UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`
`
`
`VMWARE, INC., INTERNATIONAL
`BUSINESS MACHINES CORPORATION
`AND
`ORACLE AMERICA, INC.,
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`
`________________
`
`
`
`Case IPR2014-00949
`Case IPR2014-00901
`Patent No. 6,978,346 B2
`
`__________________
`
`
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`
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`

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`
`
`I.
`
`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`BACKGROUND ............................................................................................. 3
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`A. Other Inter Partes Reviews ................................................................... 3
`
`B.
`
`C.
`
`D.
`
`The ’346 Patent. .................................................................................... 4
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`Prosecution History ............................................................................... 7
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`Claims of the ’346 Patent ...................................................................... 8
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`III.
`
`INTERPRETATION OF THE ’346 PATENT CLAIMS ............................. 10
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`A.
`
`B.
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`“RAID” ................................................................................................ 12
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`“Exchanges Information” Between Network Interface
`Controllers ........................................................................................... 17
`
`C.
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`“Hub” and “Switch” ............................................................................ 20
`
`IV. THE CHALLENGE FAILS FOR ALL CLAIMS. ....................................... 22
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`A. Hathorn’s Non-RAID Teachings are Not Readily Combinable
`with Mylex’s RAID Teachings. .......................................................... 26
`
`B.
`
`It Would Not Have Been Obvious to Modify Mylex to Transmit
`Heartbeats Over the Fibre Channel Network. ..................................... 27
`
`1.
`
`2.
`
`The proposed modification is not feasible because
`Mylex’s “Reserved” ports are inactive. .................................... 28
`
`The only feasible way to transport heartbeats over the
`fibre channel network would not satisfy the claim
`language. ................................................................................... 30
`
`3. Modifying Mylex to send heartbeats over the host-side
`network is not supported by a sufficient motivation. ............... 33
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`4.
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`5.
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`The proposed modification is not a combination of prior
`art elements according to known methods to yield
`predictable results. .................................................................... 37
`
`If one skilled in the art were motivated to eliminate
`Mylex’s direct heartbeat connection, then there are other,
`more apparent paths for transporting the heartbeats than
`the ones resembling the claims. ................................................ 46
`
`C.
`
`It Would Not Have Been Obvious to Modify the Ports of
`Mylex’s RAID Controllers to Communicate Like Hathorn’s
`Storage Controller Ports. ..................................................................... 49
`
`1.
`
`2.
`
`3.
`
`The reconfigurability of Hathorn’s ports does not teach
`or suggest activating an inactive port, only its operation
`as a host or a peripheral. ........................................................... 50
`
`The storage controller ports in Hathorn are not
`interchangeable with the RAID controller ports in Mylex. ...... 52
`
`No other application of Hathorn’s teachings to Mylex
`would have been obvious. ......................................................... 54
`
`V.
`
`THE CHALLENGE FAILS FOR CLAIM 4. ............................................... 57
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`VI. THE CHALLENGE FAILS FOR CLAIM 5. ............................................... 57
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`VII. CONCLUSION .............................................................................................. 59
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`TABLE OF AUTHORITIES
`
`
`
`Cases
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`Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969) ..........40
`
`In re Cuozzo, No. 2014-1301 (Fed. Cir. Feb. 4, 2015) ............................................10
`
`Dell, Inc. v. Elecs. & Telecomm’ns Research Inst., IPR2013-00635,
`Paper 19 (Mar. 20, 2014) ...........................................................................3, 18
`
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) .............................................................57
`
`Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147 (1950) .........40
`
`Int’l Bus. Mach. v. ETRI, IPR2014-00976, Paper 15 (Jan. 9, 2015) .......................15
`
`Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968 (Fed. Cir. 1999) .......22
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ......................................... 33, 40
`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ...............................21
`
`In re Morris, 127 F.3d 1048 (Fed. Cir. 1997) ................................................... 10, 11
`
`Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) ...22
`
`Sakraida v. AG Pro, Inc., 425 U.S. 273 (1976) .......................................................40
`
`Tempo Lighting, Inc. v. Tivoli, LLC, No. 742 F.3d 973 (Fed. Cir. 2014) .. 11, 12, 20
`
`
`
`Statutes
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`35 U.S.C. § 119 .......................................................................................................... 7
`
`35 U.S.C. § 316(a)(8) ................................................................................................. 1
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`
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`
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`Rules
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`37 C.F.R. § 42.100(b) ..............................................................................................12
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`37 C.F.R. § 42.104(b) ..............................................................................................54
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`
`
`Other Authorities
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`Microsoft Computer Dictionary (5th ed. 2002) .......................................................14
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`MPEP § 706.02(j) ....................................................................................................54
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`MPEP § 2142 ...........................................................................................................33
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`MPEP § 2143(I) .......................................................................................................39
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`MPEP § 2143(I)(A) ............................................................................... 40, 41, 43, 45
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`MPEP § 2143.03 ......................................................................................................57
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012) ..10
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`Webster’s Computer Dictionary (9th ed. 2001) ......................................................14
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`Response
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`Page v
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, the Patent Owner,
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`Electronics and Telecommunications Research Institute (“ETRI”), provides this
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`Response to the following substantively identical Petitions for Inter Partes
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`Review1: (1) IPR2014-00901, initially filed on June 4, 2014, and last corrected on
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`July 21, 20142; and (2) IPR2014-00949, initially filed on June 13, 2014, and last
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`corrected on July 21, 2014. The Board joined IPR2014-00901 and IPR2014-00949
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`by a decision dated January 29, 2015. By stipulation, the parties agreed to set Due
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`Date 1 as April 17, 2015. See Paper 17 (Feb. 24, 2015). This Response is timely
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`filed. No fee is due with this Response, but if the Board believes that any fee is
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`due, it is authorized to charge deposit account 50-5836.
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`
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`1 The petition filed in IPR2015-00549 on January 8, 2015 also raises the identical
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`challenge. The Board decided in a decision dated March 26, 2015 not to institute
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`trial in that case. In the event that that decision is reconsidered and trial is
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`instituted in that case, this Response can serve as a response to that petition.
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`2 For simplicity and clarity, all references herein to “Petition” or “Pet.” are to this
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`second corrected petition filed on July 21, 2014 (Paper 8) in IPR2014-00901.
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`The sole issue for trial is whether the Petitioners have met their burden to
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`show that claims 1-9 of the ’346 Patent are obvious pursuant to “Ground 1” or
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`“Challenge #1” – “Mylex” in view of “Hathorn.”3 Mylex (Ex. 1006) is a paper
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`entitled “Storage Area Networks; Unclogging LANs and Improving Data
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`Accessibility,” by Kevin J. Smith of Mylex Corp. Hathorn (Ex. 1005) is U.S.
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`Patent No. 5,574,950. As explained herein and in the accompanying declaration of
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`Dr. Thomas M. Conte (Ex. 2301, herein “Conte ’901 Decl.”), the Petition fails to
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`show by a preponderance of the evidence that the Challenge prevails.
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`3 The Petition uses the label “Ground 1” (Pet. at 4), whereas Dr. Horst uses the
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`label “CHALLENGE #1” (Horst Decl. at 17 (§ VI)). This challenge/ground
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`(herein “Challenge 1”) is “Mylex in view of Hathorn” (Pet. at 4 (emphasis
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`added); see also Horst Decl. at 17 (same)), in distinction to Challenge 2, Hathorn
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`in view of Mylex, which the Institution Decision said is a redundant ground, for
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`which trial was not instituted. (Paper 14 (herein “Inst. Dec’n”) at 21.)
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`Accordingly, the Patent Owner only responds to Challenge 1, in which Mylex is
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`the primary reference and Hathorn is the secondary reference. In other words,
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`the Patent Owner does not respond to Challenge 2, in which Hathorn is the
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`primary reference and Mylex is the secondary reference.
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`II. BACKGROUND
`A. Other Inter Partes Reviews
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`This trial concerns two of six total inter partes review petitions directed at
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`the ’346 Patent. The Board refused to institute trial in IPR2014-00152, IPR2014-
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`00976, and IPR2015-00549. The Board recently concluded trial in IPR2013-
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`00635, issuing a final written decision on February 27, 2015. Dell, Inc. v. ETRI,
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`IPR2013-00635, Paper 39 (Feb. 27, 2015) (herein “’635 FWD”). In that case, the
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`Board found that claims 1-3 and 5-8 of the ’346 Patent are not anticipated by
`
`Hathorn. Based on the evidence presented in that case, the Board interpreted
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`“RAID” to mean “a single logical unit for mass storage using multiple physical
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`disk drives,” id. at 9, and found that Hathorn’s Figure 3 (the allegedly anticipatory
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`embodiment) does not disclose a RAID configuration, id. at 23.4
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`
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`4 To the extent that Challenge 2 is at issue, it clearly fails because Hathorn is an
`
`unfit primary reference. As the Board found in the ʼ635 FWD, Hathorn’s Figure
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`3 does not have a RAID. Challenge 2 asserts that Hathorn’s Figure 3 is a RAID
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`and relies on Mylex only to teach RAID failover techniques as claimed in claims
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`4 and 9 of the ʼ346 Patent. (Pet. at 18.) Challenge 2’s premise that Hathorn’s
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`Figure 3 discloses a RAID is incorrect, as the ʼ635 FWD demonstrates.
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`B.
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`The ’346 Patent.
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`Although the Board is familiar with the ’346 Patent from the numerous other
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`inter partes reviews concerning the ’346 Patent, the Patent Owner provides the
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`following abbreviated review of the aspects of the ’346 Patent and its prosecution
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`history most pertinent to deciding the Challenge at issue in this trial.
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`The ʼ346 Patent is directed at useful and advantageous ways to interconnect
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`a RAID, an acronym for “redundant array of inexpensive disks,” to its host
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`computers. Although a RAID is formed of many disk drives, it appears via a
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`controller – a RAID controller – to its host(s) as a single disk storage peripheral.
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`(Conte ’635 Decl. ¶¶ 18-21; Conte ’901 Decl. ¶¶ 29-32.) A RAID provides
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`redundancy at the disk-drive level and thus protection against failure of one or
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`more disk drives within the RAID. (Conte ’635 Decl. ¶ 18; Conte ’901 Decl. ¶
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`29.) The invention described and claimed in the ’346 Patent provides novel and
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`advantageous redundant interconnections between a RAID and its host computers.
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`Those interconnections provide both fault tolerance and enhanced performance,
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`measured in terms of bandwidth, if a controller or connection fails. (Conte ’635
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`Decl. ¶ 31; Conte ’901 Decl. ¶ 41; ’346 Patent 2:11-15, 3:1-9.) Thus, the ’346
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`Patent is aptly entitled “Apparatus for Redundant Interconnection Between
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`Multiple Hosts and RAID.”
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`The
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`’346 Patent describes
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`several prior art systems that attempt,
`
`like
`
`the
`
`invention,
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`to
`
`provide
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`interconnection redundancy between
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`multiple hosts and a RAID. Most
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`notably for purposes of understanding
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`the prior art cited in the Petition,
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`Figure 2 (reproduced above right)
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`illustrates a prior art system having a
`
`single hub or switch 210 connecting
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`host computers 200 and 201 with RAID controllers 230 and 231 of a RAID 240.
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`The RAID controllers 230 and 231 include communication controllers 221 and
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`222, which are directly connected to each other, as Mylex. One RAID controller is
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`the backup for the other, should the other RAID controller or its connection to the
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`hub or switch 210 fail. While that interconnection provides fault tolerance, a fault
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`in one of the RAID controllers or its connection to the hub or switch causes the
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`system to have only half the bandwidth between each of the host computers 200-
`
`201 and the RAID 240 as compared to its state before the fault, and a fault of the
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`hub or switch 210 causes the RAID 240 to be entirely inaccessible. (’346 Patent
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`1:49-59; Conte ’635 Decl. ¶¶ 25-26; Conte ’901 Decl. ¶¶ 36-37.)
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`The inventions of the ’346 Patent, as illustrated by way of example in
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`Figures 4 and 5, provide enhanced redundancy to interconnect the host computers
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`with a RAID. Referring to Figure 4 (reproduced below) as an example, a RAID
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`490 has two RAID controllers 460 and 461, each of which has two network
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`interface controllers – 470 and 471 in the RAID controller 460, and 480 and 481 in
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`the RAID controller 461. Two hubs or switches 440 and 441 connect each RAID
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`controller
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`to a plurality of host computers 400-405.
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` This redundant
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`interconnection scheme provides some fault tolerance if one of the hubs or
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`switches fails, and also provides fault tolerance with the same bandwidth before
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`and after a fault of a RAID controller or its connection. (’346 Patent 3:1-9; Conte
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`’635 Decl. ¶ 31; Conte ’901 Decl. ¶ 41.)
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`
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`To facilitate failover, network interface controllers 470 and 480 exchange
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`information, as do network interface controllers 481 and 471 (see, e.g., ’346 Patent
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`3:1-3, 3:62-66), as illustrated by way of example in the following annotated
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`versions of Figure 4 of the ’346 Patent:
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`
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`C.
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`Prosecution History
`
`The application that led to the ʼ346 Patent was filed on December 29, 2000
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`(Ex. 2001 at 1) and claims priority under 35 U.S.C. § 119 to a patent application
`
`filed September 19, 2000 in Korea (id. at 24). A first Office action rejected all
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`originally filed claims 1-8. (Id. at 91-95.) The Patent Owner responded by
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`amending claims 1-8 (id. at 102-03), adding new claim 9 (id. at 104), and arguing
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`against the rejections (id. at 105-08), explaining that pairs of network interface
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`controllers exchange information through the connecting units:
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`
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`(Id. at 106 (emphases added).) After the Examiner maintained the same rejections,
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`the Patent Owner responded by amending the claims further and repeating the
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`same remarks quoted above, explaining that pairs of network interface controllers
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`exchange information through the connecting units. (Id. at 135-36 (emphases
`
`added).) The Examiner then allowed all claims without providing any reasons for
`
`allowance. (Id. at 146.) The ʼ346 Patent was thus granted having claims 1-9.
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`D. Claims of the ’346 Patent
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`Independent claims 1 and 9 use slightly different terminology to refer to the
`
`components of the invention. The following color-annotated versions of Figure 4
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`are helpful as aids in understanding those claims. The added color labels in these
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`drawings correspond to the terminology used in the respective claims. The orange
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`arrows in both drawings illustrate the exchange of information between network
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`interface controllers, as recited in the claims. For clarity, this document uses the
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`labels in Figure 4 (i.e., “RAID controller” and “network interface controller” or
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`simply “NIC”) except when quoting the slightly different names used in claim 1.
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`’346 PATENT FIG. 4 ANNOTATED WITH CLAIM 1 TERMINOLOGY
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`’346 PATENT FIG. 4 ANNOTATED WITH CLAIM 9 TERMINOLOGY
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`III.
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`INTERPRETATION OF THE ’346 PATENT CLAIMS
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`The Office’s policy is to give the claims of a duly granted patent in a review
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`proceeding their “broadest reasonable interpretation.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012).5 Such an interpretation must
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`be reasonable; in fact, it must be reasonable in light of the relevant intrinsic
`
`evidence, including the specification. A body of case law has held that in the
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`context of original patent examination, where the applicant has an almost
`
`unfettered ability to amend its claims, the broadest reasonable interpretation must
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`be in light of the specification, which is the only intrinsic evidence fixed at the
`
`time of filing. In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997) (“[T]he PTO
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`is required to consult the specification during examination in order to determine
`
`the permissible scope of the claim.”). In that context, the broadest reasonable
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`interpretation of claim language is the “meaning of the words in their ordinary
`
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`5 One Federal Circuit case has affirmed that practice, In re Cuozzo, No. 2014-1301
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`(Fed. Cir. Feb. 4, 2015), but that decision is currently subject to en banc
`
`rehearing. The Patent Owner therefore reserves all rights to justify its proposed
`
`interpretations under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
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`banc), if appropriate.
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`usage as they would be understood by one of ordinary skill in the art, taking into
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`account whatever enlightenment by way of definitions or otherwise that may be
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`afforded by the written description contained in the applicant's specification.” Id.
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`at 1054.
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`For a patent under review, the entire original prosecution history is fixed at
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`the time of filing of the review petition. In fact, courts have long recognized that
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`the public relies on the prosecution history and held that such reliance is proper.
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`For at least these reasons, it would be unreasonable for the Office during a review
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`of a granted patent to ignore “whatever enlightenment by way of definitions or
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`otherwise that may be afforded by” the concluded original prosecution history. Id.
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`Indeed, the Federal Circuit has recently instructed the Office to take into account
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`the patentee’s statements in the original prosecution history to interpret claims of a
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`patent under reexamination. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
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`977 (Fed. Cir. 2014) (“[T]he prosecution history . . . serves as intrinsic evidence
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`for purposes of claim construction. This remains true in construing patent claims
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`before the PTO.”) The Board must do the same in this review.6
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`In the ’635 FWD, the Board set forth its final interpretations of several claim
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`terms and phrases. In addition, the Board has preliminarily interpreted some other
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`terms and phrases of the ’346 Patent claims in other proceedings. What follows
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`are the Patent Owner’s proposed interpretations of claim terms and phrases that are
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`relevant to an analysis of the Challenge in this trial.
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`A.
`
`“RAID”
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`The meaning of the term “RAID” is pertinent to the Challenge, as Hathorn
`
`does not contemplate a RAID as part of its relevant disclosure (i.e., Figure 3) and
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`thus is not readily combinable with Mylex’s RAID system. The ’635 FWD
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`interpreted the term “RAID” to mean “a single logical unit for mass storage using
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`
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`6 To the extent that the Board in this case interprets 37 C.F.R. § 42.100(b)
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`(referring to the “broadest reasonable construction in light of the specification in
`
`which it appears”) as permitting the Board to ignore the prosecution history when
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`interpreting the claims of the ʼ346 Patent, the rule is unlawful as contrary to
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`controlling Federal Circuit authority, viz., Tempo Lighting.
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`multiple physical disk drives.” ʼ635 FWD at 9. The Patent Owner accepts that
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`interpretation for this case.7
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`The Petition proposed as its interpretation simply what the acronym says
`
`when spelled out: “redundant array of inexpensive disks.” (Pet. at 6.) As the ʼ635
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`FWD recognized, however, the term “disks” in the acronym actually means “disk
`
`drives” to those skilled in the art, and the term “array” in the acronym signifies the
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`important fact that the RAID appears as a single logical storage unit. That view is
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`strongly supported by the evidence cited in the ʼ635 FWD as well as additional
`
`evidence not made of record in IPR2013-00635.
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`First, as noted in the ʼ635 FWD, the intrinsic evidence supports this view, as
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`the ʼ635 Patent’s specification always refers to the RAID in each embodiment and
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`prior art configuration in the singular and thus as a single logical unit. Second,
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`
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`7 The Patent Owner’s proposed interpretation of “RAID” in its preliminary
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`response here and in other cases has been slightly different from the Board’s
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`interpretation in the ʼ635 FWD, but the differences are not material to the issues
`
`in this case. The Patent Owner therefore accepts the Board’s interpretation for
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`this case.
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`multiple technical dictionaries, including Webster’s Computer Dictionary and the
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`Microsoft Computer Dictionary, also support this view. See Webster’s Computer
`
`Dictionary at 308 (9th ed. 2001) (Ex. 2004 at 11) (defining “RAID x” (where x =
`
`0, 1, and 2) as “[a] type of RAID storage device that combines two or more hard
`
`disks into a single logical drive. . . .” (emphasis added); see also Microsoft
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`Computer Dictionary at 437 (5th ed. 2002) (Ex. 2005 at 3) (defining “RAID”
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`saying, in part, “A data storage method in which data is distributed across a group
`
`of computer disk drives that function as a single storage unit. . . .”) (emphasis
`
`added)). Third, Dr. Conte has explained that a RAID is an alternative to a Single
`
`Large Expensive Disk (SLED), which, of course, presents itself as a single logical
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`drive. (See Conte ’635 Decl. ¶¶ 16-18; Conte ’901 Decl. ¶¶ 30-32.) Fourth, other
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`documents of record in IPR2013-00653 also support this view. For example, the
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`Chen paper explains that “[d]isk arrays . . . organize multiple independent disks
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`into a large, high-performance logical disk.” (Chen (Ex. 2102) at 2:1-2 (emphasis
`
`added).) Chen refers to “disk arrays” innumerable times (see, e.g., id. at Abstract,
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`2:17-29 (mentioning “disk arrays” seven times)), and presents “Basic RAID
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`Organizations” as a subsection in the section of his paper entitled “DISK ARRAY
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`BASICS” (id. at i (§§ 3 and 3.2 in table of contents)).
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`Moreover, there is evidence that was not of record in IPR2013-00635 that
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`further supports the Board’s interpretation of “RAID.” That evidence includes
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`DeKoning (U.S. Patent No. 6,073,218; Ex. 1010) and the declaration of Dr. Randy
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`Katz (Ex. 2202), who, according to petitioners IBM and Oracle, “was one of the
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`researchers who pioneered the development of RAID systems in the late 1980s,
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`and coined the term ‘RAID’” and therefore “is preeminently qualified.” Int’l Bus.
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`Mach. v. ETRI, IPR2014-00976, Paper 15, at 14 (Jan. 9, 2015); see also Horst Dep.
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`Tr. (Ex. 2302) 26:12-21.
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`DeKoning explains that a RAID controller makes a RAID “subsystem
`
`appear to the host computer as a single, highly reliable, high capacity disk drive,”
`
`stating:
`
`RAID storage subsystems typically utilize a control
`module that shields the user or host system from the
`details of managing the redundant array. The controller
`makes the subsystem appear to the host computer as a
`single, highly reliable, high capacity disk drive. In
`fact, the RAID controller may distribute the host
`computer system supplied data across a plurality of the
`small independent drives with redundancy and error
`checking information so as to improve subsystem
`reliability. Frequently RAID subsystems provide large
`cache memory structures
`to
`further
`improve
`the
`performance of the RAID subsystem. The cache memory
`is associated with the control module such that the
`storage blocks on the disk array are mapped to blocks in
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`the cache. This mapping is also transparent to the host
`system. The host system simply requests blocks of data
`to be read or written and
`the RAID controller
`manipulates the disk array and cache memory as
`required.
`
`(DeKoning 1:65 – 2:14 (emphases added).)
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`Also, Petitioners IBM and Oracle recognize this fundamental aspect of a
`
`RAID. In IPR2014-00976, the Petition argued that the Chong reference (U.S.
`
`Patent No. 6,070,251; Ex. 2303) discloses a RAID “because the two data storage
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`devices appear to the hosts as a single, reliable drive.” (Ex. 2201 at 13 (emphasis
`
`added).) In fact, not only did that Petition contend that “[t]he configuration
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`disclosed by the Chong Reference is a RAID configuration” precisely for this
`
`reason, the Petitioner’s expert, Dr. Katz, agreed. According to him, Chong’s
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`alleged “combination of data mirroring and fault tolerance makes the two data
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`storage devices appear as a single, reliable drive to the hosts, or in other words, a
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`RAID.” (Ex. 2202 ¶ 36 (emphasis added).)
`
`In summary,
`
`the evidence overwhelmingly supports
`
`the Board’s
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`interpretation of “RAID” in the ʼ635 FWD to mean “a single logical unit for mass
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`storage using multiple physical disk drives.”
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`B.
`
`“Exchanges Information” Between Network Interface Controllers
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`Various claims of the ’346 Patent recite in different ways that two particular
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`pairs of network interface controllers of different RAID controllers each exchange
`
`information. Claim 1 states:
`
`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.
`
`(’346 Patent 5:22-26 (emphases added).) Claim 4 elaborates somewhat:
`
`the second network interface controlling unit and the
`fourth network
`controlling unit
`are used
`for
`communication between the first RAID controlling unit
`and the second RAID controlling unit when the first and
`second RAID controlling units are not faulty.
`
`(Id. 5:39-43.) Claim 9 similarly states:
`
`wherein the first network interface controller in the
`first RAID controller
`.
`.
`. processes
`information
`transmitted from the second network interface controller
`in the second RAID controller,
`wherein the first network interface controller in the
`second RAID controller . . . processes information
`transmitted from the second network interface controller
`in the first RAID controller,
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`***
`wherein the first network controlling unit in the
`first RAID controlling unit exchanges information with
`the second network controlling unit in the second RAID
`controlling unit, and the second network controlling unit
`in the first RAID controlling unit exchanges information
`with the first network controlling unit in the second
`RAID controlling unit.
`
`(Id. 6:37-59 (emphases added).)
`
`The Board interpreted the phrase “exchanges information” – a phrase that
`
`appears in these and other limitations of the ’346 Patent claims – in the ’635 FWD
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`to mean “to transmit and receive information reciprocally.” ’635 FWD at 12. The
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`Petition proposes the same interpretation. (Pet. at 6, 8.) When that interpretation
`
`is applied to the language in claims 1 and 9 specifying that particular network
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`interface controllers “exchange[] information,” then it is clear that, with reference
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`to Figure 4 as an example, (1) network interface controllers 470 and 480 transmit
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`and receive information reciprocally and (2) network interface controllers 471 and
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`481 transmit and receive information reciprocally. These two pairs of information
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`exchanges are illustrated, by way of example, with the orange arrows in the
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`annotated versions of Figure 4 on pages 7, 9, and 10, supra.8
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`8 The Board need not decide whether the ’346 Patent claims should be interpreted
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`to require that the recited exchange of information between network interface
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`controllers be via “connection units,” as the Challenge contends that the prior art
`
`either teaches or could have been obviously modified to have such information
`
`exchanged through a host-side network formed of “connection units,” e.g., hubs
`
`or switches. To the extent the issue may arise, however, the Patent Owner notes
`
`both the specification and prosecution history of the ’346 Patent make clear that
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`the information exchange between network interface controllers takes place via
`
`the “connection units.” First, the only means disclosed in the ’346 Patent
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`specification for the network interface controllers of different RAID controllers
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`to exchange information is via the “connection units.” E.g., ’346 Patent Fig. 4
`
`(showing NICs 470 and 480 exchange information via connection unit 440, and
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`NICs 471 and 481 exchange information via connection unit 441). Second, the
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`prosecution history reinforces this point, as explained in § II-C supra at 7-8
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`(addition of NIC-to-NIC “exchanges information” limitations resulted in
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`allowance of claims after Applicant repeatedly explained on the record that this
`
`(continued . . .)
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`C.
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`“Hub” and “Switch”
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`The ’635 FWD interpreted the terms “hub” and “switch” to be equivalents in
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`the ’346 Patent. (’635 FWD at 14.) The Patent Owner respectfully disagrees. In
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`light of the augmented record in this case, it is clear that the two terms have
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`different meanings in the art in general and in the ’346 Patent as well.
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`The ’635 FWD noted that the “Patent Owner has no specific proposal for
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`either ‘hub’ or ‘switch’ and only argues they are different in some unspecified
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`way.” (Id.) However, Dr. Conte explains that a “hub” is “a network
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`interconnection device that simply passes on (repeats) all the information it
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`receives on any port so that all devices connected to its ports may receive that
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`information[,]” whereas a “switch” is “a network interconnection device that
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`control[s] the flow of network traffic based on the address information in each
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`
`
`(. . . continued)
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`information exchange takes place “through a connecting unit”). See Tempo
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`Lighting, 742 F.3d at 977. Overall, the intrinsic evidence compels interpreting
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`the claims to require that the NICs exchange information through the “connection
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`units” just as if the claims said “through the connecting units.”
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`IP