UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`VMware, Inc.
`Petitioner
`
`v.
`
`Safe Storage LLC
`Patent Owner
`
`
`
`
`Case IPR2014-______
`Patent 6,978,346
`
`
`
`
`DECLARATION OF ROBERT HORST, PH.D IN SUPPORT OF INTER
`PARTES REVIEW OF U.S. PATENT NO. 6,978,346
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 1 of 166
`
`VMWARE, INC. 1003
`
`

`

`
`
`TABLE OF CONTENTS
`
`I. 
`INTRODUCTION ......................................................................................... 4 
`BACKGROUND ............................................................................................ 4 
`II. 
`III.  LEVEL OF ORDINARY SKILL IN THE ART ........................................ 7 
`IV.  APPLICABLE LEGAL STANDARD ......................................................... 8 
`A.  Claim Construction ............................................................................................................... 8 
`B.  Anticipation And Obviousness ............................................................................................... 9 
`V. 
`TECHNOLOGY OF THE ’346 PATENT ................................................ 11 
`VI.  CHALLENGE #1 – CLAIMS 1-9 ARE RENDERED OBVIOUS BY
`THE MYLEX PAPER (Exhibit VMWARE-1006) IN VIEW OF THE
`TEACHINGS OF THE HATHORN PATENT (Exhibit VMWARE-
`1005) .............................................................................................................. 17 
`A.  Brief Summary of the Mylex Paper ...................................................................................... 20 
`B.  Brief Summary of the Hathorn Patent ................................................................................... 25 
`C.  The Mylex Paper In View Of The Teachings Of The Hathorn Patent Compared To The ’346
`Patent, Claims 1-9 .............................................................................................................. 32 
`VII.  CHALLENGE # 2 - CLAIMS 1-9 ARE RENDERED OBVIOUS BY
`THE HATHORN PATENT (Exhibit VMWARE-1005) IN VIEW OF
`THE TEACHINGS OF THE MYLEX PAPER (Exhibit VMWARE-
`1006) .............................................................................................................. 78 
`A.  The Hathorn Patent In View Of The Teachings Of The Mylex Paper Compared To The ’346
`Patent, Claims 1-9 .............................................................................................................. 81 
`VIII.  CHALLENGE # 3 – CLAIMS 1-9 ARE RENDERED OBVIOUS BY
`THE DEITZ PATENT (Exhibit VMWARE-1008) OR THE MYLEX
`PAPER (Exhibit VMWARE-1006) IN VIEW OF THE TEACHINGS
`OF THE GRIFFITH PATENT (Exhibit VMWARE-1007) OR THE
`DEKONING PATENT (Exhibit VMWARE-1010) ................................112 
`A.  Brief Summary of the Griffith and DeKoning Patents ........................................................... 113 
`B.  The Mylex Paper In View Of The Teachings Of The Griffith and/or DeKoning Patent Compared
`To The ’346 Patent, Claims 1-9 ......................................................................................... 119 
`C.  Brief Summary of the Deitz Patent ..................................................................................... 124 
`
`
`
`Page 2 of 166
`
`

`

`
`
`D.  The Deitz Patent In View Of The Teachings Of The Griffith and/or DeKoning Patents Compared
`To The ’346 Patent, Claims 1-9 ......................................................................................... 126 
`IX.  STATEMENT UNDER U.S.C. SECTION 1001 OF TITLE 18 ............165 
`
`
`
`
`
`
`
`
`
`
`Page 3 of 166
`
`

`

`
`
`I.
`
`INTRODUCTION
`1.
`
`I have been retained on behalf of the Petitioner VMware, Inc. to
`
`provide this Declaration concerning technical subject matter relevant to the inter
`
`partes review of U.S. Patent No. 6,978,346 (the “’346 patent”). I reserve the right
`
`to supplement this Declaration in response to additional evidence that may come to
`
`light.
`
`2.
`
`I am over 18 years of age. I have personal knowledge of the facts
`
`stated in this Declaration and could testify competently to them if asked to do so.
`
`II. BACKGROUND
`3. My name is Robert W. Horst. I am an independent consultant with
`
`more than 30 years expertise in the design and architecture of computer and
`
`storage systems. I hold a Bachelor of Science degree in Electrical Engineering
`
`from Bradley University, a Master of Science in Electrical Engineering from the
`
`University of Illinois at Urbana-Champaign, and a Ph.D. in Computer Science, also
`
`from the University of Illinois.
`
`4.
`
`Currently, I am an independent consultant for HT Consulting, where
`
`my work includes technology consulting and serving as an expert witness in patent
`
`and technology litigation. I am also Chief Technology Officer of Robotics for
`
`AlterG, Inc., where I am working on the design of orthotic devices to assist those
`
`with impaired mobility.
`
`
`
`Page 4 of 166
`
`

`

`
`
`5.
`
`I have testified as an expert witness and served as a consultant in
`
`patent and intellectual property litigation and in inter partes review and re-
`
`examination proceedings.
`
`6.
`
`I have worked as a Technical Director at Network Appliance, Inc.,
`
`where I worked on processor and interconnect options for future generations of
`
`network-attached storage systems. I also served as Vice President of Research &
`
`Technology at 3ware, Inc., where I developed low-cost RAID controllers and
`
`initiated and led a project on one of the industry’s first Ethernet Storage Area
`
`Network RAID storage systems. Prior to 3Ware, I worked as Technical Director at
`
`Tandem Computers/Compaq Computers where I contributed to the design and
`
`architecture of several generations of fault-tolerant systems. This work included
`
`development of CPUs, system-area networks, I/O systems, and storage systems. I
`
`have also been published in the areas of Networks, Storage, CPU Architecture,
`
`Fault Tolerance, and Bionics. In 2001, I was elected as an IEEE Fellow “for
`
`contributions to the architecture and design of fault tolerant systems and
`
`networks.” I have worked with patent attorneys on numerous patent applications,
`
`and I am a named inventor on 78 issued U.S. patents.
`
`7. My qualifications and experience are set forth in more detail in my
`
`Curriculum Vitae, which is being filed as Exhibit VMWARE-1004.
`
`
`
`Page 5 of 166
`
`

`

`
`
`8.
`
`I am being compensated for my work preparing this report. My
`
`compensation is not contingent upon the outcome of this proceeding or the
`
`opinions I develop in this matter.
`
`9. My preliminary opinions expressed herein are based on review and
`
`analysis of certain information obtained in connection with my work in this matter,
`
`together with my training, education, and experience. The opinions expressed
`
`herein are my own.
`
`10. The following identifies the information relied upon to date in
`
`connection with my work:
`
`(1) VMWARE-1001: U.S. Patent No. 6,978,346 to Baek et al., foreign
`application priority date 9/19/2000 (“the ’346 patent”);
`
`
`(2) VMWARE-1002: Excerpts from the Prosecution History of the ’346 Patent;
`
`(3) VMWARE-1005: U.S. Patent No. 5,574,950 to Hathorn et al., issued
`11/12/1996 (“Hathorn”);
`
`
`(4) VMWARE-1006: Smith, Kevin J., “Storage Area Networks: Unclogging
`LANs and Improving Data Accessibility,” Mylex Corporation White Paper
`(published 5/29/1998) (“Mylex paper”);
`
`
`(5) VMWARE-1007: U.S. Patent No. 6,401,170 to Griffith et al., filed on
`8/18/1999 (“Griffith”);
`
`
`(6) VMWARE-1008: U.S. Patent No. 6,578,158 to Deitz et al., filed on
`10/28/1999 (“Deitz”);
`
`
`(7) VMWARE-1009: Affidavit of Mr. Chris Butler, on behalf of Internet
`Archive;
`
`
`
`
`
`Page 6 of 166
`
`

`

`
`
`(8) VMWARE-1010: U.S. Patent No. 6,073,218 to DeKoning, et al., filed on
`12/23/1996 (“DeKoning”);
`
`
`(9) VMWARE-1011: Clark, “Designing Storage Area Networks,”1st Edition,
`Addison-Wesley Professional (1999);
`
`
`(10) VMWARE-1012: Spainhower, “Design for Fault-Tolerance in System ES
`/9000 Model 900,” IEEE (1992);
`
`
`(11) VMWARE-1013: IEEE 100: Authoritative Dictionary of IEEE Standards
`Terms, 7th Edition (2000); and
`
`
`(12) VMWARE-1014: Siewiorek, D and Swarz R., “Reliable Computer Systems,
`Design and Evaluation,” Digital Press (1992).
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`11. Based on my education and extensive experience relating to RAID
`
`storage systems and fault-tolerant systems, I believe I am qualified to provide
`
`opinions about the understanding and qualifications of a person of ordinary skill in
`
`the art of the technology at issue in this proceeding.
`
`12.
`
`In my opinion, a person of ordinary skill in the art of the ’346 patent,
`
`as of 2000, would have had a B.S. in Electrical Engineering or Computer Science
`
`and at least two years of experience in designing storage systems.
`
`13. My opinions below explain how a person of ordinary skill in the art
`
`would have understood the technology described in the references I have identified
`
`below around the 2000 time period.
`
`
`
`Page 7 of 166
`
`

`

`
`
`IV. APPLICABLE LEGAL STANDARD
`A. Claim Construction
`14.
`I understand that in an inter partes review proceeding, the claims of a
`
`patent are to be given their broadest reasonable meaning as they would be
`
`understood by one of ordinary skill in the art, consistent with the specification of
`
`the patent.
`
`15.
`
`It is my understanding that the Patent Trial and Appeal Board
`
`previously construed certain ’346 patent claim terms in an inter partes review filed
`
`by Dell Inc., Hewlett-Packard Company, and NetApp. For the purposes of my
`
`opinions set forth herein, I have used the Patent Trial and Appeal Board’s
`
`constructions identified below. I reserve the right to offer an opinion as to the
`
`proper construction of other claim terms in this proceeding. At this time, I have no
`
`opinion as to whether these constructions would be the proper constructions for
`
`any district court litigation involving the ’346 patent.
`
`Claim Term
`“RAID controlling unit” and “RAID
`controller”
`“RAID”
`“exchange/exchanges information”
`
`“connection unit”
`
`
`Construction1
`“A component that controls operation of
`the RAID”
`“Redundant array of inexpensive disks”
`“To transmit and receive information
`reciprocally”
`“a hub or switch”
`
`
`1 See IPR2013-00635, Paper 19 at pp. 8-11.
`
`
`
`Page 8 of 166
`
`

`

`
`
`16. Further, I understand that the Patent Owner stated in a prior IPR
`
`proceeding (IPR2013-00635, Paper 14 at p. 19) that a “network interface controller
`
`is the part of a RAID controller that allows the RAID controller to communicate
`
`with the ‘connection units.’” Therefore, for purposes of this proceeding, I
`
`incorporate the construction of the claim terms “network interface controller,”
`
`“network controlling unit,” and “network interface controlling unit,” as “the part of
`
`a RAID controller that allows the RAID controller to communicate with the
`
`‘connection units.’”
`
`B. Anticipation And Obviousness
`17.
`I have been informed that a patent claim is invalid as anticipated
`
`under 35 U.S.C. § 102 if each and every element of a claim, as properly construed,
`
`is found either explicitly or inherently in a single prior art reference. Under the
`
`principles of inherency, if the prior art necessarily functions in accordance with or
`
`includes the claimed elements, it anticipates.
`
`18.
`
`I have been informed that a claim is invalid under 35 U.S.C. § 102(a)
`
`if the claimed invention was known or used by others in the U.S., or was patented
`
`or published anywhere, before the applicant’s invention. I further have been
`
`informed that a claim is invalid under 35 U.S.C. § 102(b) if the invention was
`
`patented or published anywhere, or was in public use, on sale, or offered for sale in
`
`this country, more than one year prior to the filing date of the patent application
`
`
`
`Page 9 of 166
`
`

`

`
`
`(critical date). I further have been informed that a claim is invalid under 35 U.S.C.
`
`§ 102(e) if an invention described by that claim was disclosed in a U.S. patent
`
`granted on an application for a patent by another that was filed in the U.S. before
`
`the date of invention for such a claim.
`
`19.
`
`I have been informed that a patent claim is invalid as “obvious” under
`
`35 U.S.C. § 103 in light of one or more prior art references if it would have been
`
`obvious to one of ordinary skill in the art, taking into account (1) the scope and
`
`content of the prior art, (2) the differences between the prior art and the claims, (3)
`
`the level of ordinary skill in the art, and (4) any so called “secondary
`
`considerations” of non-obviousness, which include: (i) “long felt need” for the
`
`claimed invention, (ii) commercial success attributable to the claimed invention,
`
`(iii) unexpected results of the claimed invention, and (iv) “copying” of the claimed
`
`invention by others. For purposes of my analysis above, and because I know of no
`
`indication from the patent owner or others to the contrary, I have applied a date of
`
`September 19, 2000, as the date of invention in my obviousness analyses, although
`
`in many cases the same analysis would hold true even at an earlier time than
`
`September 19, 2000.
`
`20.
`
`I have been informed that a claim can be obvious in light of a single
`
`prior art reference or multiple prior art references. To be obvious in light of a
`
`single prior art reference or multiple prior art references, there must be a reason to
`
`
`
`Page 10 of 166
`
`

`

`
`
`modify the single prior art reference, or combine two or more references, in order
`
`to achieve the claimed invention. This reason may come from a teaching,
`
`suggestion, or motivation to combine, or may come from the reference or
`
`references themselves, the knowledge or “common sense” of one skilled in the art,
`
`or from the nature of the problem to be solved, and may be explicit or implicit
`
`from the prior art as a whole. I have been informed that the combination of
`
`familiar elements according to known methods is likely to be obvious when it does
`
`no more than yield predictable results. I also understand it is improper to rely on
`
`hindsight in making the obviousness determination. KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 421 (2007).
`
`V. TECHNOLOGY OF THE ’346 PATENT
`21. The ’346 patent relates to interconnections between host computers
`
`and storage systems. The storage systems referenced in the patent and claims are
`
`those known by the acronym RAID, which stands for Redundant Array of
`
`Inexpensive (or sometimes, Independent) Disks. The term RAID was first used in
`
`a 1987 paper by David Patterson and Randy Katz to describe storage systems built
`
`from multiple low-cost disk drives and configured to improve the reliability and/or
`
`performance of the storage system. Over time, multiple different levels of RAID
`
`were developed, including disk striping (RAID 0), disk mirroring (RAID 1), and
`
`various forms of parity protection across groups of drives (RAID 2 through RAID
`
`
`
`Page 11 of 166
`
`

`

`
`
`6). The ’346 patent does not specifically address a particular type of RAID system
`
`and instead focuses on connections between the RAID and the host computers.
`
`22. By the 2000 time frame, several different types of networks were
`
`being used to connect RAID systems to hosts. Networks providing block-level
`
`access to storage were called SANs (for storage-area networks) and these networks
`
`included FCAL (fibre channel arbitrated loop), switched fibre channel and IBM’s
`
`ESCON (Enterprise Systems Connection). Other networks used for block-level or
`
`file level access to storage included ATM (Asynchronous Transfer Mode),
`
`ServerNet, InfiniBand and Ethernet. The ’346 patent gives examples of some
`
`networks for connecting storage, but does not make claims specific to any
`
`particular network. The ’346 patent groups them together, calling them “industrial
`
`standard communications networks,” and also describes them using the general
`
`term “network” (’346 patent at 3:25-29).
`
`23. The terms “fault tolerance” and “fault tolerant system” describe
`
`systems that continue to function when part of the system encounters a fault. The
`
`concept of fault tolerant systems dates back to fault tolerant telephone switching
`
`systems introduced by AT&T in the 1960s and commercial fault-tolerant systems
`
`
`
`Page 12 of 166
`
`

`

`
`
`first introduced by Tandem Computers in the 1970s.2 The focus of the ’346 patent
`
`is on the configuration of redundant network connections between hosts and RAID
`
`storage to assure that fault tolerance and performance are maintained when a RAID
`
`controller experiences a fault.
`
`24.
`
`I reproduced Figure 4 of the ’346 patent below:
`
`
`2 For a summary of commercial fault tolerant systems, see Siewiorek, D and Swarz
`
`R., Reliable Computer Systems, 1992. (Exhibit VMWARE-1014). Page 568
`
`shows redundant host to storage connections in the AT&T 3B20D system (1981).
`
`Page 589 shows redundant host to storage connections in the Tandem NonStop
`
`(1976). Page 619 shows redundant host to storage connections in the Tandem
`
`Integrity S2 (1991).
`
`
`
`
`
`Page 13 of 166
`
`

`

`
`
`
`
`225. The ’’346 patent describess Figure 4 aas “a blockk diagram
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`showing oone
`
`
`
`embodimment of a hhost interfaface systemm as an inteernal installlment systtem betweeen a
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RAID aand host coomputers inn accordannce with thee present innvention.”” (’346 pattent
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`at 2:46--49.) Figurre 4 identiffies a systeem where tthree “hostt computerr[s]” (label
`
`
`
`
`
`
`
`
`
`
`
`
`
`ed
`
`
`
`400-4022) are connnected to a first “hub or switch”” (labeled 4440), and ffurther
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`connectted to a RAAID (labeleed 490) thrrough a nettwork interrface contrrolling unitt
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`port (labbeled 470)) on a first RAID conntroller (labbeled 460)
`
`
`
`
`
`and a netwwork interfface
`
`
`
`
`
`controllling unit poort (labeledd 480) on aa second RRAID contrroller (labeeled 461).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figure 44 also illusstrates that three otheer “host commputers” ((labeled 4003-405) aree
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`connectted to a seccond “hub or switch”” (labeled 4441), and ffurther connnected to tthe
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RAID thhrough a nnetwork intterface conntrolling unnit port (labbeled 471)) on the fir
`
`
`
`
`
`
`
`
`
`
`
`
`
`st
`
`
`
`
`
`Pagge 14 of 166
`
`

`

`
`
`RAID controller and a network interface controlling unit port (labeled 481) on the
`
`second RAID controller.
`
`26. As shown in Figure 4 above, network interface controlling unit port
`
`470 is networked through “hub or switch” 440 to network interface controlling unit
`
`port 480, and network interface controlling unit port 471 is networked through
`
`“hub or switch” 441 to network interface controlling unit port 481. The ’346
`
`patent discloses that “information” can be transmitted on these networks, but does
`
`not describe what type of information is transmitted.
`
`27. The ’346 patent does not disclose any specific modifications to the
`
`network interface controlling unit ports, the RAID controllers, or the hubs or
`
`switches that need to be made in order to transmit information on the networks
`
`between network interface controlling units. At most, the ’346 patent discloses
`
`that the mere addition of communication lines allowing both “hubs or switches” to
`
`connect both RAID controllers (e.g., in Figure 4, see lines labeled 450) is sufficient
`
`to allow communication between the network interface controlling units on two
`
`RAID controllers. The ’346 patent describes these communication lines broadly as
`
`follows:
`
`a communication line, representatively shown as 450 in
`the drawing, for connecting
`the network
`interface
`controller to the hub is a copper line or an optical fibre,
`which is matched to a corresponding standard. (’346
`patent at 3:39-42.)
`
`
`
`
`Page 15 of 166
`
`

`

`
`
`28.
`
`I understand that the claims at issue in this proceeding are claims 1-9,
`
`with claims 1 and 9 being independent.
`
`29. Claim 1 of the ’346 patent recites the following:
`
`[1a] An apparatus for a redundant interconnection between multiple hosts
`and a RAID, comprising:
`
`[1b] 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;
`
`[1c] 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 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.
`
`30. Claim 9 of the ’346 patent recites the following:
`
`[9a] An apparatus for a redundant interconnection between multiple host
`computers and a RAID, the apparatus comprising:
`
`[9b] a plurality of connecting units for connecting the host computers and
`the RAID;
`
`[9c] a first and a second RAID controllers, included in the RAID, each of
`which having a first network interface controller and a second network
`interface controller for processing requests from the plurality of the host
`computers connected through the plurality of the connection units,
`
`[9d] wherein the first network interface controller in the first RAID
`controller supplies data to the host computers connected through the
`plurality of connection units and processes information transmitted from
`the second network interface controller in the second RAID controller,
`
`
`
`Page 16 of 166
`
`

`

`
`
`[9e] wherein the first network interface controller in the second RAID
`controller supplies data to the host computers connected through the
`plurality of connection units and processes information transmitted from
`the second network interface controller in the first RAID controller,
`
`[9f] wherein the second network interface controller in the first RAID
`controller is used for fault tolerance by performing functions of the first
`network interface controller in the second RAID controller when the
`second RAID controller is faulty, and
`
`[9g] wherein the second network interface controller in the second RAID
`controller is used for fault tolerance by performing functions of the first
`network interface controller in the first RAID controller when the first
`RAID controller is faulty, and
`
`[9h] 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.
`VI. CHALLENGE #1 – CLAIMS 1-9 ARE RENDERED OBVIOUS BY
`THE MYLEX PAPER (Exhibit VMWARE-1006) IN VIEW OF THE
`TEACHINGS OF THE HATHORN PATENT (Exhibit VMWARE-1005)
`31.
`
`It is my opinion that the Mylex paper in view of the teachings of the
`
`Hathorn patent renders obvious claims 1-9 of the ’346 patent.3 I provide a brief
`
`description of the Mylex paper and the Hathorn patent below and then a more
`
`
`3 In setting forth my opinions regarding obviousness within this declaration, I am
`
`not setting forth the opinion that any reference does not anticipate any of the ’346
`
`patent’s claims.
`
`
`
`Page 17 of 166
`
`

`

`
`
`detailed discussion identifying the disclosures in the Mylex paper and teachings of
`
`the Hathorn patent that support my opinion.
`
`32. As described below, a person of ordinary skill would understand that
`
`the Mylex paper discloses every element of the ’346 patent’s claims 1-9, with the
`
`exception of a direct exchange of information between network interface
`
`controlling units. Instead, the Mylex paper discloses a direct “heartbeat”
`
`communication path between controllers for exchanging information. The Hathorn
`
`patent, on the other hand, teaches that communication paths are expensive, and that
`
`this expense can be reduced by modifying network interface controlling unit ports
`
`to use the existing switch network for communications between RAID controllers
`
`(instead of using a direct “heartbeat” path).
`
`33. A person of ordinary skill in the art would have been motivated to
`
`apply these Hathorn patent teachings to the system disclosed in the Mylex paper in
`
`order to render every claim in the ’346 patent obvious. For example, both the
`
`Mylex paper and the Hathorn patent are in the same field of endeavor. Both
`
`references disclose redundant RAID systems that connect multiple hosts to
`
`switches or hubs, which in turn connect to RAID controllers with two or more
`
`ports. Both references disclose redundancy in terms of sending communications
`
`between two or more RAID controllers and/or network interface controlling unit
`
`ports. Additionally, both references are concerned with RAID 1 (disk
`
`
`
`Page 18 of 166
`
`

`

`
`
`mirroring/shadowing). (See Mylex paper at 12 (“SAN-attached RAID arrays
`
`should support disk mirroring”); see Hathorn patent at 1:9-12 (“The present
`
`invention relates generally to remote data shadowing…”).) One of ordinary skill in
`
`the art would have been motivated to study multiple instances of systems for disk
`
`mirroring when designing a new RAID system. Further, both references disclose
`
`redundant RAID systems and disclose using off-the-shelf components for
`
`constructing the RAID system, and, as such, their combination is merely the use of
`
`known techniques to achieve predictable results. (See, e.g., Mylex paper at 15
`
`(marketing “Mylex controllers”); Hathorn patent at 6:25-34 (describing an IBM
`
`Enterprise Systems/9000 (ES/9000) processor running DFSMS/MVS operating
`
`software, IBM 3990 Model 6 storage controllers, and an IBM ESCON Director
`
`dynamic switch).)
`
`34. Finally, one of ordinary skill in the art would be motivated to combine
`
`the teachings of the Hathorn patent with the Mylex controllers because there was a
`
`close relationship between IBM, the assignee of the Hathorn patent, and Mylex
`
`Corporation. In September of 1999, IBM completed the acquisition of Mylex.
`
`Storage system designers at both companies in that timeframe would have been
`
`strongly motivated to combine and leverage storage technology from the other
`
`company. In fact, later IBM products were partly based on the acquired Mylex
`
`
`
`Page 19 of 166
`
`

`

`
`
`technology, demonstrating that the motivation to combine the features actually
`
`resulted in new products.
`
`A. Brief Summary of the Mylex Paper
`35. The whitepaper titled “Storage Area Networks: Unclogging LANs and
`
`Improving Data Accessibility” by Kevin J. Smith of Mylex Corporation (“the
`
`Mylex paper”) generally discloses Mylex’s Fibre Channel RAID controllers and
`
`the use of storage area networks to configure reliable and high-performance pools
`
`of storage. The Mylex paper was published on May 29, 1998, and made available
`
`on the Mylex public web site (www.Mylex.com). I understand that Petitioner is
`
`submitting a declaration by a business records custodian for archive.org
`
`identifying that the Mylex paper was publically available on the Mylex web site
`
`(www.Mylex.com) at least as early as February 4, 1999. (Exhibit VMWARE-
`
`1009).
`
`36. The Mylex paper includes illustrations of several configurations of the
`
`“seamless product line of external Raid Controllers” and explains that “Mylex
`
`array controllers are available in simplex configurations for network servers and
`
`duplex (dual) configurations for SAN’s and clusters. In duplex mode, advanced
`
`features are implemented to accelerate performance, protect data and guarantee
`
`data accessibility.” (Mylex Paper at 14). While some of the figures focus on
`
`particular features of one configuration, one of ordinary skill in the art would
`
`
`
`Page 20 of 166
`
`

`

`
`
`
`
`understaand that thhe features
`
`
`
`
`
`could be ccombined iin a single
`
`
`
`
`
`system. Thhe Mylex
`
`
`
`
`
`
`
`
`
`
`
`paper diiscloses Fiibre Channnel arbitrateed loop huub topologiies and swiitched
`
`
`
`
`
`
`
`topologgies, and coombinationn hub and sswitch topoologies thaat include rredundant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`connecttions betweeen hosts aand RAID arrays to aallow host--independeent failoverr.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`For example, the MMylex papper states:
`
`
`
`Myleex controlllers have ddual SAN N ports whhich doublees
`
`
`
`
`
`
`
`
`the bbandwidthh to contrrollers annd allows
`
`redundannt
`
`
`pathss from otther SAN
`
`devices tto the co
`ntrollers
`to
`resiliency
`SAN
`
`
`toppology. AAs
`
`increase
`the
`of
`the
`
`
`
`in this papper, dual hoost ports arre particul
`ar
`
`descrribed later
`
`criticcal
`
`for ccontroller
`failover
`
`
`in Fibrre Channnel
`
`
`
`topollogies. Thee SAN porrts can be
`
`connectedd directly
`to
`
`
`
`UNIXX and NTT servers oor indirectlly throughh hubs annd
`
`
`
`
`
`
`
`
`switcches. (Myllex Paper aat 16, emphhasis addedd.)
`
`
`
`
`
`
`37. For eexample, thhe Mylex ppaper’s Figgures 6 andd 20-21 aree reproduceed
`
`
`
`
`
`
`
`
`
`
`
`
`
`below, sshowing (ii) a combinnation swittch and hubb cascade ttopology (
`
`
`
`
`
`
`
`
`
`
`
`
`
`hub topologies (Fiigure 20), and (iii) swwitch topollogies (Figgure 21):
`
`
`
`
`
`
`
`
`
`
`
`Figure 6),
`
`(ii)
`
`
`
`
`
`
`
`Pagge 21 of 166
`
`

`

`
`
`
`
`38. As shhown in in the figures above, thhe Mylex ppaper discl
`
`
`
`
`
`
`
`
`
`
`
`
`
`multiplee hosts (each associatted with a fibre channnel host-buus adapter
`
`
`
`
`
`
`
`
`
`oses that
`
`
`
`“FC HBAA” in
`
`
`
`
`
`
`
`20 and 21
`Figures
`
`
`
`
`) may be cconnected tto at least ttwo RAIDD controllerrs (labeled,,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`e.g., FLL Controllers 0 and 1 in Figuress 20 and 211) through
`
`
`
`
`
`a pluralityy of conneccting
`
`
`
`
`
`
`
`Pagge 22 of 166
`
`

`

`
`
`
`
`units (laabeled as hhubs and swwitches). WWhile onlyy one hub oor switch i
`
`
`
`
`
`
`
`
`
`
`
`
`
`s shown inn
`
`
`
`Figures 20 and 21, one of orrdinary skill in the artrt would unnderstand tthe SANs
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`implemmented withh hubs and switches aare often immplementeed and exteended withh
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`multiplee hubs or sswitches. TThe RAID
`
`
`
`
`
`
`
`controllerrs include aat least twoo network
`
`
`
`
`
`
`
`interface controlling units (l
`
`
`
`
`
`abeled Porrt 0 and Poort 1 in Figgures 20 annd 21).
`
`
`
`
`
`
`
`
`
`
`
`
`
`39. The MMylex papper also dis
`
`
`
`closes a feeature of thhe Mylex ccontroller thhat
`
`
`
`
`
`
`
`
`
`providees high availability byy heartbeatt monitorinng and trannsparent coontroller
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`17 and 188 are
`
`
`
`
`
`
`
`
`
`
`
`failoverr/failback. For exampple, the Myylex paperr’s Figures
`
`
`
`
`
`reproduuced beloww:
`
`
`
`
`
`
`
`Pagge 23 of 166
`
`

`

`
`
`
`
`
`
`440. As shhown in Figures 17 aand 18, the
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mylex papper teachess that RAIDD
`
`
`
`controlllers can proovide faultt tolerance.. Two Myylex RAID
`
`
`
`
`
`
`
`
`
`
`
`informaation by sennding “heaartbeat” siggnals throuugh a path
`
`
`
`
`
`
`
`
`
`controller
`
`
`
`s exchangee
`
`
`
`linking thee two
`
`
`
`
`
`
`
`
`
`
`
`controlllers. Whenn one RAIDD controlleer has a fauult, that fauult is deteccted by the
`
`
`
`
`
`
`
`
`
`reservedd network controller port on thee non-faultty RAID c
`
`
`
`
`
`
`
`
`
`
`
`ontroller, wwhich assuumes
`
`
`
`
`
`the netwwork ID off the faulty network ccontroller pport in ordeer to proceess the hostt I/O
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`requestss being sennt to the fauulty netwoork controlller port. AAs such, in
`
`
`
`
`
`
`
`
`
`
`
`the event
`
`of a
`
`
`
`fault occurrence, tthere is no loss in banndwidth too the RAIDD storage.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`441. The MMylex papper’s Figuree 19 reprodduced beloow illustrattes that
`
`
`
`
`
`
`
`“[w]henn the failedd controllerr is replaceed, it is dettected by thhe survivinng controlller
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`which aallows it to restart andd returns thhe failed coontroller’ss port ID’s,, and then iit
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`starts prrocessing II/O” (Myleex paper at
`
`18):
`
`
`
`
`
`Pagge 24 of 166
`
`

`

`
`
`
`
`B.
`
`
`
`
`
`
`
`B 4
`
`
`
`
`
`
`Brieff Summarry of the HHathorn Paatent
`
`
`
`
`
`
`42. U.S. Patent No. 5,574,9500 (the “Hatthorn patennt”) is titleed “Remotee
`
`
`
`
`
`
`
`
`
`
`
`Data Shhadowing UUsing A MMultimode IInterface TTo Dynamiically Recoonfigure
`
`
`
`
`
`
`
`Controll Link-Level And Commmunicatiion Link-LLevel.” Thhe Hathorn
`
`
`
`
`
`
`
`
`
`
`
`
`
`patent issuued
`
`
`
`on Noveember 12, 1996 and iis assignedd to IBM.
`
`
`
`
`
`
`
`
`
`443. The HHathorn paatent generrally disclooses the usee of dynammic switchees to
`
`