Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 19
`Entered: March 20, 2014
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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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
` Paper 19
`Entered: March 20, 2014
`
`
`
`
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2013-00635
`Patent 6,978,346 B2
`
`
`I.
`
`INTRODUCTION
`
`On September 27, 2013, Dell, Inc., Hewlett-Packard Company, and
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`NETAPP, Inc. (collectively ―Petitioners‖) filed a Petition requesting an inter
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`partes review of claims 1 through 9 of U.S. Patent No. 6,978,346 B2
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`(Ex. 1001, ―the ‘346 patent‖). Paper 1 (―Pet.‖). The patent owner,
`
`Electronics and Telecommunications Research Institute (―Patent Owner‖),
`
`filed a Preliminary Response. Paper 14 (―Prelim. Resp.‖). We have
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`jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the Petitioners would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the Petition and Preliminary Response, we
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`determine that the information presented in the Petition showsthat there is a
`
`reasonable likelihood that Petitioners would prevail in showing
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`unpatentability of claims 1-3 and 5-8 of the ‘346 patent. Accordingly,
`
`pursuant to 35 U.S.C. § 314, we institute an inter partes review of claims
`
`1-3 and 5-8 of the ‘346 patent. We do not institute inter partes review of
`
`claims 4 and 9 of the ‘346 patent.
`
`A. Related Proceedings
`
`The ‘346 patent is involved in the following co-pending litigation:
`
`Safe Storage LLC v. StoneFly, Inc., 1-13-cv-01152; Safe Storage LLC v.
`
`Int’l Business Machines Corp., 1-13-cv-0 1151; Safe Storage LLC v. Emulex
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`Corporation et al, 1-13-cv-01150; Safe Storage LLC v 3PAR Inc., 1-13-cv-
`
`2
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`Case IPR2013-00635
`Patent 6,978,346 B2
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`01088; Safe Storage LLC v Oracle America Inc. et al, 1-13-cv-01089; Safe
`
`Storage LLC v ATTO Technology Inc. et al., 1-13-cv-01090; Safe Storage
`
`LLC v. VMware Inc., 1-13-cv-00928; Safe Storage LLC v. Promise
`
`Technology Inc., 1-13-cv-00927; Safe Storage LLC v. Nexsan Corporation,
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`1-13-cv-00931 ; Safe Storage LLC v. Overland Storage Inc., 1-13-cv-00932;
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`Safe Storage LLC v. IQSS LLC, 1-13-cv-00930; Safe Storage LLC v.
`
`Infortrend Corporation, 1-13-cv-00929; Safe Storage LLC v. Cisco Systems
`
`Inc., 1-13-cv-00926; Safe Storage LLC v. Silicon Graphics Int’l Corp., 1-12-
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`cv-0 1629; Safe Storage LLC v. Dot Hill Systems Corp., 1-12-cv-01625 ;
`
`Safe Storage LLC v. Hitachi Data Systems Corp., 1-12-cv-01627; Safe
`
`Storage LLC v. Dell Inc., 1-12-cv-01624; Safe Storage LLC v. NetApp Inc.,
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`1-12-cv-01628; Safe Storage LLC v. Hewlett-Packard Company, 1-12-cv-
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`01626, all pending in the United States District Court for the District of
`
`Delaware. Pet. 1-2.
`
`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
`
`of the redundant interconnection, the apparatus allows increased bandwidth
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`in the event one of the two RAID controllers 460 and 461 has a failure. Id.
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`3
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`at 3:1-9.
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`Patent 6,978,346 B2
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`Figure 4 of the ‘346 patent is reproduced below:
`
`
`
`Figure 4 is a block diagram of a host matching system including
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`RAID 490 and its interconnection to host computers 400-405. Ex. 1001,
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`2:643:6. RAID 490 includes two RAID controllers 460, 461 and hubs 440,
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`441. Id. at 3:10-18. Each RAID controller includes a pair of network
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`interface controllers. For example, RAID controller 460 includes network
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`interface controllers 470, 471, and RAID controller 461 includes network
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`interface controllers 480, 481. Id. at 3:11-13. Each host computer has its
`
`own network interface controller (410 to 415), which connects the host
`
`computer through the hubs and to the network interface controllers (470,
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`471, 480, 481) of RAID controllers 460, 461. Id. at 3:31-35.
`
`The ‘346 patent describes that the result is two independent networks
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`with twice the bandwidth of a single network and a ―communication
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`passage‖ between the two RAID controllers. Id. at 3:62-64. The
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`communication passage creates a ―fault tolerant function‖ should one of the
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`RAID controllers 460 or 461 fail. Id. at 3:64-66. According to Figure 4,
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`communications line 450 interconnects network interface controller 480 of
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`RAID controller 461 and network interface controller 470 of RAID
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`controller 460. Id. at 4:2-6; fig. 4. Then, RAID controller 461 may send
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`information to RAID controller 460. Id. In like manner, network interface
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`controller 471 of RAID controller 460 may be connected over
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`communications lines to network interface controller 481 of RAID controller
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`461, allowing RAID controller 460 to send information to RAID controller
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`461. Id. at 3:66-4:2.
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`By the arrangement described, the apparatus continues to operate in
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`the event either RAID controller 460 or 461 has an ―occurrence of an error.‖
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`Ex. 1001, 4:19-25. The interconnected network interface controller of the
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`operational RAID controller assumes the functions of the network interface
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`controller of the failed RAID controller. Id.
`
`C. Illustrative Claims
`
`Claim 1, one of the two independent claims of the challenged claims,
`
`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
`
` 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
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`Patent 6,978,346 B2
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`unit, and the second network controlling unit exchanges information with the
`third network controlling unit.
`
`D. Prior Art Relied Upon
`
`Petitioners rely upon the following prior art references.
`
`Weygant
`
`Peter S. Weygant,
`CLUSTERS FOR HIGH
`AVAILABILITY- A PRIMER
`OF HP-UX SOLUTIONS
`(Prentice-Hall, Inc., 1996)
`ServiceGuard Hewlett-Packard Company,
`MANAGING
`MC/SERVICEGUARD (Jan.
`1998)
`US 5,574,950
`
`Hathorn
`
`Mylex
`
`ANSI
`
`PCT International
`Publication Number
`WO 99/38067
`American Nat. Standards
`Inst., FIBRE CHANNEL
`ARBITRATED LOOP (FC-
`AL-2) (1999)
`
`1996
`
`Ex. 1003
`
`Jan. 1998
`
`Ex. 1004
`
`Nov. 12, 1996
`
`Ex. 1005
`
`Jul. 29, 1999
`
`Ex. 1007
`
`1999
`
`Ex. 1008
`
`E. The Alleged Grounds of Unpatentability
`
`Petitioners allege the following grounds for unpatentability.
`
`Claims
`
`Grounds
`
`References
`
`1-3, 5, and 8
`
`§ 102(b)
`
`Weygant
`
`1-3 and 8
`
`4 and 9
`
`5-7
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Weygant and Mylex
`
`Weygant, Mylex and
`ServiceGuard
`Weygant, Mylex and ANSI
`
`1-3 and 5-8
`
`§ 102(b)
`
`Hathorn
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`
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`II. ANALYSIS
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`A. Claim Construction
`
`Principles of Law
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
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`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);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012). The terms also are given their ordinary and customary meaning, as
`
`would be understood by one of ordinary skill in the art in the context of the
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). If an inventor acts as his or her own lexicographer, the definition
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`must be set forth in the specification with reasonable clarity, deliberateness,
`
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
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`1243, 1249 (Fed. Cir. 1998). An extraneous limitation should not be read
`
`into the claims from the specification. E.g., E.I. du Pont de Nemours & Co.
`
`v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An
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`extraneous limitation is one that, the presence of which in a claim, is
`
`unnecessary for the purpose of making sense of the claim. See, e.g., In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Renishaw PLC v. Marposs
`
`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The construction
`
`that stays true to the claim language and most naturally aligns with the
`
`inventor‘s description is likely the correct interpretation. See Renishaw
`
`PLC, 158 F.3d at 1250.
`
`“RAID” (Claims 1 and 9)
`
`Petitioners assert that ―RAID‖ should be construed as ―at least a
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`redundant array of independent disks.‖ Pet. 8 (citing Ex. 1006, 21-23)1.
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`Further, Petitioners allege that a RAID may include ―RAID controllers,‖ a
`
`term we separately construe hereinafter. Id. Petitioners‘ declarant, Dr. M.
`
`Ray Mercer, attests that ―RAID‖ may include other computer equipment,
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`relying on as support extrinsic evidence and the specification of the ‘346
`
`patent. Id..
`
`Patent Owner proposes that ―RAID‖ be construed as ―a redundant
`
`array of independent disks, including RAID controllers, configured to be
`
`used as a peripheral by the host computers.‖ Prelim. Resp. 17. Patent
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`Owner argues that ―RAID‖ includes RAID controllers, relying in part on the
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`language of claim 9: ―a first and a second RAID controllers, included in the
`
`RAID.‖ Prelim. Resp. 15-16. According to Patent Owner, a ―RAID‖ is a
`
`peripheral to ―host computers,‖ and, therefore, ―RAID controllers‖ should be
`
`a part of the construction. Prelim. Resp. 16. Patent Owner further argues
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`that Petitioners‘ proposed inclusion of ―at least‖ should be excluded from the
`
`construction so as not to broaden the term unduly to include additional
`
`computer equipment. Id.
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`―RAID‖ is well understood by a person of ordinary skill in the art as
`
`an acronym for ―redundant array of inexpensive disks.‖ Ex. 1001, Abstract.
`
`We are not persuaded that any additional restrictions are needed to capture
`
`the ordinary meaning of RAID. Thus, we construe ―RAID‖ to mean
`
`―redundant array of inexpensive disks.‖
`
`
`1 Referenences to Dr. Mercer‘s declaration, Exhibit 1006, are to page
`number.
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`“RAID controller/RAID controlling unit” (Claims 1 and 9)
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`Petitioners contend that the terms ―RAID controlling unit‖ and ―RAID
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`controller‖ should be construed in the same way. Ex. 1006, 20-21. Patent
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`Owner agrees. Prelim. Resp. 17. We see no reason to disagree. Petitioners
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`propose that ―RAID controlling unit‖ and ―RAID controller‖ should be
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`construed as ―a functional component including hardware that may be
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`controlled by computer code, the functional component providing control to
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`implement RAID storage in an array of storage drives.‖ Pet. 7-8 (citing Ex.
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`1006, 20-21). Petitioners support their construction relying solely on the
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`declaration of Dr. Mercer, which is conclusory as to the proposed
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`construction and states only that the ‘346 patent does not define ―RAID
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`controlling unit.‖ See Ex. 1006 at 19-20.
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`Patent Owner proposes that the terms be interpreted to mean ―a
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`hardware unit within a RAID that controls operation of the RAID so as to
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`make the RAID a disk storage peripheral to the host computers.‖ Prelim.
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`Resp. 17. Patent Owner contends that the term relates to hardware, as
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`supported by the specification and the language of claim 9 that RAID
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`controllers connect to other hardware, e.g., the ―connection units.‖ Id.
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`Patent Owner does not explain why the specification of the
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`‘346 patent, and, specifically, figures 1 through 6, require the ―RAID
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`controller‖ to be hardware, when a combination of hardware and software is
`
`also possible. Patent Owner‘s arguments are insufficient to require
`
`interpretating the ‘346 patent specification as requiring a hardware-only
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`RAID. The parties‘ proposals, therefore, improperly include extraneous
`
`language unsupported by either the ‘346 patent or extrinsic evidence.
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`For purposes of this decision, applying the broadest reasonable
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`interpretation in light of the specification, we, therefore, construe ―RAID
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`controlling unit‖ and ―RAID controller‖ to mean ―a component that controls
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`operation of the RAID.‖
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`“exchange/exchanges information” (Claims 1 and 9)
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`Patent Owner relies on the prosecution of the application for the
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`‘346 patent to propose that ―exchanges information‖ means ―information is
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`exchanged via one or more of the connection units.‖ Prelim. Resp. 19-20
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`(citing Ex. 2001, 135-136). Petitioners do not propose a construction for
`
`these terms. We are not persuaded that Patent Owner‘s proposed
`
`construction is correct. The claims use ―exchange‖ and ―exchanges
`
`information‖ according to their ordinary sense: to transmit and receive
`
`information reciprocally.2 The claim recites the structures between which
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`information is exchanged, i.e., between the RAID controlling units and the
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`host computers, between the first and fourth network controlling units, and
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`between the second and third network controlling units. The claim language
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`requires only the information to and from the host computers to be
`
`exchanged through the connection units. Therefore, it would be improper to
`
`limit the recited exchange of information to occur via connection units. The
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`specification of the ‘346 patent is consistent with the ordinary meaning of
`
`giving and receiving information reciprocally, because it describes that
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`information is transmitted to and from a network interface controller of a
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`first RAID and another network interface controller of a second RAID.
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`Ex. 1001, 3:664:12.
`
`
`2 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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`Based on the foregoing, applying the broadest reasonable construction
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`in light of the specification, we construe ―exchange/exchanges information‖
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`to mean ―to transmit and receive information reciprocally.‖
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`“connection unit/hub/switch” (Claim 5)
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`Petitioners propose that the term ―hub‖ should be construed as ―hub or
`
`switch,‖ as defined in the specification. Pet. 6 (citing Ex. 1001, 3:13-18).
`
`Patent Owner contends that a ―hub‖ and a ―switch‖ are non-limiting
`
`examples of a ―connection unit‖ and that ―hub‖ and ―switch‖ are not one and
`
`the same. Prelim. Resp. 18. We are not persuaded by Patent Owner‘s
`
`arguments.
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`We determine that, consistent with the definition provided in the
`
`specification, ―connection unit‖ is ―a hub or switch.‖
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`Other Terms for Proposed Construction
`
`For purposes of this decision, the other terms of the challenged claims
`
`are given their ordinary and customary meaning and need not be further
`
`construed at this time.
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`B. Anticipation By Hathorn
`
`Petitioners contend 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, Petitioners rely on the testimony of Dr. Mercer. Ex. 1006,
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` 130-163 (including claim chart).
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`For the reasons discussed below, we determine that Petitioners have
`
`shown a reasonable likelihood that they will prevail on their assertion that
`
`claims 1-3 and 5-8 are unpatentable as anticipated by Hathorn.
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`Hathorn Overview
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`Hathorn discloses a remote copy system with dynamically modifiable
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`ports on the storage controller that are alternatively configurable. Ex. 1005,
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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.
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`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
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`controller 332. Ex. 1005, 8:11-15. As shown in Figure 3, port A 321 acts as
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`a channel link-level facility through communication links 350, dynamic
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`switch 305, communication links 351, dynamic switch 315, and
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`communication links 346 to communicate with secondary storage controllers
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`332 and/or 335. Id.
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`1. Claim 1
`
`Petitioners set forth arguments and claim charts to support the
`
`contention that claim 1 is anticipated by Hathorn. Pet. 45-53, Ex. 1006, 130-
`
`145 (including claim chart).
`
`In particular, Petitioners cite to Hathorn‘s primary and secondary
`
`hosts and two dynamic switches 305 and 315 as redundant interconnections
`
`recited in the preamble of claim 1. Pet. 46-47 (citing Ex. 1005, fig. 3, Ex.
`
`1006, 132-134). Petitioners also point out that Hathorn describes a RAID
`
`configuration that can be used in connection with DASD. Id. (citing Ex.
`
`1005, 2:5-11).
`
`Petitioners further point to Hathorn‘s storage controllers 322 and 325,
`
`and 332 and 335, respectively, as RAID controlling units that process
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`requests from the primary host and secondary host for transferring data or
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`records from the DASDs. Pet. 48 (citing Ex. 1006 at 135-136). Petitioners
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`also allege that: (1) the communication ports in the storage controllers meet
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`the ―network controlling unit‖ limitation; (2) the first and second network
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`controlling units are met by ports A, B 324; and (3) the third and fourth
`
`network controlling units are met by ports A, B 334. Pet. 48-49 (citing Ex.
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`1005, 8:5-6; Ex. 1006 at 137-139).
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`Petitioners allege Hathorn‘s dynamic switches 305 and 315 meet the
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`recited ―connection units.‖ Pet. 50 (citing Ex. 1005, fig. 3, Ex. 1006, 139-
`
`141). The switches connect to the RAID controlling units by links 351. Id.
`
`Hathorn discloses the following concerning Figure 3:
`
`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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`Ex. 1005, 8:6-15.
`
`
`Petitioners allege the preceding disclosure and other similar
`
`disclosures in Hathorn disclose that the RAID controlling units ―exchange
`
`information‖ through the connection units as claimed. Pet. 51-52 (citing Ex.
`
`1005, 7:28-35, 8:3-15; fig. 6, step 601; Ex. 1006 at 141-142).
`
`Petitioners conclude that Hathorn explains that ports A and B 334,
`
`i.e., the third and fourth network controlling units, initiate the operation of
`
`Figure 4. Pet. 52-53 (citing Ex. 1005, 8:3-15; Ex. 1006 at 143-144).
`
`Similarly, Petitioners argue that ports A and B 324, i.e., the first and second
`
`network controlling units, perform the data mirroring of Figure 5. Id. (citing
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`Ex. 1005, 8:61-63, 9:49-51; Ex. 1006 at 143-144). Petitioners rely on the
`
`preceding evidence to support that Hathorn discloses the second ―exchanges
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`information‖ limitation of claim 1.
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`In response, Patent Owner alleges that Hathorn does not disclose that
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`the storage controllers 325 and 335 are RAID controllers. Prelim. Resp. 36.
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`Patent Owner points out that the term RAID appears only once in Hathorn,
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`in the Background section. Prelim. Resp. 37 (citing Ex. 1005, 2:4-7, 2:12-
`
`14, 2:40-43). Patent Owner contends that Hathorn mentions multiple
`
`DASDs in connection with the same number of storage controllers. Id.
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`(citing Ex. 1005, 6:36-42). Thus, according to Patent Owner, the storage
`
`controllers 325 and 335 cannot be RAID controllers, as neither is attached to
`
`multiple DASDs that form a RAID. Id. Patent Owner contends that whether
`
`Hathorn can be implemented in a RAID configuration is speculative and not
`
`inherent in Hathorn. Prelim. Resp. 38.
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`We are not persuaded that the storage controllers of Hathorn are not
`
`RAID controllers. First, we are persuaded that RAID controllers are a type
`
`of DASD. See Ex. 1005, 2:5-11. Petitioners‘ declarant, Dr. Mercer, who
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`professes to be a person of ordinary skill in the art, relies on Hathorn‘s
`
`background description of DASDs to state that DASDs can be implemented
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`in a RAID configuration. Ex. 1006, 134. ―A reference anticipates a claim if
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`it discloses the claimed invention such that a skilled artisan could take its
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`teachings in combination with his own knowledge of the particular art and
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`be in possession of the invention.‖ In re Graves, 69 F.3d 1147, 1152 (Fed.
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`Cir. 1995). The use of a RAID is disclosed specifically in Hathorn as a type
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`of DASD, and Petitioners‘ declarant states that a person of ordinary skill in
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`the art recognizes that a ―DASD can be implemented in a RAID
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`configuration.‖ Ex. 1006, 134. We are, therefore, persuaded, that
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`Petitioners have shown sufficient evidence that Hathorn discloses RAID
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`controllers.
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`Next Patent Owner argues Hathorn‘s storage controllers, even if
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`meeting the claim‘s requirement of RAID controllers, do not disclose first
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`Patent 6,978,346 B2
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`and second RAID controllers. Prelim. Resp. 39-40. In support of its
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`argument, Patent Owner annotates Figure 3, which is reproduced below.
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`Relying on annotated Figure 3 of Hathorn as reproduced above, Patent
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`Owner argues that, in order to meet the claim, a RAID controller, both
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`primary storage controller 325 and secondary storage controller 335 must
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`connect to a single RAID. Prelim. Resp. 40. According to Patent Owner,
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`DASD 336, i.e., the claimed ―RAID,‖ is connected indirectly to primary
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`storage controller 325 through secondary storage controller 335 and dynamic
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`switches 315 and 305. Prelim. Resp. 40-41. We are not persuaded by Patent
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`Owner‘s argument. As Patent Owner acknowledges, DASD 336, i.e., the
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`RAID, is connected to both primary storage controller 325 and secondary
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`storage controller 335. Prelim. Resp. 40-41. The argument—that Hathorn‘s
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`connection does not meet the claim because it is ―indirect‖—is not
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`Patent 6,978,346 B2
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`commensurate with the scope of the language of the claim, which does not
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`limit the RAID‘s connection to either direct or indirect connections.
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`Further, Patent Owner argues Hathorn does not teach the ―exchange
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`information‖ limitation between the first and second RAID controllers
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`through the network interface controllers. Prelim. Resp. 42. Based on the
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`argument above, Patent Owner asserts that there are not two RAID
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`controllers involved in accessing DASD 336, i.e., RAID, and that there is no
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`communication between them. Prelim. Resp. 43. For the same reasons
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`discussed above, Patent Owner‘s argument—that there is no ―exchange
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`information‖ limitation as between the two RAID controllers—is not
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`persuasive on the present record.
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`Finally, with respect to claim 1, Patent Owner argues that Hathorn is
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`redundant of other grounds asserted. Prelim. Resp. 45. The redundancy
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`argument of Patent Owner is inapplicable given our determination that
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`Weygant does not meet the ―exchange information‖ limitation.
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`2. Claims 2-3 and 5-8
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`The Petition sets forth arguments and claim charts supporting the
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`contention that claims 2-3 and 6-8 are unpatentable as anticipated by
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`Hathorn. Pet. 53-55, 57-60. In particular, Petitioners allege the dynamic
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`switches of Figure 3 of Hathorn disclose the ―connecting units‖ of claim 5.
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`Pet. 55. Patent Owner contends that ―hub‖ should be interpreted as being
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`distinct from a switch. Prelim. Resp. 43-44. Patent Owner also argues that
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`Hathorn only teaches switches, such as switches 305 and 315, and that, as a
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`result, Hathorn cannot anticipate claim 5. Id.
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`We already have determined that a ―connection unit‖ is ―a hub or
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`switch.‖ See Section II (A), above. Therefore, we are persuaded that the
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`switches of Hathorn meet the ―connection unit‖ limitation.
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`Based on the foregoing, we determine that, on the record before us,
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`Petitioners have made a sufficient showing of a reasonable likelihood that
`
`they would prevail with respect to their contention that Hathorn anticipates
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`claims 1-3 and 5-8.
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`C. Anticipation by Weygant
`
`Petitioners contend that claims 1-3, 5, and 8 of the ‘346 patent are
`
`anticipated under 35 U.S.C. § 102(b) by Weygant. Pet. 8, 9-20. To support
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`this contention, Petitioners rely on the testimony of Dr. Mercer. Ex. 1006,
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`¶¶ 46-50 (including claim chart).
`
`For the reasons discussed below, we are persuaded that Petitioners
`
`have not made a sufficient showing that there is a reasonable likelihood that
`
`they would prevail with respect to claims 1-3, 5, and 8 based on anticipation
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`by Weygant.
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`Figure 4.1 of Weygant is reproduced below.
`
`Weygant Overview
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`Figure 4.1 of Weygant shows a ―Highly Available NFS File Server.‖
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`A mirrored disk array is connected to nodes 1 and 2. Ex. 1003 at 129,
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`fig. 4.1. The nodes are connected through a pair of hubs to PC client
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`connections. Id.
`
`Weygant describes the hubs connecting to the nodes through LAN
`
`cards. Ex. 1003 at 139.3 At each node, there are two LAN cards, one active,
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`and one inactive. Id. Weygant further describes a communications link
`
`between nodes, which it describes as ―heartbeat[s].‖ Id. at 76. These
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`messages ―allow the high availability software to tell if one or more nodes
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`have failed.‖ Id.
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`Claims 1-3, 5, and 8
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`Petitioners claim that Weygant discloses all the elements of claim 1.
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`Pet. 9-15. Relying principally on Figure 4.1 of Weygant, Petitioners assert
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`that: (1) the mirrored disks are the claimed ―RAIDs‖; (2) the nodes 1 and 2
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`are the ―RAID controllers‖; (3) the LAN cards are the ―network controlling
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`units‖; (4) the hubs are the ―connecting units‖; and (5) the PC clients are the
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`―host computers.‖ Id.
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`For purposes of this decision, we focus on the term ―exchange
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`information,‖ which claim 1 recites, in pertinent part, as follows:
`
`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.
`(emphasis added).
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`3 Page references are to the Petitioners‘ page references, e.g., DHPN-
`1003/Page 139 of 181.
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`Petitioners assert that this limitation is met by Weygant‘s disclosure of
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`nodes that exchange ―heartbeat messages‖ via their LAN cards. Pet. 14
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`(citing Ex. 1003 at 66, 131; Ex. 1006 at 35-38). Petitioners further assert
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`that Weygant discloses one node‘s active-LAN card that communicates with
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`another node‘s active-LAN card. Pet. 14 (citing Weygant, figs. 2.10 and
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`2.12).
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`Petitioners‘ annotation of Figure 2.10 is reproduced below.
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`Figure 2.10 depicts Ethernet LANs in a Grouped Subnet and an
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`interconnection (thick-gray line) between the two LAN interfaces (identified
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`as ―first‖ and ―fourth‖ network controlling units in the annotated figure
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`above). Petitioners‘ declarant, Dr. Mercer, states that heartbeats are
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`transmitted between two active LAN interfaces and between the separate
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`nodes, thereby meeting the ―exchange information‖ limitation. Ex. 1006, at
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`36. Petitioners also rely on Figures 2.12 and Figures 4.1-4.4 to support their
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`contention that Weygant discloses ―exchange information.‖ Id. (citing Ex.
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`1006, 37).
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`Patent Owner contends that Petitioners improperly rely on different
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`embodiments from Weygant to meet the ―exchange information‖ limitation.
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`Prelim. Resp. 28-29. Patent Owner further argues that even if consideration
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`of the embodiment depicted in Figures 2.10 and 2.12 were proper, the
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`―exchange information‖ must ―be through one or more of the connection
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`units,‖ which is not shown in Figures 2.10 and 2.12. Prelim. Resp. 28.
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`We agree with Patent Owner that Petitioners‘ evidence combines
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`different embodiments from a single reference for purposes of establishing
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`anticipation, which is improper. See Net MoneyIN, Inc. v. Verisign, Inc.,
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`545 F.3d 1359, 1371 (Fed. Cir. 2008). For example, Petitioners rely on
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`―exchange information‖ being disclosed by Weygant‘s embodiment of a
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`publishing system using a file system request, Pet. 13 (citing to page 128),
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`and then point to Weygant‘s ―heartbeat messages‖ in inter-node
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`communications and Figures 2.10 and 2.12 to show that Weygant
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`―exchanges information,‖ Pet. 14-15 (citing to page 60), as recited in the
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`same claim. Petitioners do not explain sufficiently how these separate
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`disclosures in Weygant can be considered a single embodiment that shows
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`anticipation.
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`We further agree with Patent Owner that Petitioners have not shown
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`sufficient evidence that Weygant discloses the ―exchanges information‖
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`limitation. In particular, we are persuaded that the ―heartbeat messages‖ do
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`not meet the limitation reciting that ―the first network controlling unit
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`exchanges information with the fourth network controlling unit, and the
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`second network controlling unit exchanges information with the third
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`network controlling unit.‖ Ex. 1001, claim 1. Petitioners have not shown
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`sufficiently that Weygant‘s ―heartbeat messages‖ are transmitted and
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`received reciprocally between network controlling units. Although Weygant
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`suggests that a node receives the heartbeat message, Petitioners have not
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`Patent 6,978,346 B2
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`shown that a receiving node transmits a heartbeat message to another node.
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`See Ex. 1003 at 76.
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`We are not persuaded that Petitioners‘ evidence supports the
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`contention that: ―Weygant also teaches an active LAN card (network
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`controlling unit) communicates with an active LAN card of another node
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`(RAID controlling unit).‖ Pet. 14 (citing Weygant, figs. 2.10 and 2.12)
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`(emphasis added). Weygant describes the failure of one LAN card in
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`connection with Figure 2.10 as follows:
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`What happens in a failure scenario? Suppose the primary
`LAN card fails on node 2. Then the high availability software
`switches node 2‘s IP address to the standby interface on node 2
`and data continu
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