UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No.
`
`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
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and GREGG I.
`
`ANDERSON, Administrative Patent Judges.
`
`PETITIONER’S MOTION FOR REHEARING OF DECISION
`
`UNDER 37 CFR § 42.71(d)
`
`
`
`Paper No.
`
`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
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and GREGG I.
`
`ANDERSON, Administrative Patent Judges.
`
`PETITIONER’S MOTION FOR REHEARING OF DECISION
`
`UNDER 37 CFR § 42.71(d)
`
`
`
`Petitioner’s Motion For Rehearing of Decision
`IPR2013-00635 /Patent No. 6,978,346
`
`INTRODUCTION
`
`The Board recently declined to initiate inter partes review of US. Patent No.
`
`6,978,346 on four of the five grounds presented in the Petition, including all of the
`
`grounds employing the Weygant prior-art reference.
`
`Petitioners ask the Board to reconsider its decision on one of those
`
`challenges, namely, that claims 4 and 9 are obvious by Weygant and Mylex in
`
`further view of ServiceGuard (Challenge #3 in the Petition). As set forth below,
`
`Petitioners respectfully submit that the Board’s refusal to adopt Challenge #3 was
`
`incorrect as being based on a misapprehension of the evidence presented.
`
`Petitioners accordingly ask the Board to reconsider its decision and institute review
`
`on Challenge #3.
`
`STATEMENT OF FACTS
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`l. The ‘346 Patent relates to a system with “redundant interconnections
`
`between multiple hosts and a RAID.” The relevant portion of independent claim 9
`
`requires:
`
`[9.10] 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 [9.11] the
`
`second network controlling unit in the first RAID controlling unit
`
`exchanges information with the first network controlling unit in the
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`second RAID controlling unit.
`
`
`
`Petitioner’s Motion for Rehearing of Decision
`IPR2013-00635 /Patent No. 6,978,346
`
`2. Petitioners’ Challenge #3 cites Weygant to show limitations [9.10] and
`
`[9.11] of claim 9. For instance, the Petition notes that Weygant teaches these
`
`features because it teaches that the nodes (RAID controlling units) exchange
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`“heartbeat messages” via their LAN cards (network controlling units). Petition at
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`pp. 37-39.
`
`3. The Petition supports this proposition by citing, inter alia, to the Mercer
`
`Declaration (DHPN—1006) at pp. 109-115, where Dr. Mercer analyzes relevant
`
`portions of Weygant (DHPN-1003):
`
`Weygant teaches that the nodes (RAID controllers) exchange
`
`heartbeat signals via their LAN interfaces (network interface
`
`controllers): See Weygant at p. 60 (“In a cluster, the high availability
`
`software establishes a communication link known as a heartbeat
`
`among all the nodes in the cluster on a subnet known as the heartbeat
`
`subnet. These messages allow the high availability software to tell if
`
`one or more nodes has failed”), disclosing that the nodes send
`
`heartbeat signals to each other.
`
`(DHPN—lOO6 at pp.lO9-l 10, emphasis
`
`and bullet point omitted.)
`
`4. The Board construes “exchanges information” in [9.10] and [9.11] to
`
`mean “to transmit and receive information reciprocally,” Decision at p. l 1, then
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`states that “Petitioners have not shown sufficiently that Weygant‘s ‘heartbeat
`
`messages’ are transmitted and received reciprocally between network controlling
`
`
`
`Petitioner’s Motion for Rehearing of Decision
`IPR2013-00635 /Patent No. 6,978,346
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`units.” Id. at p.21.
`
`5. The Decision bases its reasoning on a technical observation of Weygant:
`
`“Neither this passage nor any other passage cited by Petitioners discloses that the
`
`heartbeat message of the node where the LAN card fails is directed to any LAN
`
`card in a different node.” Id. at p. 22 (emphasis in original).
`
`6. The Decision misapprehends Weygant’s discussion of heartbeats
`
`transmitted between nodes and does not specifically address Dr. Mercer’s
`
`statements regarding the heartbeats, thereby relying on a factual finding not
`
`supported by substantial evidence.
`
`LEGAL PRINCIPLES
`
`“A party may request rehearing on a decision by the Board on whether to
`
`institute a trial.” 37 C.F.R. § 42.71(c). Rehearing requests are due within 14 days
`
`of the entry of a decision to institute a trial. 37 C.F.R. § 42.71(d). The Board
`
`reviews its prior decision for abuse of discretion. 37 C.F.R. § 42.71(c). The party
`
`challenging the Board’s decision has the burden of showing that the decision
`
`should be modified. Id.
`
`An abuse of discretion may be shown if a decision is based on an erroneous
`
`interpretation of law, if a factual finding is not supported by substantial evidence,
`
`or if the decision represents an unreasonable judgment in weighing relevant
`
`factors. Raymarine, Inc. v. Navico Holding AS, IPR2013-00355 (Jan. 22, 2014),
`
`3
`
`
`
`Petitioner’s Motion for Rehearing of Decision
`IPR2013-00635 /Patent No. 6,978,346
`
`citing Arnold Partnership v. Dudas, 362 F3d 1338, 1340 (Fed. Cir. 2004).
`
`Petitioners respectfully submit that the Board relied on a factual finding not
`
`supported by substantial evidence in failing to adopt Challenge #3.
`
`ARGUMENT
`
`The Board erred in its finding that “[n]either this passage nor any other
`
`passage cited by Petitioners discloses that the heartbeat message of the node where
`
`the LAN card fails is directed to any LAN card in a different node.” See Decision
`
`at p. 22 (emphasis in original). On the contrary, Weygant as presented discloses
`
`that the heartbeat messages are transmitted and received reciprocally between the
`
`nodes and, thus, are transmitted from one node to another.
`
`Petitioners respectfully submit that the Board based its refusal to institute
`
`trial on the Weygant combinations on a technical misunderstanding of Weygant.
`
`In other words, the above-quoted sentence from page 22 of the Decision regarding
`
`heartbeat messages is incorrect. Weygant discloses the heartbeat messages are
`
`transmitted and received from one node to another. DHPN-1003 at p. 60 (“In a
`
`cluster, the high availability software establishes a communication link known as a
`
`heartbeat among all the nodes in the cluster on a subnet known as the heartbeat
`
`subnet. These messages allow the high availability software to tell if one or more
`
`nodes has failed”) (Emphasis added).
`
`Dr. Mercer cites to the above—quoted passage and other passages of Weygant
`
`4
`
`
`
`Petitioner’s Motion for Rehearing of Decision
`IPR2013—00635 /Patent No. 6,978,346
`
`to show that the heartbeat messages are transmitted and received from one node to
`
`another. See, inter alia, DHPN-1006 at pp.lO9—1 10 (citing Weygant at pp. 60, 115,
`
`and 123-124). For instance, Dr. Mercer notes that Weygant discloses “that the
`
`nodes send heartbeat signals to each other” and that “the heartbeats are transmitted
`
`from an active LAN interface
`
`on a node to another active LAN interface on
`
`another node” and cites to the passage at page 60 as well as the following passage:
`
`Figure 4.1 shows an Ethernet configuration in which one LAN card on
`
`each node is active and the other is a standby. The active LAN carries
`
`file server requests from clients and also the cluster's own heartbeat
`
`messages. DHPN-1003 at p. 115 (emphasis omitted and added).
`
`Thus, Petitioners’ originally-submitted evidence shows that heartbeat messages are
`
`transmitted and received reciprocally node-to-node.
`
`The Decision states that “[w]e are not persuaded that Petitioners’ evidence
`
`supports the contention that: ‘Weygant also teaches an active LAN card
`
`3”
`communicates with an active LAN card of another node. Decision at 22
`
`(emphasis in original). As support, the Decision cites a passage at page 80 of
`
`Weygant where remediation of a failure takes place within a single node as a result
`
`of a failure of a LAN-card within the node. But, this is a technical
`
`misunderstanding of Weygant due to focusing on one type of hardware failure
`
`(e.g., the failure of a Local Area Network (LAN)-card), while not appreciating
`
`
`
`Petitioner’s Motion for Rehearing of Decision
`IPR2013-00635 /Patent No. 6,978,346
`
`Weygant’s teaching with respect to other types of hardware failure (e.g., the failure
`
`of an entire node). Weygant specifically teaches communication ofheartbeat
`
`messages with another node to detect a failure ofan entire node.
`
`Weygant explains that “all of the following are points of failure” and lists
`
`client systems, routers, Ethernet hubs, cables, LAN interface cards, and nodes. See
`
`Weygant at 60.
`
`In the portion of Weygant excerpted by Dr. Mercer, heartbeats are
`
`transmitted and received reciprocally between the nodes in a cluster so that one
`
`node can determine when its partner node has failed. In fact, Weygant at page 60
`
`explicitly states that the inter-node heartbeats “allow the high availability software
`
`to tell if one or more nodes has failed.” Id. Thus, the Decision erred in focusing
`
`on LAN-card failure while not addressing Weygant’s discussion, which was cited
`
`by Dr. Mercer, of node failure. These Weygant passages show that one node’s
`
`active LAN card communicates reciprocally with another node’s active LAN card.
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`Accordingly, the Decision erred in not adopting Challenge #3 with respect to
`
`claim 9. The arguments above apply in the same manner to dependent claim 4
`
`(depending from claim 1) and, therefore, Challenge #3 should be adopted for both
`
`claims 4 and 9.
`
`The Decision’s error in addressing the Mercer Declaration and the relevant
`
`portions of Weygant result in a factual finding that is not supported by substantial
`
`evidence. Petitioners respectfully request that the Board reconsider the Decision
`
`6
`
`
`
`Petitioner’s Motion for Rehearing of Decision
`IPR2013—00635 /Patent No. 6,978,346
`
`and institute trial on Challenge #3 for claims 4 and 9.
`
`Furthermore, Challenge #3 is an obviousness challenge, so the Decision’s
`
`observation regarding the anticipation analysis including multiple different
`
`embodiments does not apply. Additionally, Challenge #3 only applies to claims 4
`
`and 9 and is therefore not cumulative to the granted challenge over Hathorn.
`
`CONCLUSION
`
`The Decision erred in not adopting Challenge #3 because of a
`
`misunderstanding of Weygant’s inter-node heartbeat messages. Dr. Mercer’s
`
`originally submitted evidence and the cited Weygant passages show that Weygant
`
`satisfies the claims’ “exchanges information” limitations. Petitioners accordingly
`
`request that the Board grant this motion for rehearing and permit Challenge #3 for
`
`claims 4 and 9 to go forward.
`
`Dated: April 2, 2014
`
`Respectfully submitted,
`
`%~\ , i\ at;
`
`David L. McCombs
`
`Registration No. 32,271
`
`HAYNES AND BOONE, LLP
`
`Customer No. 112792
`
`Telephone: (214) 651-5533
`Facsimile: (214) 200—0853
`Attorney Docket No.: 47415.430
`
`
`
`Petitioner’s Motion for Rehearing of Decision
`IPR2013-00635 /Patent No. 6,978,346
`
`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 IPR2013-0063 5
`
`Patent 6,978,346
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies service on
`
`the Patent Owner a copy of this Motion for Rehearing of Decision as detailed
`
`below.
`
`Date ofservice April 2, 2014
`
`Manner ofservice Electronic Mail:
`matthew.phillips@renaissanceiplaw.com;
`derek.meeker@renaissanceiplaw.corn; agiza@raklaw.com
`
`Document served Petitioner’s Motion for Rehearing of Decision;
`
`Persons served Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`
`Portland, Oregon 97223
`
`Russ August & Kabat
`12424 Wilshire Boulevard, 12th Floor
`
`Los Angeles, California 90025
`
`Q—AL 5g. ;
`
`David L. McCornbs
`
`Registration No. 32,271
`
`
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