000. See Exs.
`2004 and 2005. However, references having publication dates after the
`critical date may be cited to show the state of the art at or around the time of
`the invention. Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955, 969–70
`(Fed. Cir. 2001); see also In re Wilson, 311 F.2d 266, 268–269 (CCPA
`1962).
`2 Citations to Weygant (Ex. 1003) are to Weygant’s pages and not the
`Exhibit page number.
`
`
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`IPR2013-00635
`Patent 6,978,346 B2
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`operation of Hathorn is a RAID configuration.” Pet. Reply 1.3 Petitioner
`
`offers evidence that data mirroring is RAID Level 1. Id. at 3–4 (citing
`
`Declaration of Dr. M. Ray Mercer, Ex. 1006, 22–23; Second Declaration of
`
`Dr. M. Ray Mercer, Ex. 1012, 3–4). Both cited portions of Dr. Mercer’s
`
`Declarations cite to Weygant (Exhibit 1003) as supporting Dr. Mercer’s
`
`opinion that “RAID” may be construed differently depending upon the
`
`particular RAID configuration, i.e., RAID Level 1–5. Pet. Reply at 7–8; Ex.
`
`1003, 153. Dr. Mercer also cites to a 1999 edition of Microsoft Computer
`
`Dictionary, where the definition of “RAID” does not include “single logical
`
`storage unit.” Ex. 1006, 22. Dr. Mercer testifies that, at the time the
`
`application for the ’346 patent was filed, on December 29, 2000, “there is no
`
`one definition of the term that is agreed by everyone.”4 Id. at 21. Relying
`
`on Weygant, Dr. Mercer concludes that, in a RAID, “a group of disks do[es]
`
`not have to be configured as a single unit.” Id. at 4.
`
`We first review the intrinsic evidence as to the meaning of “RAID.”
`
`The written description of the ’346 patent restates the acronym for RAID,
`
`but otherwise lacks additional description of RAID or its functionality.
`
`Consistently and throughout the written description, RAID is referred to in
`
`the singular, i.e., “the apparatus for a redundant interconnection between
`
`multiple hosts and a RAID comprises a plurality of RAID controllers.” Ex.
`
`
`3 Petitioner’s Reply Brief lacks page numbers. Page number references used
`here begin with page 1, the first page following page iv.
`4 Dr. Mercer cites to the 1999 edition of Microsoft Computer Dictionary,
`which is not an exhibit of record, and, therefore, constitutes inadmissible
`hearsay, absent an exception. Nevertheless, the excerpt relied on need not
`be admissible for the opinion of Dr. Mercer regarding the definition of
`“RAID” to be admitted. Fed. R. Evid. 703. We further note that Patent
`Owner does not allege that the excerpt should be excluded.
`
`
`
`
`7
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`

`IPR2013-00635
`Patent 6,978,346 B2
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`1001, 2:16–18 (emphasis added). The claims also recite “a RAID.” Id. at
`
`5:7–8. Figure 4 of the ’346 patent shows RAID 490 as a single component
`
`within a box which includes two RAID controllers 460 and 461. Similarly,
`
`the ’346 patent represents the prior art RAID as a single component. Ex.
`
`1001, Fig. 1, element 130; Fig. 2, element 240; Fig. 3, element 340. Neither
`
`party relies on the prosecution history (Exhibit 1002), and our independent
`
`review of that history failed to reveal any additional insight as to the term’s
`
`meaning.
`
`We now turn to the extrinsic evidence. Patent Owner’s expert,
`
`Dr. Conte, testifies that a RAID is a mass storage device built from multiple,
`
`physical disk drives. Ex. 2003, 9. This evidence is uncontroverted. The
`
`prior art supports Dr. Conte. Weygant discloses that a RAID is a single
`
`logical unit, but also in “various combinations of striped and mirrored
`
`configurations.” Ex. 1003, 153. Chen defines RAID to be Redundant
`
`Arrays of Inexpensive Disks. Ex. 1011, 1. (emphases added). Chen’s
`
`discussion of RAID technology states that the problem of obtaining high
`
`performance is addressed by “arrays, which organize multiple independent
`
`disks into a large, high-performance logical disk.” Id. at 2 (emphasis
`
`added).
`
`The Specification consistently refers to RAID in the singular. Both
`
`Weygant and Chen, which predate the effective filing date of the ’346
`
`patent, and the testimony of Dr. Conte, support that a RAID is a single
`
`logical unit. Although Weygant also indicates that a RAID can exist in
`
`forms other than a single logical unit, those forms are limited to “striped and
`
`mirrored” configurations. Ex. 1003, 153. Furthermore, although the two
`
`dictionary definitions cited by Patent Owner are found in dictionaries
`
`
`
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`8
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`

`IPR2013-00635
`Patent 6,978,346 B2
`
`published after the foreign priority date of the ’346 patent, they further
`
`substantiate the proposition that those of ordinary skill generally refer to
`
`RAID as a single logical unit. Exs. 2004, 2005. We have not been shown
`
`evidence that the RAID of the ’346 patent is configured in a “striped and
`
`mirrored configuration,” which might not be in the single unit configuration
`
`of RAID. See Ex. 1003, 153. The evidence, on the full record before us,
`
`persuades us that it is necessary to modify our preliminary construction of
`
`“RAID” to account for the understanding of a person of ordinary skill in the
`
`art in light of the ’346 patent disclosure. Accordingly, applying the broadest
`
`reasonable interpretation we construe “RAID,” as the term is used in the
`
`’346 patent, to mean “a single logical unit for mass storage using multiple
`
`physical disk drives.”
`
`3. “RAID controlling unit” (Claim 1)
`
`In the Decision on Institution we found “RAID controlling unit” to
`
`mean “a component that controls operation of the RAID.” Dec. Inst. 9–10.
`
`In our analysis, we declined to include extraneous language unsupported by
`
`either the ’346 patent or extrinsic evidence. Id. Patent Owner states that our
`
`interpretation “is not incorrect,” but points out that each word of the
`
`construction conveys additional significance. PO Resp. 12. Patent Owner
`
`argues that the function of a RAID controller is to provide redundancy by
`
`writing redundant data to multiple disk drives. Id. Thus, either a RAID
`
`controller, or multiple RAID controllers, “must be able to write to all of the
`
`disk drives in the RAID unit in order to perform redundancy.” Id. at 12–13
`
`(citing Ex. 2003 ¶¶ 39, 41). Patent Owner contends that there must be a
`
`second RAID controller to establish the redundancy it argues is required for
`
`a RAID. PO Resp. 42–46. Patent Owner proposes that “RAID controlling
`
`
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`9
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`IPR2013-00635
`Patent 6,978,346 B2
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`unit” be construed as “a component that controls operation of the RAID so
`
`as to provide redundant storage of data among the array of disk drives.” Id.
`
`at 13.
`
`Petitioner argues that the construction of “RAID controlling unit”
`
`from the Decision on Institution should not be further narrowed. Pet.
`
`Reply 8. Also, Petitioner disagrees with Patent Owner that “a RAID
`
`controlling unit must directly access all disks in the RAID.” Id.
`
`We find that Patent Owner’s proposal imports limitations not
`
`supported by the Specification, e.g., “among the array of disk drives.” Other
`
`than its appearance in the Abstract of the ’346 patent, as part of the acronym
`
`for RAID, “array” does not appear in the Specification of the ’346 patent.
`
`We decline to go beyond the ’346 patent to add limitations to the
`
`construction not supported by the Specification, particularly when Patent
`
`Owner’s expert agrees with our preliminary construction. Ex. 2007, 64:7–
`
`11.
`
`That we changed our construction of RAID does not impact our
`
`construction of “RAID controlling unit.” We are presented with no
`
`compelling reason to change our construction from the Decision on
`
`Institution. Accordingly, applying the broadest reasonable interpretation to
`
`the term RAID controlling unit, we construe “RAID
`
`controlling unit” to mean “a component that controls operation of the
`
`RAID.”
`
`4. “First RAID controlling unit” and
`“Second RAID controlling unit” (Claim 1)
`
`“First RAID controlling unit” and “second RAID controlling unit”
`
`were not interpreted in the Decision on Institution, but Patent Owner argues
`
`
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`10
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`

`IPR2013-00635
`Patent 6,978,346 B2
`
`the terms should be construed. PO Resp. 13. Based on the claim language
`
`and Specification, Patent Owner argues that the “first” and “second RAID
`
`controlling units” are for “the same RAID.” Id. Patent Owner asserts the
`
`only RAID in the claim appears in the preamble and should be given weight.
`
`Id. at 14 (citing Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367,
`
`1372 (Fed. Cir. 2014) (citations omitted)). Petitioner does not specifically
`
`argue against Patent Owner’s construction and has no proposal of its own.
`
`As discussed above, we have construed RAID controlling unit. Claim
`
`1 recites “a first RAID controlling units and a second RAID controlling unit
`
`for processing a requirement of numerous host computers.” The
`
`Specification states that the RAID supports “a fault tolerance of RAID
`
`controllers and simultaneously heightening a performance.” Ex. 1001,
`
`Abstract, 1:12–14. Further, “a RAID comprises a plurality of RAID
`
`controllers for processing requests of numerous host computers connected
`
`with one another.” Id. at 2:17–19. We agree that the claim and disclosure
`
`both include “a RAID” and two or more RAID controlling units. This is
`
`supported by the claim language, which recites a RAID and two RAID
`
`controlling units. The claim does not recite an express numerical
`
`correspondence between a RAID and the RAID controlling units.
`
`Nevertheless, we have construed “RAID” and “RAID controlling unit,”
`
`above, and are satisfied that no construction of additional similar terms
`
`(“first RAID controlling unit” and “second RAID controlling unit”) is
`
`needed.
`
`5. “exchange/exchanges information” (Claim 1)
`
`Neither party argues the “exchange/exchanges information” limitation
`
`of claim 1. As we found in the Decision on Institution, claim 1 uses
`
`
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`11
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`IPR2013-00635
`Patent 6,978,346 B2
`
`“exchange” and “exchanges information” according to their ordinary sense:
`
`to transmit and receive information reciprocally.5 The claim recites the
`
`structures between which information is exchanged, i.e., between the RAID
`
`controlling units and the host computers, between the first and fourth
`
`network controlling units, and between the second and third network
`
`controlling units. The claim language requires only the information to and
`
`from the host computers to be exchanged through the connection units. The
`
`specification of the ’346 patent is consistent with the ordinary meaning of
`
`giving and receiving information reciprocally, because it describes that
`
`information is transmitted to and from a network interface controller of a
`
`first RAID and another network interface controller of a second RAID.
`
`Ex. 1001, 3:664:12.
`
`We are presented with no reason to change our construction from the
`
`Decision on Institution. Accordingly, applying the broadest reasonable
`
`construction in light of the Specification, we construe “exchange/exchanges
`
`information” to mean “to transmit and receive information reciprocally.”
`
`Dec. Inst. 1011.
`
`6. “network controlling unit”
`
`“Network controlling unit” was not interpreted in the Decision on
`
`Institution, but Patent Owner argues the term should be construed and that
`
`the term is “generally understood to one skilled in the art as a hardware
`
`controller that supplies communication functionality when attached to a
`
`computer network.” PO Resp. 16 (quoting Ex. 2003 ¶ 42). Patent Owner
`
`
`5 Definition exchange (vb) (3), WEBSTER’S THIRD NEW INTERNATIONAL
`DICTIONARY, UNABRIDGED (1993), available at
`http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary).
`
`
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`12
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`IPR2013-00635
`Patent 6,978,346 B2
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`submits that the ’346 patent discloses two ports for each controller, one for
`
`transmitting and one for receiving. Id. Patent Owner, thus, proposes that the
`
`term additionally “includ[es] one or more ports.” Id. at 1617. A network
`
`controlling unit having one port, according to Patent Owner, is too limiting
`
`and not disclosed in the Specification. Id.
`
`Petitioner argues that the term should be given the plain and ordinary
`
`meaning thereof.6 Pet. Reply 9. In support for its argument, Petitioner
`
`reminds us that we disagreed in the Decision on Institution with the assertion
`
`in the Petition that a “network controlling unit” is necessarily specific
`
`hardware. Id. Petitioner points out that the Specification does not mention
`
`ports in connection with the “network controlling units,” and only in
`
`connection with the “hub” or “switch.” Id. at 10. Through its expert,
`
`Petitioner proposes a construction: “any component allowing a device to
`
`communicate over a network.” Id. (citing Ex. 1012, 58). Petitioner
`
`contends that its proposal is consistent with the plain and ordinary meaning
`
`of the term. Id.
`
`The experts for both parties agree that “network controlling unit”
`
`refers to a device for communication connected to a network. We do not
`
`agree with Patent Owner that the broadest reasonable interpretation requires
`
`that “one or more” ports be part of the construction. PO Resp. 1617.
`
`However, there must be a connection to the network for communication to
`
`occur. Accordingly, we construe “network controlling unit” as “a
`
`
`6 Petitioner appears to rely on the Decision on Institution where we said that
`“Other Terms for Proposed Construction” would be given their ordinary and
`customary meaning and would not be construed “at this time.” Dec. Inst. 11.
`
`
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`component, connected to a network, for providing communication over the
`
`network.”
`
`7. “connection unit/hub/switch” (Claim 5)
`
`In the Decision on Institution, we found that, consistent with the
`
`definition provided in the Specification, “connection unit” is “a hub or
`
`switch.” Ex. 1001, 3:1318. The preceding was Petitioner’s proposal in the
`
`Petition. Pet. 6. Patent Owner acknowledges the preceding definition but
`
`argues that “hub” and “switch” are not one in the same. PO Resp. 17.
`
`Patent Owner has no specific proposal for either “hub” or “switch” and only
`
`argues they are different in some unspecified way. Neither of the parties’
`
`experts testifies as to any difference between these terms.
`
`We find that the Specification treats “hub” and “switch” as
`
`equivalents. For example, Figure 4 shows components 440 and 441 labeled
`
`as a “HUB OR SWITCH.” We are not persuaded by Patent Owner’s
`
`argument that “hub” should be interpreted to exclude or be different from a
`
`“switch.” PO Resp. 19.
`
`B. Anticipation By Hathorn
`
`Petitioner contends that claims 13 and 58 of the ’346 patent are
`
`anticipated under 35 U.S.C. § 102(b) by Hathorn. Pet. 9, 45–60. To support
`
`this position, Petitioner relies on the testimony of Dr. Mercer. Ex. 1006,
`
`130163 (including claim chart). For the reasons discussed below, we
`
`determine that Petitioner has not shown by a preponderance of the evidence
`
`that claims 13 and 58 are unpatentable as anticipated by Hathorn.
`
`1. Hathorn Overview
`
`Hathorn discloses a remote copy system with dynamically modifiable
`
`ports on the storage controller that are alternatively configurable. Ex. 1005,
`
`
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`14
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`IPR2013-00635
`Patent 6,978,346 B2
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`Abstract. A primary storage controller can appear as a host processor to a
`
`secondary storage controller. Id. Hathorn describes a method for
`
`communicating between host processors and storage controllers, or between
`
`storage controllers.
`
`Figure 3 of Hathorn is reproduced below.
`
`
`
`Figure 3 is a block diagram of one embodiment of a remote dual copy
`
`system of the invention described in Hathorn. Primary storage
`
`controller 322 communicates through port A 321 with secondary storage
`
`controller 332. Ex. 1005, 8:1115. As shown in Figure 3, port A 321 acts
`
`as a channel link-level facility through communication links 350, dynamic
`
`switch 305, communication links 351, dynamic switch 315, and
`
`communication links 346 to communicate with secondary storage controllers
`
`332 and/or 335. Id.
`
`2. Analysis
`
`Our discussion focuses on claim 1, the only independent claim at
`
`issue. All remaining challenged claims depend, directly or indirectly, from
`
`claim 1.
`
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`15
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`IPR2013-00635
`Patent 6,978,346 B2
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`Petitioner cites to Hathorn’s primary and secondary hosts and two
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`dynamic switches 305, 315 as redundant interconnections recited in the
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`preamble of claim 1. Pet. 46–47 (citing Ex. 1005, Fig. 3; Ex. 1006, 132–
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`134). Petitioner also points out that Hathorn describes a RAID configuration
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`that can be used in connection with a direct access storage device
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`(“DASD”). Id. (citing Ex. 1005, 2:5–11).
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`Petitioner further points to Hathorn’s storage controllers 322, 325, and
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`332, 335, respectively, as RAID controlling units that process requests from
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`the primary host and secondary host for transferring data or records from the
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`DASDs. Pet. 48 (citing Ex. 1006, 135–136). Petitioner also alleges that:
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`(1) the communication ports in the storage controllers meet the “network
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`controlling unit” limitation; (2) the first and second network controlling
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`units are met by ports A, B 324; and (3) the third and fourth network
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`controlling units are met by ports A, B 334. Pet. 48–49 (citing Ex. 1005,
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`8:5–6; Ex. 1006, 137–139).
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`Petitioner alleges that Hathorn’s dynamic switches 305, 315 meet the
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`recited “connection units.” Pet. 50 (citing Ex. 1005, Fig. 3; Ex. 1006, 139–
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`141). The switches connect to the RAID controlling units by links 351. Id.
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`Hathorn discloses the following concerning Figure 3:
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`primary storage controller 322, via port A 321, can communicate with
`primary host 301 by communication links 350, dynamic switch 305
`and communication link 341, wherein port A 321 is a control unit
`link-level facility. Alternately, primary storage controller 322, via the
`same port A 321, can communicate with secondary storage controller
`332 by communication links 350, dynamic switch 305,
`communication links 351, dynamic switch 315, and communication
`links 346, wherein port A 321 acts as a channel link-level facility.
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`IPR2013-00635
`Patent 6,978,346 B2
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`Ex. 1005, 8:6–15. Petitioner alleges the preceding disclosure and other
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`similar disclosures in Hathorn disclose that the RAID controlling units
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`“exchange information” through the connection units as claimed. Pet. 51–52
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`(citing Ex. 1005, 7:28–35, 8:3–15, Fig. 6, step 601; Ex. 1006, 141–142).
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`Petitioner contends that Hathorn explains that ports A and B 334, i.e.,
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`the third and fourth network controlling units, initiate the operation of Figure
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`4. Pet. 52–53 (citing Ex. 1005, 8:3–15; Ex. 1006, 143–144). Similarly,
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`Petitioner argues that ports A and B 324, i.e., the first and second network
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`controlling units, perform the data mirroring of Figure 5. Id. (citing Ex.
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`1005, 8:61–63, 9:49–51; Ex. 1006, 143–144). Petitioner relies on the
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`preceding evidence to support that Hathorn discloses the second “exchanges
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`information” limitation of claim 1.
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`Patent Owner relies on its construction of RAID and argues that
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`“Hathorn also supports the view that a RAID ‘array’ must be a single logical
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`storage unit of disk drives.” PO Resp. 11. Patent Owner contends that
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`Hathorn:
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`makes a clear distinction between a “RAID” and a mirroring or
`dual-copy system employing two disk drives, which, although
`redundant, do not form an ‘array’ in the sense of a RAID.
`Indeed, Hathorn describes these two scenarios as
`“alternative[s].”
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`PO Resp. 11 (citing Ex. 1005, 1:60–2:11).
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`Beyond arguing that Hathorn does not show a RAID according to
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`Patent Owner’s proposed construction, Patent Owner emphasizes the
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`difference between Hathorn’s DASDs and a RAID. PO Resp. 22–23.
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`Specifically, Patent Owner points to Petitioner’s reliance on Hathorn’s
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`IPR2013-00635
`Patent 6,978,346 B2
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`Figure 3 and notes that Figure 3 makes no mention of “RAID,” only
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`DASDs. Id.
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`Patent Owner emphasizes that Petitioner’s reliance on the sole
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`mention of RAID in Hathorn is made in the Background discussion at
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`column 2, lines 4 through 11. PO Resp. 23–24. The pertinent portion of
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`Hathorn is as follows:
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`Another data back-up alternative that overcomes the need to
`double the storage devices involves writing data to a redundant
`array of inexpensive devices (RAID) configuration. In this
`instance, the data is written such that the data is apportioned
`amongst many DASDs. If a single DASD fails, then the lost
`data can be recovered by using the remaining data and error
`correction procedures. Currently there are several different
`RAID configurations available.
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`Ex. 1005, 2:4–11. Patent Owner argues that the cited disclosure from
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`Hathorn distinguishes a RAID configuration from the “single DASD,”
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`concluding that Hathorn discloses that a RAID would “be formed of
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`‘many DASDs.’” PO Resp. 23–24(citing Ex. 1005, 2:8). Again,
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`Patent Owner points out that there is no mention of Figure 3 in the
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`cited disclosure. Id. at 24.
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`Patent Owner disagrees with the Decision on Institution’s
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`statement that “[t]he use of a RAID is disclosed specifically in
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`Hathorn as a type of DASD.” PO Resp. 24 (citing Dec. Inst. 15).
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`Petitioner relies on its expert, Dr. Conte, for support, citing the
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`following: (1) Figure 3 of Hathorn does not mention RAID; (2) the
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`column 2 discussion in Hathorn is not connected to Figure 3; and (3)
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`Hathorn states that a RAID is made up from “many DASDs.” Id. at
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`25 (citing Ex. 2003 ¶ 52).
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`Patent 6,978,346 B2
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`Patent Owner also argues that it is improper to combine the
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`column 2 disclosure of Hathorn with Figure 3 to find that claim 1 is
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`anticipated. PO Resp. 28. Thus, Hathorn does not disclose the
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`limitations of claim 1 “arranged or combined in the same way as
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`recited in the claim, [and] it cannot be said to prove prior invention of
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`the thing claimed, and cannot anticipate under 35 U.S.C. § 102.” Id.
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`at 27 (citing Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371
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`(Fed. Cir. 2008)). Patent Owner also argues that combining the
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`Background description in column 2 with the embodiment of Figure 3
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`of Hathorn “is in the province of an obviousness inquiry, not
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`anticipation.” Id. at 28. The ground at issue here is anticipation, and
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`Patent Owner concludes that the challenge must fail. Id.
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`Patent Owner contends that Petitioner clarified its position on
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`how Hathorn shows a RAID through the deposition of Petitioner’s
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`expert, Dr. Mercer. PO Resp. 34–35. Patent Owner characterizes the
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`Petitioner’s challenge as “a mirrored or remote-copy pair of different
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`DASDs in Figure 3 constitute a RAID.” Id. (citing Ex. 2006, 977).
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`Patent Owner argues two DASDs do not form a RAID because they
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`do “not form a single logical unit or drive.” Id. at 36 (citing Ex. 2003
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`¶ 59).
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`In addition to its argument that Hathorn’s Figure 3 does not
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`disclose a RAID configuration, Patent Owner argues Hathorn lacks
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`“first” and “second RAID controlling units.” PO Resp. 37–48. Patent
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`Owner also argues that Hathorn fails to disclose a “RAID controlling
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`unit” with two “network controlling units.” Id. at 48–50. Patent
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`7 See Ex. 2006, 97:4–18.
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`IPR2013-00635
`Patent 6,978,346 B2
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`Owner argues that Hathorn fails to anticipate claims 2, 3, and 8 under
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`the Petition’s interpretation of “coupled” and “connected.” Id. at 50–
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`54. Turning to claim 5, Patent Owner argues Hathorn fails to disclose
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`a “hub” as claimed. Id. at 58. Patent Owner’s last argument relates to
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`connection of connection ports with the host computer, as recited in
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`claims 5–7. Id. at 55–57.
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`Petitioner responds that the data mirroring operation of Hath