IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Baek et al.
`U.S. Patent No.: 6,978,346 Attorney Docket No.: 27450-0011IP1
`Issue Date:
`December 20, 2005
`Appl. Serial No.: 09/753,245
`Filing Date:
`December 29, 2000
`Title:
`APPARATUS FOR REDUNDANT INTERCONNECTION BETWEEN
`
`MULTIPLE HOSTS AND RAID
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,978,346
`PURSUANT TO 35 U.S.C. §§ 311-319, 37 C.F.R. § 42
`
`

`

`TABLE OF CONTENTS
`
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8 (a) (1) ..................................... 1 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8 (b) (1) ......................................... 1 
`B.  Related Matters Under 37 C.F.R. § 42.8 (b) (2) ................................................ 1 
`C.  Lead and Back-Up Counsel Under 37 C.F.R. § 42.8 (b) (3)................................. 2 
`D.  Service Information ................................................................................... 2 
`II.  PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ............................................... 2 
`III.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ...................................... 2 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104 .............................................. 2 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............................ 3 
`C.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ......................................... 4 
`1. 
`“RAID” (Claims 1-9) ................................................................................ 5 
`2. 
`“RAID controller/RAID controlling unit” (Claims 1-9) ....................................... 5 
`3. 
`“exchange/exchanges information” (Claims 1-9) ............................................ 6 
`4. 
`“connection unit” (Claims 1-9) ................................................................... 6 
`5. 
`“network interface controller,” “network controlling unit,” and “network interface
`controlling unit” (Claims 1-9) ........................................................................... 6 
`SUMMARY OF THE ’346 PATENT ............................................................... 6 
`IV. 
`A.  Brief Description ....................................................................................... 6 
`B.  Prosecution History ................................................................................... 8 
`V.  MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH AN
`IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ’346 PATENT IS UNPATENTABLE ............................... 8 
`A.  Brief Description of the References ............................................................... 9 
`i.  Mylex ..................................................................................................... 9 
`ii.  Hathorn .................................................................................................. 9 
`iii.  Deitz .................................................................................................... 10 
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`i
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`iv.  Griffith .................................................................................................. 11 
`v.  DeKoning .............................................................................................. 12 
`B.  Motivation to Combine ............................................................................. 12 
`[GROUND 1 and GROUND 2] – The Combination of Mylex and Hathorn Renders
`A. 
`Obvious Claims 1-9 ....................................................................................... 15 
`[GROUND 3] – The Combination of Deitz or Mylex with Griffith or DeKoning Renders
`B. 
`Obvious Claims 1-9 ....................................................................................... 41 
`VI.  CONCLUSION ....................................................................................... 59 
`CERTIFICATE OF SERVICE ............................................................................. 61 
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`ii
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`
`EXHIBITS
`
`
`VMWARE-1001: U.S. Patent No. 6,978,346 to Baek et al., foreign application priority date
`9/19/2000 (“the ’346 patent”);
`
`VMWARE-1002: Excerpts from the Prosecution History of the ’346 Patent;
`
`VMWARE-1003: Expert Declaration of Dr. Robert Horst;
`
`VMWARE-1004: Dr. Robert Horst Curriculum Vitae;
`
`VMWARE-1005: U.S. Patent No. 5,574,950 to Hathorn et al., issued 11/12/1996
`(“Hathorn”);
`
`VMWARE-1006: Smith, Kevin J., “Storage Area Networks: Unclogging LANs and Improving
`Data Accessibility,” Mylex Corporation White Paper (published 5/29/1998) (“Mylex paper”);
`
`VMWARE-1007: U.S. Patent No. 6,401,170 to Griffith et al., filed on 8/18/1999 (“Griffith”);
`
`VMWARE-1008: U.S. Patent No. 6,578,158 to Deitz et al., filed on 10/28/1999 (“Deitz”);
`
`VMWARE-1009: Affidavit of Mr. Chris Butler, on behalf of Internet Archive;
`
`VMWARE-1010: U.S. Patent No. 6,073,218 to DeKoning et al., filed on 12/23/1996
`(“DeKoning”);
`
`VMWARE-1011: Clark, “Designing Storage Area Networks,” 1st Edition, Addison-Wesley
`Professional (1999);
`
`VMWARE-1012: Spainhower, “Design for Fault-Tolerance in System ES /9000 Model 900,”
`IEEE (1992);
`
`VMWARE-1013: IEEE 100: Authoritative Dictionary of IEEE Standards Terms, 7th Edition
`(2000); and
`
`VMWARE-1014: Siewiorek, D and Swarz R., “Reliable Computer Systems, Design and
`Evaluation,” Digital Press (1992).
`
`iii
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`

`
`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`VMware, Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) under 35 U.S.C.
`
`§§ 311-319 and 37 C.F.R. § 42 of claims 1-9 (“the Challenged Claims”) of U.S. Patent No.
`
`6,978,346 (“the ’346 patent” or “the Baek patent”). As explained in this petition, there exists
`
`a reasonable likelihood that Petitioner will prevail with respect to each of the Challenged
`
`Claims.
`
`The Challenged Claims are unpatentable based on teachings set forth in at least the
`
`references presented in this petition. Petitioner respectfully submits that an IPR should be
`
`instituted, and that the Challenged Claims should be cancelled as unpatentable.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8 (a) (1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8 (b) (1)
`
`Petitioner VMware, Inc. is the real party-in-interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8 (b) (2)
`
`The ’346 patent is the subject of a number of civil actions in the District Court for
`
`Delaware: Civil Action Nos. 1-13-cv-01152; 1-13-cv-01151; 1-13-cv-01150; 1-13-cv-01088;
`
`1-13-cv-01089; 1-13-cv-01090; 1-13-cv-00928; 1-13-cv-00927; 1-13-cv-00931; 1-13-cv-
`
`00932; 1-13-cv-00930; 1-13-cv-00929; 1-13-cv-00926; 1-12-cv-01629; 1-12-cv-01625; 1-12-
`
`cv-01627; 1-12-cv-01624; 1-12-cv-01628; and 1-12-cv-01626.
`
`The ’346 patent is also the subject of Inter Partes Review No. IPR2013-00635.
`
`
`
`
`
`1
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`

`

`
`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8 (b) (3)
`
`C.
`
`
`
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Katherine Kelly Lutton
`Reg. No. 46,333
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 202-783-2331
`
`
`D.
`
`Service Information
`
`BACK-UP COUNSEL
`Timothy W. Riffe
`Reg. No. 43,881
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 202-783-2331
`
`Please address all correspondence and service to counsel at the addresses
`
`provided in Section I(C) of this petition. Petitioner also consents to electronic service by
`
`email at IPR27450-0011IP1@fr.com.
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`Petitioner authorizes the Patent and Trademark Office to charge Deposit Account
`
`No. 06-1050 for the fee set forth in 37 C.F.R. § 42.15 (a) for this petition and further
`
`authorizes payment for any additional fees to be charged to this Deposit Account.
`
`III.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104
`
`Petitioner certifies that the ’346 Patent is eligible for IPR. The present petition is
`
`being filed within one year of service of the complaint against Petitioner in the Delaware
`
`2
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`

`

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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`District Court Action.1 Petitioner is not barred or estopped from requesting this review
`
`challenging the Challenged Claims on the below-identified grounds.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`B.
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth in the
`
`table shown below, and request that each of the Challenged Claims be found unpatentable.
`
`An explanation of how these claims are unpatentable under the statutory grounds identified
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`below is provided in the form of a detailed description that indicates where each element
`
`can be found in the cited prior art, and the relevance of that prior art. Additional explanation
`
`and support for each ground of rejection is set forth in Exhibit VMWARE-1003, the
`
`Declaration of Dr. Robert Horst (“Horst Declaration”), referenced throughout this petition.
`
`Ground
`Ground 1
`
`’346 Patent Claims
`Claims 1-9
`
`Ground 2
`
`Ground 3
`
`Claims 1-9
`
`Claims 1-9
`
`Basis for Rejections
`Obvious under §103 based on Mylex in
`view of Hathorn
`Obvious under §103 based on Hathorn
`in view of Mylex
`Obvious under §103 based on Deitz or
`Mylex in view of Griffith or DeKoning
`
`
`On its face, the ’346 Patent claims priority to U.S. Patent Application. No.
`
`09/753,245, filed on 12/29/2000, and a Korean application filed on 9/19/2000.
`
`The Hathorn patent (Ex. 1005) issued on 11/12/1996 and thus qualifies as prior art
`
`under 35 U.S.C. §§ 102(a) and (b). The Mylex paper (Ex. 1006) was publicly distributed no
`
`
`1 The Complaint against Petitioner (Case No. 13-cv-00928) was served on June 4, 2013.
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`3
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`later than 5/29/19982 and thus qualifies as prior art under 35 U.S.C. §§ 102(a) and (b).
`
`Therefore, both Hathorn and Mylex are printed publications that were publicly distributed
`
`more than one year before any of the applications to which the ’346 patent claims priority.
`
`The application that issued as the Griffith patent was filed on 8/18/1999, thus Griffith
`
`(Ex. 1007) qualifies as prior art under 35 U.S.C. § 102(e). The application that issued as the
`
`Dietz patent was filed on 10/28/1999, thus Deitz (Ex. 1008) qualifies as prior art under 35
`
`U.S.C. § 102(e). The application that issued as the DeKoning patent was filed on
`
`12/23/1996, thus DeKoning (Ex. 1010) qualifies as prior art under 35 U.S.C. § 102(e).
`
`Therefore, Griffith, Deitz, and DeKoning are patents that issued on respective applications
`
`filed before any of the applications to which the ’346 patent claims priority.
`
`C.
`
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`A claim subject to IPR is given its “broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). Thus, the words of
`
`the claim are given their plain meaning unless inconsistent with the specification. In re Zletz,
`
`893 F.2d 319, 321 (Fed. Cir. 1989). Petitioner submits, for purposes of the IPR only, that the
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`claim terms are presumed to take on their broadest reasonable interpretation in view of the
`
`specification of the ’346 patent. In particular, Petitioner expressly reserves the right to
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`submit constructions for individual claim terms in the matters now pending in the District of
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`Delaware, under the legal standards applicable in those proceedings which are different
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`2 The Mylex paper was publicly available for download via www.mylex.com. (See Ex. 1009.)
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`4
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`

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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`than those proposed or adopted in this proceeding, including how a person of ordinary skill
`
`in the art would understand the claims in light of relevant intrinsic and extrinsic evidence.
`
`Under the law applicable to construction in IPR proceedings, the following claim
`
`terms should be construed applying the broadest reasonable interpretation to be broad
`
`enough to encompass the corresponding definition:
`
`Claim Term
`
`“RAID”
`“RAID controller/RAID controlling unit”
`
`“exchange/exchanges information”
`
`“connection unit”
`“network interface controller,” “network
`controlling unit,” and “network interface
`controlling unit”
`
`
`1.
`
`“RAID” (Claims 1-9)
`
`Broadest Reasonable Interpretation
`“redundant array of inexpensive disks”
`“a component that controls operation of the
`RAID”
`“to transmit and receive information
`reciprocally”
`“a hub or switch”
`“the part of a RAID controller that allows the
`RAID controller to communicate with the
`‘connection units’”
`
`Under the broadest reasonable interpretation in light of the specification, the term
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`“RAID” should be construed as “at least a redundant array of independent disks.” “RAID” is
`
`understood by one of ordinary skill as an acronym for “redundant array of inexpensive
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`disks.” (Ex. 1001 at Abstract; Ex. 1003, ¶¶ 14-16.)
`
`2.
`
`“RAID controller/RAID controlling unit” (Claims 1-9)
`
`Under the broadest reasonable interpretation in light of the specification, the phrases
`
`“RAID controller” and “RAID controlling unit” should both be construed as “a component that
`
`controls operation of the RAID.” (Ex. 1003, ¶¶ 14-16.)
`
`5
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`

`

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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`“exchange/exchanges information” (Claims 1-9)
`
`3.
`
`Under the broadest reasonable interpretation in light of the specification, the phrases
`
`“exchange information” and “exchanges information” should both be construed to mean “to
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`transmit and receive information reciprocally.” (Ex. 1003, ¶¶ 14-16.)
`
`4.
`
` “connection unit” (Claims 1-9)
`
`Under the broadest reasonable interpretation in light of the specification, the phrase
`
`“connection unit” should be construed as “a hub or switch.” (Ex. 1003, ¶¶ 14-16.) This
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`construction is supported by the specification, which uses the term hub to refer to a hub or
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`switch. (Ex. 1001 at 3:13-18.)
`
`5.
`
`“network interface controller,” “network controlling unit,” and
`“network interface controlling unit” (Claims 1-9)
`Under the broadest reasonable interpretation in light of the specification, the phrases
`
`“network interface controller,” “network controlling unit,” and “network interface controlling
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`unit” should be construed as “the part of a RAID controller that allows the RAID controller to
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`communicate with the ‘connection units.’” (Ex. 1003, ¶¶ 14-16.)
`
`IV.
`
`SUMMARY OF THE ’346 PATENT
`
`A.
`
`Brief Description
`
`The ’346 patent relates to a system with “redundant interconnections between
`
`multiple hosts and a RAID.” The system includes two RAID controllers. Each RAID
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`controller has two network interface controllers (“NICs”). The system has two hub/switch
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`devices. Fig. 4 illustrates the system described in the ’346 patent:
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`6
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`Atttorney Docket No.: 27450-00011IP1
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`IPR of U.S. PPatent No. 6,9778,346
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`ng RAID 4990 and its innterconnecti
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`on
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`0 includes ttwo RAID coontrollers 4660
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`FFigure 4 is a block diagrram of a sysstem includi
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`to host ccomputers 4400-405. (Id. at 2:64-3:66.) RAID 49
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`and 461 and hubs 4440 and 441. (Id. at 3:10-18.) Eachh RAID conttroller includdes a pair off
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`or example
`network interface coontrollers. F
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`, RAID conttroller 460 inncludes netwwork interfaace
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`controlleers 470 and 471, and R
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`AID control
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`ler 461 incluudes netwo
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`rk interface controllers 480
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`and 481. (Id. at 3:111-13.) Each host compuuter has its
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`own networrk interface controller (4410
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`to 415), wwhich connects the hosst computerr through thee hubs to thhe network iinterface
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`controlleers (470, 4711, 480, 481)) of RAID coontrollers 4660 and 461.. (Id. at 3:311-35.)
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`TThis structure provides aa “communiication passsage betweeen two RAIDD controllerss.”
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`(Id. at 3:64-65.) For example, RRAID controller 460 cann send data to RAID coontroller 461
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` via
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`NIC 470
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`, switch/hubb 440, and NNIC 480. (Idd. at 3:66-4:
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`12.)
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`7
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`This redundant system of RAID controllers and network interface controllers purports
`
`to provide a “fault tolerant function.” (Id. at 3:63-66.) A RAID controller “having [an] error
`
`occurrence is removed from the network” and a NIC from the other RAID controller “takes
`
`over a function” of a NIC on the faulty RAID controller. (Id. at 4:19-25.)
`
`B.
`
`Prosecution History
`
`Two amendments were made during prosecution of the application which issued as
`
`the ’346 patent. An initial amendment was made following a rejection over US 5,812,754
`
`(hereinafter “Lui”). On February 10, 2005, the examiner issued a Final Office Action
`
`rejecting all claims over Lui. In response, Applicant amended claims 1-9 and argued that Lui
`
`does not teach “two network interface controlling units included in each RAID controller.”
`
`(Ex. 1002 at 48.) Applicant argued that Lui does not teach that “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.” (Id. at 48-49.)
`
`V.
`
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH AN
`IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD
`THAT AT LEAST ONE CLAIM OF THE ’346 PATENT IS UNPATENTABLE
`This request shows how the references above, alone or in combination with each
`
`other and other supporting references, disclose the limitations of the Challenged Claims and
`
`show they are unpatentable. As detailed below, this request shows a reasonable likelihood
`
`that Petitioner will prevail with respect to the Challenged Claims.
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`8
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`
`A.
`
`Brief Description of the References
`i.
`Mylex
`Mylex is a whitepaper entitled “Storage Area Networks: Unclogging LANs and
`
`Improving Data Accessibility,” authored by Kevin J. Smith of the Mylex Corporation and
`
`published on the Mylex Corporation’s public website. Mylex describes the Mylex Fibre
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`Channel product line of external RAID controllers and the use of storage area networks to
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`configure reliable and high-performance pools of storage. (Ex. 1006 at 2.) Mylex discloses
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`SANs (storage area networks) made up of hubs and switches that include redundant
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`connections between multiple hosts and RAID arrays, allowing for host-independent
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`failover. (Id. at 16.) Mylex teaches fault tolerance where NICs on one RAID controller take
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`over the function of NICs on a faulty RAID controller. (Id. at Figs. 17-19; Ex. 1003, ¶¶ 39-41,
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`140-141). Mylex discloses a direct heartbeat path between controllers for exchanging fault
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`tolerance information. (Ex. 1006 at Fig. 17).
`
`Hathorn
`ii.
`The Hathorn patent, entitled “Remote Data Shadowing Using A Multimode Interface
`
`To Dynamically Reconfigure Control Link-Level And Communication Link-Level” and
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`assigned to IBM, is directed to DASDs (direct access storage devices) and discloses that
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`multiple DASDs can be configured as a RAID. (Ex. 1003, ¶ 44.) Hathorn discloses that if a
`
`single DASD fails, then the lost data can be recovered by using the remaining data and
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`error correction procedures. (Ex. 1005 at 2:4-11.)
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`9
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`Hathorn teaches that RAID controllers can communicate either via direct paths
`
`between controllers, like in the Mylex reference, or by modifying the NICs to communicate
`
`between each other over the existing switch network. (Ex. 1003, ¶¶ 48-55.) Hathorn teaches
`
`that the storage controllers can have “dual function link-level facilities … [which allow] the
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`primary and secondary storage controller ports 321, 324, 331, and 334 [to] be dynamically
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`set to communicate either as a channel or control unit link-level facility.” (Ex. 1005 at 8:1-6;
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`10:41-45.) A “channel link-level facility” allows the storage controller ports on two different
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`RAID controllers to exchange information. (Id. at 5:8-15.)
`
`Deitz
`iii.
`U.S. Patent No. 6,578,158 to Deitz, titled “Method And Apparatus For Providing A
`
`RAID Controller Having Transparent Failover And Fallback,” is assigned to IBM. Deitz
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`discloses redundant RAID systems including multiple host computers connected to a
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`plurality of hubs, where 1) one hub is connected to (i) an active RAID controller port on a
`
`first RAID controller and (ii) an inactive RAID controller port on a second RAID controller,
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`and 2) a second hub is connected to (i) an inactive RAID controller port on a first RAID
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`controller and (ii) an active RAID controller port on a second RAID controller. (Ex. 1003, ¶¶
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`224.)
`
`Deitz discloses the transmission of heartbeat signals (also called pings or polls)
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`between RAID controllers through an inter-RAID-controller path (Figure 1) or a storage-side
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`path (Figure 2, and 6:59-64). (Ex. 1008, at Figures 1-2; 6:59-63.)
`
`10
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`

`

`Griffith
`iv.
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`TThe Griffith ppatent, titledd “RAID Sysstems Duringg Non-Faultt And Faultyy Conditionss On
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`Atttorney Docket No.: 27450-00011IP1
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`IPR of U.S. PPatent No. 6,9778,346
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`
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`A Fiber CChannel Arbbitrated Looop SCSI Buss Or Switch Fabric Connfiguration,” is assignedd to
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`Digi-Dataa Corporatioon. Griffith ddiscloses a RAID systeem that usess arbitrated fiber chann
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`or switchh fabric to coonnect multtiple host coomputers annd storage aarray contro
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`els
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`llers (“SACss”).
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`(Ex. 1007, at Abstraact.) Griffith Figure 5 shows an embbodiment off an “ACTIVVE-ACTIVE
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`nt RAID sysstem … which incorporates a switcch fabric connfiguration.”” (Id. at 4:533-55;
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`Ex. 10033, ¶ 207.) Griffith teachees that faultt tolerance i
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`through (i) a direct ppath betweeen RAID conntrollers or ((ii) by allowi
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`informatiion using the existing sswitch netwoork. (Ex. 10007, at 9:15-
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`21; 8:25-266; 9:37-40; EEx.
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`1003, ¶¶¶ 204-16.) FFor example, see the annnotated Grriffith Fig. 4
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`below:
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`11
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`Griffith discloses a redundant RAID system in which the switch fabric connecting the
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`host computers and the controllers “provides redundancy in the case of any single computer
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`or controller failure.” (Ex. 1007, at 2:35-38; 8:63-64.) “[E]ach SAC is designated a primary
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`SAC for an array of storage units, which it normally serves as controller, and as a secondary
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`SAC for another array of storage units.” (Id. at Abstract; Ex. 1003, ¶ 209.)
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`DeKoning
`v.
`The DeKoning patent, titled “Methods And Apparatus For Coordinating Shared
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`Multiple Raid Controller Access To Common Storage Devices,” is assigned to LSI Logic
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`Corp. DeKoning discloses an “invention [that] provides inter-controller communications …
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`[so that a plurality of RAID controllers] communicate among themselves to permit continued
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`operations in case of failures.” (Ex. 1010 at 3:15-21.) DeKoning teaches using several
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`communication mediums to exchange between RAID controllers, including using the
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`existing host-side communication bus. (Id. at 4:58-5:10; Ex. 1003, ¶¶ 206, 216.)
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`Motivation to Combine
`B.
`One of ordinary skill would have been motivated to apply the respective teachings of
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`Mylex and Hathorn to render obvious claims 1-9 of the ’346 Patent. One of ordinary skill
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`would have been motivated to combine the teachings of Mylex with Hathorn because of the
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`close relationship between Mylex Corporation and IBM, assignee of the Hathorn patent. In
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`September of 1999, IBM acquired Mylex. Storage system designers at IBM in the 2000
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`timeframe would have been strongly motivated to combine and leverage storage technology
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`12
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`from Mylex, and vice versa. Later IBM products were partly based on the technology IBM
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`acquired from Mylex, demonstrating that the motivation to combine these features was real
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`and actually resulted in new products. (Ex. 1003, ¶ 34.)
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`Mylex and Hathorn also are directed to the same field of endeavor, and both
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`describe similar redundant RAID systems that connect multiple hosts to switches or hubs,
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`which in turn connect to RAID controllers with two or more ports. Both Mylex and Hathorn
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`describe redundancy in terms of sending communications between two or more RAID
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`controllers and/or network interface controller ports. Both Mylex and Hathorn disclose RAID
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`1-type systems (disk mirroring/shadowing) (Ex. 1006 at 12; Ex. 1005 at 1:9-12), and
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`disclose using off-the-shelf components for constructing the RAID system, and as such their
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`combination is merely the use of known techniques to achieve predictable results. (Ex. 1006
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`at 15 (marketing “Mylex controllers”); Ex. 1005 at 6:25-34 (describing an IBM Enterprise
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`Systems/9000 (ES/9000) processor running DFSMS/MVS operating software, IBM 3990
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`Model 6 storage controllers, and an IBM ESCON Director dynamic switch).) One of ordinary
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`skill would have been motivated to study multiple examples of disk mirroring systems when
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`designing a new RAID system. As a result of their similarity, one of ordinary skill would have
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`been able to apply the fault tolerance teachings of Mylex to the system disclosed by
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`Hathorn, or the modifying NICs to communicate teachings of Hathorn to the system
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`disclosed by Mylex with predictable results. (Ex. 1003, ¶ 33-34.)
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`13
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`In addition, one of ordinary skill would have been motivated to apply (i) the Griffith
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`teachings of exchanging fault tolerance information using the existing switch network or (ii)
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`the DeKoning teachings of using a host-side communication bus to allow RAID controllers
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`to exchange information, to the systems described in Mylex or Deitz in order to render every
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`claim in the ’346 patent obvious. Mylex, Deitz, Griffith and DeKoning are in the same field of
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`endeavor, and each describes redundant RAID systems that connect multiple hosts to RAID
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`controllers. While Griffith only discloses using one switch or hub, and DeKoning discloses
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`using a host-side communication bus, the concept of using multiple switches or hubs in
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`RAID systems was well known at the time of the alleged invention. (See, Ex. 1005 at Fig. 3.)
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`Further, Griffith, DeKoning, Deitz and Mylex describe fault tolerance in terms of
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`sending communications between two or more RAID controllers and/or network interface
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`controlling unit ports. One of ordinary skill would have been motivated to study multiple
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`examples of fault tolerant RAID systems when designing a new RAID system, and Mylex
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`Corporation, IBM (assignee of the Deitz patent) and Digi-Data Corporation (assignee of the
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`Griffith patent) were all RAID providers. One of ordinary skill would have known to look at
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`the teachings of these RAID providers when configuring redundant RAID systems.
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`Furthermore, Mylex, Deitz, and Griffith all describe redundant RAID systems comprised of
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`off-the shelf components, and as such their combination is merely the use of known
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`techniques to achieve predictable results. (Ex. 1006, at 15 (marketing “Mylex controllers”);
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`Ex. 1007 at 5:33-35 (“A preferred SAC is the Z-9100 Ultra-Wide SCSI RAID controller
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`14
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`manufactured by Digi-Data Corporation, Jessup, Md.”); Ex. 1008 at 5:33-36 (“controllers
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`105 can be any suitable fibre channel compatible controller that can be modified to operate
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`according to the present invention, such as for example the DAC960SF, commercially
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`available from Mylex, Inc., Boulder, Colo.”); Ex. 1003, ¶¶ 221-222, 230.)
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`One of ordinary skill also would have been motivated to combine the teachings of
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`Griffith with Mylex controllers because Griffith discloses that its “preferred dual-port disk is
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`the 3.5-Inch Ultrastar2 XP available from IBM” (Ex. 1007 at 8:38-39), and there was a close
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`relationship between IBM and Mylex Corporation. In September of 1999, IBM completed the
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`acquisition of Mylex. Storage system designers in that timeframe using the IBM 3.5-Inch
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`Ultrastar2 XP disclosed in Griffith would have been strongly motivated to combine and
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`leverage the teachings from other IBM and Mylex storage technology. (Ex. 1003, ¶ 221-222,
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`230.)
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`A.
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`[GROUND 1 and GROUND 2] – The Combination of Mylex and Hathorn
`Renders Obvious Claims 1-9
`Claims 1-9 of the ’346 patent are obvious in light of Mylex in view of the teaching of
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`Hathorn, and/or Hathorn in view of the teachings of Mylex, thereby rendering each of these
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`claims unpatentable under 35 U.S.C. § 103.3
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`3 To avoid the duplicative presentation of formal elements (e.g. the claim language) and for
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`the Board’s convenience, Petitioner presents a single claim chart to address Grounds 1-2.
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`15
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`Atttorney Docket No.: 27450-00011IP1
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`IPR of U.S. PPatent No. 6,9778,346
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`SSpecifically, a person off ordinary skkill would unnderstand thhat the Myleex paper
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`disclosess every elemment of the ’346 patentt’s claims 1--9, with the eexception oof a direct
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`exchangge of informaation betweeen network interface coontrolling unnits. Insteadd, the Mylex
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`paper disscloses a direct “heartbbeat” comm
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`informatiion. Howeveer, the Hathhorn patent tteaches thaat communiccation pathss are expenssive,
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`and that this expensse can be reeduced by mmodifying neetwork interfrface contro
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`lling unit poorts
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`to use thhe existing sswitch netwoork for commmunicationss between RRAID controollers (insteaad of
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`using a ddirect “hearttbeat” path). (Ex. 1003,, ¶¶ 32, 48-555.) An annnotated Myl
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`included below showwing this coombination:
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`ex Figure 1
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`AAdditionally, a person off ordinary skkill would unnderstand thhat the Hathhorn patent
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`disclosess every elemment of the ’346 patentt’s claims 1--9, with the ppossible ex
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`fault toleerance functtionality recited in the ’3346 patent’ss claims 4 a
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`ception of thhe
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`nd 9. Howeever, the Myylex
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`Attorney Docket No.: 27450-0011IP1
`IPR of U.S. Patent No. 6,978,346
`paper teaches fault tolerance as claimed. (Ex. 1003, ¶¶ 40-41.) Hathorn discloses that all
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`NICs can be modified to exchange information using the switch network. (Ex. 1005 at 11:25-
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`43 (“The primary storage controller 325, acting as host with the ports 324 enabled as
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`channel link-level facility, sends an EPC frame to the secondary storage controller 335 …
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`the secondary storage controller 335 processes the EPC frame and returns an
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`acknowledgement (ACK) frame.”); Ex. 1003, ¶¶ 48-55.) As such, with reference to Hathorn
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`Fig. 3, ports 324B and 334B (2nd and 4th NICs) can be used to exchange fault tolerance
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`information in a non-faulty state, as claimed. Using the fault tolerance teachings of Mylex,
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`these ports can execute a function of ports 324A and 334A (1st and 3rd NICs) in a faulty
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`state, as claimed.
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`Further, with respect to claim [4b], one of ordinary skill, using the teachings of
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`Hathorn, would have found it obvious to configure Mylex’s second and fourth network
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`interface controlling units to exchange fault tolerance information. For example, with
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`reference to Mylex Fig. 17, using the “reserved” second and fourth NICs for exchanging
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`fault tolerance information, while neither controller is faulty, would be a matter of obvious
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`design choice, as this would allow maximum per