Trials@uspto.gov
`571-272-7822
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`Paper 14
`Entered: December 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VMWARE, INC.,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2014-00901
`Patent 6,978,346 B2
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Entered: December 11, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VMWARE, INC.,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2014-00901
`Patent 6,978,346 B2
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-00901
`Patent 6,978,346 B2
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`I.
`INTRODUCTION
`On July 21, 2014, VMWare, Inc. (“Petitioner”) filed a Second
`Corrected Petition requesting an inter partes review of claims 1–9 of U.S.
`Patent No. 6,978,346 B2 (Ex. 1001, “the ’346 patent”). Paper 8 (“Pet.”).
`Electronics and Telecommunications Research Institute (“Patent Owner”),
`filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Applying the
`standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we institute an inter partes review of claims 1–9. The
`Board has not made a final determination of the patentability of any claim.
`A. Related Proceedings
`Petitioner advises that the ’346 patent is involved in the following co-
`pending district court cases: Safe Storage LLC v. StoneFly, Inc., 1-13-cv-
`01152; Safe Storage LLC v. Int’l Business Machines Corp., 1-13-cv-0 1151;
`Safe Storage LLC v. Emulex Corporation et al, 1-13-cv-01150; Safe Storage
`LLC v 3PAR Inc., 1-13-cv-01088; Safe Storage LLC v Oracle America Inc.
`et al, 1-13-cv-01089; Safe Storage LLC v ATTO Technology Inc. et al., 1-13-
`cv-01090; Safe Storage LLC v. VMware Inc., 1-13-cv-00928; Safe Storage
`LLC v. Promise Technology Inc., 1-13-cv-00927; Safe Storage LLC v.
`Nexsan Corporation, 1-13-cv-00931 ; Safe Storage LLC v. Overland
`Storage Inc., 1-13-cv-00932; Safe Storage LLC v. IQSS LLC, 1-13-cv-
`00930; Safe Storage LLC v. Infortrend Corporation, 1-13-cv-00929; Safe
`Storage LLC v. Cisco Systems Inc., 1-13-cv-00926; Safe Storage LLC v.
`Silicon Graphics Int’l Corp., 1-12-cv-0 1629; Safe Storage LLC v. Dot Hill
`Systems Corp., 1-12-cv-01625 ; Safe Storage LLC v. Hitachi Data Systems
`Corp., 1-12-cv-01627; Safe Storage LLC v. Dell Inc., 1-12-cv-01624; Safe
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`Storage LLC v. NetApp Inc., 1-12-cv-01628; Safe Storage LLC v. Hewlett-
`Packard Company, 1-12-cv-01626, all pending in the United States District
`Court for the District of Delaware.1 Pet. 1. The ’346 patent is the subject of
`an instituted inter partes review in Dell Inc. v. Electronics and
`Telecommunications Research Institute, Case IPR No. IPR2013-00635
`(PTAB)(the “’635 IPR”). Id. Additional petitions for review have been
`filed in Internation Business Machines Corp. v. Electronics and
`Telecommunications Research Institute, Case IPR2014-00949(PTAB) and
`International Business Machines Corp. v. Electronics and
`Telecommunications Research Institute, Case IPR2014-00976(PTAB). Id.
`B. The ’346 Patent
`The ’346 Patent describes an apparatus with “redundant
`interconnection between multiple hosts and a redundant array of inexpensive
`disks (hereinafter referred to as ‘RAID’).” Ex. 1001, Abstract. As a result
`of the redundant interconnection, the apparatus allows increased bandwidth
`in the event one of the two RAID controllers 460 and 461 has a failure. Id.
`at 3:1–9.
`
`Figure 4 of the ’346 patent is reproduced below:
`
`
`1 Petitioner lists only the case numbers. The case names are provided from
`IPR2013-00635, which Petitioner identifies here.
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`Figure 4 is a block diagram of a host matching system including
`RAID 490 and its interconnection to host computers 400–405. Ex. 1001,
`2:643:6. RAID 490 includes two RAID controllers 460, 461 and hubs 440,
`441. Id. at 3:10–18. Each RAID controller includes a pair of network
`interface controllers. For example, RAID controller 460 includes network
`interface controllers 470, 471, and RAID controller 461 includes network
`interface controllers 480, 481. Id. at 3:11–13. Each host computer has its
`own network interface controller (410 to 415), which connects the host
`computer through the hubs and to network interface controllers (470, 471,
`480, 481) of RAID controllers 460, 461. Id. at 3:31–35.
`The ’346 patent describes that the result is two independent networks
`with twice the bandwidth of a single network and a “communication
`passage” between the two RAID controllers. Id. at 3:62–64. The
`communication passage creates a “fault tolerant function” should one of
`RAID controllers 460 or 461 fail. Id. at 3:64–66. According to Figure 4,
`communications line 450 interconnects network interface controller 480 of
`RAID controller 461 and network interface controller 470 of RAID
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`controller 460. Id. at 4:2–6; Fig. 4. Then, RAID controller 461 may send
`information to RAID controller 460. Id. In like manner, network interface
`controller 471 of RAID controller 460 may be connected over
`communications lines to network interface controller 481 of RAID controller
`461, allowing RAID controller 460 to send information to RAID controller
`461. Id. at 3:66–4:2.
`By the arrangement described, the apparatus continues to operate in
`the event either RAID controller 460 or 461 has an “occurrence of an error.”
`Ex. 1001, 4:19–25. The interconnected network interface controller of the
`operational RAID controller assumes the functions of the network interface
`controller of the failed RAID controller. Id.
`C. Illustrative Claim
`Claim 1, one of the two independent claims of the challenged claims,
`is reproduced below:
`1. An apparatus for a redundant interconnection between
`multiple hosts and a RAID, comprising:
`
` a
`
` first RAID controlling units and a second RAID controlling
`unit for processing a requirement of numerous host computers,
`the first RAID controlling unit including a first network
`controlling unit and a second network controlling unit, and the
`second RAID controlling unit including a third network
`controlling unit and a fourth network controlling unit; and
`
` a
`
` plurality of connection units for connecting the first RAID
`controlling units and the second RAID controlling unit to the
`numerous host computers, wherein the first RAID controlling
`unit and the second RAID controlling unit directly exchange
`information with the numerous host computers through the
`plurality of connecting units, and the first network controlling
`unit exchanges information with the fourth network controlling
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`unit, and the second network controlling unit exchanges
`information with the third network controlling unit.
`
`
`Hathorn
`Mylex
`
`US 5,574,950
`Storage Area Networks;
`Unclogging
`LANs and Improving Data
`Accessibility, Mylex
`Corporation (1998)
`US 6,401,170 B1
`Griffith
`US 6,578,158 B1
`Dietz
`DeKoning US 6,073,218
`
`
`D. Prior Art Relied Upon
`Petitioners rely upon the following prior art references. Pet. 4–5.
`Reference
`Description
`Publication or
`Exhibit No.
`Issue Date
`Nov. 12, 1996
`May 29, 19982
`
`
`
`Ex. 1005
`Exs. 1006
`and 1009
`
`
`
`June 4, 2002
`June 10, 2003
`June 6, 2000
`
`Ex. 1007
`Ex. 1008
`Ex. 1010
`
`E. The Alleged Grounds of Unpatentability
`Petitioners allege the following grounds for unpatentability. Pet. 4.
`Claims
`Grounds
`References
`§ 103
`Mylex and Hathorn
`
`1–9
`
`1–9
`1–9
`
`§ 103
`§ 103
`
`Hathorn and Mylex
`Dietz or Mylex and Griffith or
`DeKoning
`
`F. Claim construction
`The Board interprets claims using the broadest reasonable
`construction in light of the specification of the patent in which they appear.
`
`2 Petitioners assert the Mylex paper was publicly available for download via
`www.mylex.com on May 29, 1998. Pet. 4.
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`37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,766 (Aug. 14, 2012).
` 1. “RAID” (Claims 1 and 9)
`Petitioners assert that “RAID” should be construed as “redundant
`array of inexpensive disks.” Pet. 6 (citing Ex. 1001, Abstract, Declaration of
`Dr. Robert Horst, Ex. 1003 ¶¶ 14–16). Patent Owner does not propose a
`construction for “RAID” but rather argues that technical details of a RAID
`are “relevant to an analysis of the challenges raised in this Petition.” Prelim.
`Resp. 12. Determining the ordinary and customary meaning of the term as
`that meaning would be understood by a person of ordinary skill in the art
`does not require us to incorporate technical details of a construed term.
`“RAID” is well understood by a person of ordinary skill in the art as
`an acronym for “redundant array of inexpensive disks.” Ex. 1001, Abstract.
`Dr. Horst’s testimony corroborates the stated understanding of the person of
`ordinary skill as set forth in the ’346 patent. Ex. 1004 ¶¶ 14–16. Consistent
`with our construction from the ’635 IPR, we construe “RAID” to mean
`“redundant array of inexpensive disks.”
`2. “RAID controller/RAID controlling unit” (Claims 1 and 9)
`Petitioner proposes that “RAID controller” and “RAID controlling
`unit” should both be construed as “a component that controls operation of
`the RAID.” Pet. 7 (citing Ex. 1003 ¶¶ 14–16). Patent Owner acknowledges
`that Petitioner’s proposal is the same as our construction of the term from
`the ’635 IPR, which Patent Owner characterizes as “not incorrect.” Prelim.
`Resp. 18–19. Patent Owner goes on to state that “it would be useful in
`deciding the patentability issues in this case to elaborate on what there terms
`in that interpretation mean.” Id. at 19. To the extent Patent Owner is
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`arguing a different construction than what we found in the ’635 IPR, we
`disagree. Patent Owner’s arguments relate to patentability issues. Although
`a specific construction may well determine patentability, a proper
`construction is not based upon the patentability issues.
`Thus, consistent with our construction from the ’635 IPR, we construe
`“RAID controlling unit” and “RAID controller” to mean “a component that
`controls operation of the RAID.”
`3. “exchange/exchanges information” (Claims 1 and 9)
`Petitioner proposes that the phrases “exchange information” and
`“exchanges information” should both be construed to mean “to transmit and
`receive information reciprocally.” Pet. 7 (citing Ex. 1003 ¶¶ 14–16). Patent
`Owner notes correctly that Petitioner’s proposal is consistent with our
`construction from the ’635 IPR. Prelim. Resp. 22. Patent Owner relies on
`the prosecution of the application, where “exchanges information” was
`added by amendment, to argue that “exchanges information” takes place via
`the “connection units.” Id. at 22 (citing Ex. 1001, Fig. 4, elements 440 and
`441).
`The claims use “exchange” and “exchanges information” according to
`their ordinary sense: to transmit and receive information reciprocally.3 The
`claim recites the structures between which information is exchanged, i.e.,
`between the RAID controlling units and the host computers, between the
`first and fourth network controlling units, and between the second and third
`network controlling units. The claim language requires only the information
`
`3 Definition exchange (vb) (3), WEBSTER’S THIRD NEW INTERNATIONAL
`DICTIONARY, UNABRIDGED (1993), available at
`http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary)
`(Exhibit 3001).
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`to and from the host computers to be exchanged through the connection
`units. The specification of the ’346 patent is consistent with the ordinary
`meaning of giving and receiving information reciprocally, because it
`describes that information is transmitted to and from a network interface
`controller of a first RAID and another network interface controller of a
`second RAID. Ex. 1001, 3:664:12.
`Consistent with our construction from the ’635 IPR, we construe
`“exchange/exchanges information” to mean “to transmit and receive
`information reciprocally.”
`4. “connection unit/hub/switch” (Claim 5)
`Petitioners propose the phrase “connection unit” should be construed,
`consistently with the ’635 IPR construction of the term, as “a hub or switch.”
`Pet. 7 (citing Ex. 1003 ¶¶ 1416). Petitioners cite to the Specification for
`support. Id. (citing Ex. 1001, 3:1318). Patent Owner agrees. Prelim.
`Resp. 20.
`Thus, consistent with the definition provided in the specification and
`our construction from the ’635 IPR, “connection unit” is “a hub or switch.”
`5. “network interface controller”/”network controlling unit”/”network
`interface controlling unit” (Claims 1 and 9)
`We did not interpret “network interface controller”4 in the ’635 IPR.
`Petitioner proposes that the phrases “network interface controller,” “network
`controlling unit,” and “network interface controlling unit” should be
`construed as “the part of a RAID controller that allows the RAID controller
`to communicate with the ‘connection units.’” Pet. 7 (citing Ex. 1003
`
`4 Patent Owner acknowledges “network controlling unit” and “network
`interface controller” are synonomous. Prelim. Resp. 20. For purposes of
`this decision we agree and reference “network interface controller.”
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`¶¶ 1416). Patent Owner acknowledges that Petitioner’s proposal is “not
`incorrect.” Prelim. Resp. 21. Regardless, Patent Owner’s proposal adds
`specifics regarding the ports associated with a “network interface
`controller.” Id. Patent Owner’s proposed construction of the term is “a
`controller that includes one or more ports as an interface to a computer
`network and that supplies communication functionality when attached to the
`computer network.” Id. (citing Declaration of Dr. Thomas M. Conte,5
`Ex. 2002 ¶ 44).
`The Specification describes each “network interface controller” as
`having a counterpart “network interface controller,” each “network interface
`controller” associated with a separate RAID controller. Ex. 1001, 2:2630.
`Furthermore,
`information from a second network interface controller 622 of a
`first RAID controller 620 is sent to a first network interface
`controller 632 of a second RAID controller 630, and
`information from a second network interface controller 632 of
`the second RAID controller 630 is transmitted to a first network
`interface controller 621 of the first RAID controller 620.
`Id. at 4:4046.
`Thus, we construe the “network interface controller” to mean “the part
`of a RAID controller that allows the RAID controller to communicate with
`another RAID controller.”
`
`II. ANALYSIS
`A. Obviousness of Claims 19 over Mylex and Hathorn
`Petitioner contends that claims 19 of the ’346 patent are obvious
`under 35 U.S.C. § 103 over Mylex and Hathorn. Pet. 1742. To support
`
`5 Dr. Conte’s declaration is part of Patent Owner’s Response in the ’635
`IPR.
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`this position, Petitioner relies on the testimony of Dr. Horst. Ex. 1003
`¶¶ 56138.
`
`1. Mylex
`Mylex generally describes Storage Area Networks (“SAN”) and
`associated architecture of such networks. Ex. 1006, 4.6 Storage Area
`Networks can be configured with switched fabrics or hubs and switches to
`exchange data between nodes of the network. Id. at 8.
`Figure 6 of Mylex is reproduced below.
`
`
`Figure 6 shows that switches are used to create Fibre Channel fabric. Id.
`Mylex describes that hub-connected Storage Area Networks bandwidth per
`node decreases as more nodes are added while bandwidth of fabric
`connected nodes increases as nodes are added. Id.
`Figure 7 of Mylex is reproduced below.
`
`
`
`
`6 Page references are to Mylex page numbers at the bottom right corner of
`each page. Petitioner uses the same numbers and not the exhibit page
`numbers centered at the bottom of the page.
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`Patent 6,978,346 B2
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`Figure 7 shows a four node cluster with shared access to RAID arrays. Id.
`at 9. Mylex describes that external RAID controllers can be used in a write-
`back caching scheme to protect data. Id. at 12.
`Figure 15 of Mylex is reproduced below.
`
`
`As shown in Figure 15, Mylex describes that if a controller fails, the
`surviving controller senses the absence of heartbeats, fails over the ID of the
`active port on the failed controller to its reserved port, and updates its data
`structures with configuration information stored on disk. Id. at 18.
`2. Hathorn Overview
`Hathorn discloses a remote copy system with dynamically modifiable
`ports on the storage controller that are alternatively configurable. Ex. 1005,
`Abstract. A primary storage controller can appear as a host processor to a
`secondary storage controller. Id. Hathorn describes a method for
`communicating between host processors and storage controllers, or between
`storage controllers.
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`Figure 3 of Hathorn is reproduced below.
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`Figure 3 is a block diagram of one embodiment of a remote dual copy
`system of the invention described in Hathorn. Primary storage
`controller 322 communicates through port A 321 with secondary storage
`controller 332. Ex. 1005, 8:1115. As shown in Figure 3, port A 321 acts
`as a channel link-level facility through communication links 350, dynamic
`switch 305, communication links 351, dynamic switch 315, and
`communication links 346 to communicate with secondary storage controllers
`332 and/or 335. Id.
`
`3. Claim 1
`Claims 1 and 9 are the only independent claims of the ’346 patent.
`We begin our analysis with claim 1. On this record, we are persuaded that
`there is a reasonable likelihood that Petitioner will prevail in establishing
`that claim 1 is obvious over Mylex and Hathorn.
`Petitioner contends that every element of claim 1 is taught by Mylex
`with the exception of claim 1’s limitation that requires “direct exchange of
`information between network interface controlling units.” Pet. 18. Mylex
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`only discloses “heartbeat” communication, while Hathorn teaches use of the
`existing switch network for communication between RAID controllers. Id.
`The preamble of claim 1 recites “a redundant interconnection between
`multiple hosts and a RAID.” Mylex teaches “[e]ach controller has
`redundant paths to host systems and pairs of controllers provide redundant
`paths to disks.” Ex. 1006, 15. Mylex also specifically discloses RAID
`controllers and RAID arrays. Id. at 1112. Petitioner cites to the above
`described teachings of redundant paths and RAID arrays as meeting the
`preamble.7 Pet. 20.
`Claim 1 next recites “a first RAID controlling units and a second
`RAID controlling unit for processing a requirement of numerous host
`computers.” Mylex Figure 17 shows two RAID controllers identified as “0”
`and “1” respectively. “Mylex controllers support active-active operation;
`both controllers simultaneously satisfy I/O requests from SAN nodes.” Id. at
`16. Petitioner asserts that the disclosed RAID controlling units and
`association I/O requests from nodes meet the limitation. Pet. 21; Ex. 1003
`¶¶ 6163.
`The next limitation of claim 1 is “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.” Mylex Figure 17
`
`7 Petitioner asserts the preamble of claim 1 is met by Mylex. Pet. 20.
`Here the preamble is part of the defined subject matter and is given
`patentable weight. Bell Communications Research, Inc. v. Vitalink
`Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995).
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`discloses RAID controller 0 includes Port 1 and a “Reserved” port while
`RAID controller 1 includes Port 2 and a “Reserved” port. Ports 1 and 2 and
`their associated Reserved ports are specified by Petitioner as meeting the
`four controlling unit limitations. Pet. 22, Ex. 1003 ¶¶ 6465 (see Annotated
`Figure 17).
`Patent Owner argues that “Mylex’s RAID controllers have multiple
`‘ports,’ not necessarily multiple network interface controllers.” Prelim.
`Resp. 47. We construed “network interface controller” as “the part of a
`RAID controller that allows the RAID controller to communicate with
`another RAID controller.” The construction is broad enough to include
`ports as disclosed in Mylex or Hathorn. We are not persuaded by Patent
`Owner’s arguments to the contrary, which amount to no more than a denial
`that a port is a “network interface controller.” See Prelim. Resp. 3132.
`Claim 1 next recites “a plurality of connection units for connecting the
`first RAID controlling units and the second RAID controlling unit to the
`numerous host computers.” Mylex teaches that various SAN components
`can be connected through hubs and switches. Ex. 1006, 19. Petitioner
`argues the Mylex disclosure of hubs and switches meets the limitation for
`connecting the first controller and the second controller to the hosts through
`a plurality of connection units. Pet. 23, Ex. 1003 ¶¶ 6672.
`Patent Owner contends Mylex teaches only one “connection unit” and
`disagrees with Dr. Horst’s testimony about Hathorn’s teachings. Prelim.
`Resp. 4446. Petitioner must specify in the Petition “where each element of
`the claim is found in the prior art patents or printed publications relied
`upon.” 37 C.F.R. § 42.104(b)(4)). Relying on Mylex or Hathorn does not
`meet Petitioner’s obligation to be specific. On this record, however, we are
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`persuaded that Mylex’s teachings have been shown to address sufficiently
`multiple connection units as claimed and as we have construed “connection
`units.”
`The next limitation of claim 1 is “wherein the first RAID controlling
`unit and the second RAID controlling unit directly exchange information
`with the numerous host computers through the plurality of connecting units.”
`Mylex teaches the use of external RAID array controllers for both read and
`write operations. Ex. 1006, 20, Figs. 12, 17 (disclosing RAID controllers
`connected to hosts via SAN network connecting units). Petitioner relies on
`the disclosure relating to read and write operations discussed above and the
`testimony of Dr. Horst to argue the limitation is taught by Mylex. Pet. 24
`(citing Ex. 1003 ¶¶ 7375).
`The final recited element of claim 1 is “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.” Petitioner acknowledges Mylex discloses
`only heartbeat messages used for exchanging fault tolerance information.
`Pet. 26 (citing Ex. 1006, Fig. 17). Petitioner therefore argues that the
`“exchanges information” limitation is found in Hathorn. Petitioner
`contends, with reference to Figure 3, that Hathorn discloses that a port 324A
`of the “Storage Controller,” i.e., “RAID controller,” can exchange
`information with another port, for example 334B of another “RAID
`controller.” Pet. 26 (citing Ex. 1003 ¶¶ 7980). As presented by Petitioner,
`port 324A is the first network controlling unit and port 334B is the fourth
`network controlling unit. Id. Petitioner cites to other storage network
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`architecture shown in Hathorn to support the “exchanges information”
`limitation. Id. at 2526.
`Patent Owner argues that Mylex’s reserved ports are inactive. Prelim.
`Resp. 4143. We disagree with Patent Owner that it is therefore
`“impossible for both alleged first and fourth network controllers to exchange
`information because they are never active at the same time.” Id. at 42. The
`Petitioner relies on Hathorn to meet the limitation, not Mylex. Patent
`Owner’s argument regarding Hathorn is that the Petition does not cite to
`Hathorn. Id. at 43. This argument is not supported by the record. See Pet.
`2526, Ex. 1003 ¶¶ 7980 (Annotated Figure 17 of Mylex).
`Petitioner argues that one of ordinary skill would have been motivated
`to combine Hathorn with Mylex. Specifically:
`One of ordinary skill would have been motivated to study
`multiple examples of disk mirroring systems when designing a
`new RAID system. As a result of their similarity, one of
`ordinary skill would have been able to apply the fault tolerance
`teachings of Mylex to the system disclosed by Hathorn, or the
`modifying NICs to communicate teachings of Hathorn to the
`system disclosed by Mylex with predictable results.
`Pet. 15 (citing Ex. 1003 ¶¶ 3334)(emphasis added).
`Patent Owner disagrees that there was motivation to combine Hathorn
`with Mylex. Prelim. Resp. 3538. Patent Owner argues that the only
`motivation provided by Petitioner for the modification of Mylex’s direct
`connection for communicating heartbeat messages with Hathorn’s fibre loop
`connection is cost savings. Id. at 38. Although we disagree that cost savings
`is not a rationale to combine, Petitioner’s showing on motive to combine
`goes beyond the cost saving argument. Pet. 15 (citing Ex. 1003 ¶¶ 3334).
`Thus, Patent Owner’s argument is not persuasive.
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` Petitioner presents evidence that both references are examples of
`disk mirroring systems which a person of ordinary skill would consider
`when designing a new RAID system. Ex. 1003 ¶¶ 3334. The record
`before us is developed insufficiently to support Patent Owner’s argument
`that there would not have been a reasonable expectation of success in
`making the combination. Prelim. Resp. 38. Even were there some
`evidence to support Patent Owner’s argument, expectation of success may
`not be dispositive and “any need or problem known in the field of endeavor
`at the time of invention and addressed by the patent can provide a reason for
`combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 420 (2007). Petitioner has provided “some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418.
`On this record, we are persuaded that there is a reasonable likelihood
`that Petitioners will prevail in establishing that claim 1 would have been
`obvious over Mylex and Hathorn.
`4. Claim 9
`Claim 9 includes limitations similar to claim 1. Petitioner relies on
`the evidentiary showing made with respect to claim 1 to allege most of the
`elements of claim 9 are taught. Pet. 3842. The remaining limitations are
`discussed below.
`The first remaining limitation of claim 9 is “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.” Petitioner argues that both Mylex and Hathorn
`
`
`
`
`18
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`IPR2014-00901
`Patent 6,978,346 B2
`
`teach this element. Pet. 3940. In connection with claim 1, however,
`Petitioner acknowledges that Mylex only discloses “heartbeat”
`communication, while Hathorn teaches use of the existing switch network
`for communication between RAID controllers. Id. at 18, 26. Therefore, in
`analyzing obviousness with respect to this limitation, which relates in part to
`“information transmitted,” our institution decision is based on the disclosure
`of Hathorn. Petitioner has made a sufficient showing regarding how
`Hathorn addresses the claim limitation. Id. at 3940.
`The next remaining limitation is “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.” Petitioner
`again asserts Mylex and Hathorn as both showing the limitation. Pet. 41.
`For purposes of our decision, the disclosure of Mylex, which is relied on by
`Dr. Horst, addresses sufficiently the claim limitation. See Ex. 1003
`¶¶ 131136.
`The last remaining limitation is “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.” Petitioner asserts
`that Mylex teaches the limitation. Pet. 4142, Ex. 1003 ¶ 137.
`Patent Owner does not advance any new arguments specific to
`claim 9. On this record, we are persuaded that there is a reasonable
`likelihood that Petitioner will prevail in establishing that claim 9 would have
`been obvious over Mylex and Hathorn.
`
`
`
`
`19
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`IPR2014-00901
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`
`5. Claims 28
`Claims 28 depend directly or indirectly from claim 1. Claim 1 was
`addressed above. We have reviewed the Petition with respect to claims 28.
`Pet. 2737. The Petition is supported by the testimony of Dr. Horst. Ex.
`1003 ¶¶ 81118. On this record, we are persuaded that there is a reasonable
`likelihood that Petitioner will prevail in establishing that claims 28 would
`have been obvious over Mylex and Hathorn.
`Petitioner argues that both Mylex and Hathorn teach the claim
`limitations of all dependent claims. Pet. 2737. Petitioner has failed,
`however, to distinguish the two references for purposes of showing that each
`addresses the claim limitations differently or in any particular way. That is,
`Petitioner has not specified why Mylex is a better reference than Hathorn or
`Hathorn is a better reference than Mylex for any particular limitation.
`Accordingly, where Petitioner does not distinguish which reference is being
`relied on, institution is based on the arguments advanced regarding Mylex.
`As an example of how the limitations of the dependent claims are
`taught, we analyze claim 2. Claim 2 depends from claim 1 and recites “said
`respective RAID controlling units are connected to the plurality of
`individual connecting units.” Petitioner argues that the limitation is taught
`by Mylex’s RAID controllers connected to a hub or switch. Pet. 27 (citing
`Ex. 1006, Figs. 20 and 21). Petitioner also relies on Mylex’s teaching that
`“[s]witches, hubs and routers are interconnect devices that can be employed
`to construct SAN networks.” Id. (citing Ex. 1006, 5, Figs. 12 and 17).
`Hathorn is cited as also teaching the limitation of claim 2. Pet. 27.
`For reasons discussed above, we use Mylex and not Hathorn as a basis to
`institute review regarding all dependent claims 28.
`
`20
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`IPR2014-00901
`Patent 6,978,346 B2
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`
`On this record, we are persuaded that there is a reasonable likelihood
`that Petitioner will prevail in establishing that claims 28 would have been
`obvious over Mylex and Hathorn.
`6. Summary
`Based on the foregoing, on this record, we conclude that Petitioner
`has demonstrated a reasonable likelihood of prevailing on the challenge that
`claims 1–9 would have been obvious under 35 U.S.C. § 103 over Mylex and
`Hathorn.
`
`B. Obviousness of Claims 19 over Hathorn and Mylex
`The asserted ground of unpatentability based on obviousness over
`Hathorn and Mylex8 as to claims 19 is redundant in light of the grounds on
`the basis of which we have instituted review for the same claims. Petitioner
`does not present any argument that this ground is distinguished in any
`material way from the ground based on Mylex and Hathorn. We exercise
`our discretion to decline to authorize inter partes review of claims 19 on
`the asserted ground of obviousness over Hathorn and Mylex. See 35 U.S.C.
`§ 325(d); 37 C.F.R. § 42.108(a); Liberty Mutual Ins. Co. v. Progressive Ins.
`Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012), (Paper 7,
`Order (Redundant Grounds); see also Prelim. Resp.
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