`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Baek et al.
`U.S. Patent No.: 6,978,346
`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
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 .............................................................................. 2
`II.
`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) ..................................................................... 6
`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 ............................................................................................. 7
`IV.
`A. Brief Description ...................................................................................................................... 7
`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 .............................................................................................................................. 9
`A. Brief Description of the References ............................................................................................. 9
`i.
`Mylex ................................................................................................................................... 9
`ii. Hathorn ............................................................................................................................... 10
`iii. Deitz .................................................................................................................................. 10
`iv. Griffith................................................................................................................................. 11
`v. DeKoning ............................................................................................................................ 12
`B. Motivation to Combine ............................................................................................................ 13
`A.
`[GROUND 1 and GROUND 2] – The Combination of Mylex and Hathorn Renders Obvious Claims 1-9 ..... 16
`B.
`[GROUND 3] – The Combination of Deitz or Mylex with Griffith or DeKoning Renders Obvious Claims 1-9 41
`VI.
`CONCLUSION ..................................................................................................................... 59
`CERTIFICATE OF SERVICE .............................................................................................................. 61
`
`
`
`

`

`
`IPR of U.S. Patent No. 6,978,346
`
`
`
`EXHIBITS
`
`
`IBM-ORACLE-1001: U.S. Patent No. 6,978,346 to Baek et al., foreign application priority
`date 9/19/2000 (“the ’346 patent”);
`
`IBM-ORACLE-1002: Excerpts from the Prosecution History of the ’346 Patent;
`
`IBM-ORACLE-1003: Expert Declaration of Dr. Robert Horst;
`
`IBM-ORACLE-1004: Dr. Robert Horst Curriculum Vitae;
`
`IBM-ORACLE-1005: U.S. Patent No. 5,574,950 to Hathorn et al., issued 11/12/1996
`(“Hathorn”);
`
`IBM-ORACLE-1006: Smith, Kevin J., “Storage Area Networks: Unclogging LANs and
`Improving Data Accessibility,” Mylex Corporation White Paper (published 5/29/1998)
`(“Mylex paper”);
`
`IBM-ORACLE-1007: U.S. Patent No. 6,401,170 to Griffith et al., filed on 8/18/1999
`(“Griffith”);
`
`IBM-ORACLE-1008: U.S. Patent No. 6,578,158 to Deitz et al., filed on 10/28/1999 (“Deitz”);
`
`IBM-ORACLE-1009: Affidavit of Mr. Chris Butler, on behalf of Internet Archive;
`
`IBM-ORACLE-1010: U.S. Patent No. 6,073,218 to DeKoning et al., filed on 12/23/1996
`(“DeKoning”);
`
`IBM-ORACLE-1011: Clark, “Designing Storage Area Networks,” 1st Edition, Addison-Wesley
`Professional (1999);
`
`IBM-ORACLE-1012: Spainhower, “Design for Fault-Tolerance in System ES /9000 Model
`900,” IEEE (1992);
`
`IBM-ORACLE-1013: IEEE 100: Authoritative Dictionary of IEEE Standards Terms, 7th
`Edition (2000); and
`
`IBM-ORACLE-1014: Siewiorek, D and Swarz R., “Reliable Computer Systems, Design and
`Evaluation,” Digital Press (1992).
`
`ii
`
`

`

`
`IPR of U.S. Patent No. 6,978,346
`International Business Machines Corporation and Oracle America, Inc. (collectively
`
`“Petitioners”) petition 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 Petitioners 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. Petitioners respectfully submit 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)
`
`The real parties-in-interest are International Business Machines Corporation and
`
`Oracle America, Inc.
`
`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 and
`
`petition for Inter Partes Review No. IPR2014-00901.
`
`1
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`

`

`
`IPR of U.S. Patent No. 6,978,346
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8 (b) (3)
`
`C.
`
`
`
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`Todd M. Friedman
`Reg. No. 42,559
`todd.friedman@kirkland.com
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Fax: (212) 446-4900
`
`
`D.
`
`Service Information
`
`BACK-UP COUNSEL
`Gregory S. Arovas
`Reg. No. 38,818
`greg.arovas@kirkland.com
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Fax: (212) 446-4900
`
`Please address all correspondence and service to counsel at the addresses
`
`provided in Section I(C) of this petition. Petitioners also consent to electronic service by
`
`email at IBM-Safe-Storage-KEService@kirkland.com.
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`Petitioners authorize the Patent and Trademark Office to charge Deposit Account
`
`No. 506092 for the fee set forth in 37 C.F.R. § 42.15 (a) for this petition and further
`
`authorize 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
`
`Petitioners certify that the ’346 Patent is eligible for IPR. The present petition is being
`
`filed within one year of service of the complaint against Petitioners in the Delaware District
`
`2
`
`

`

`
`IPR of U.S. Patent No. 6,978,346
`Court Action.1 Petitioners are 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.
`Petitioners request 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
`
`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 IBM-ORACLE-1003, the
`
`Declaration of Dr. Robert Horst (“Horst Declaration”), referenced throughout this petition.
`
`Ground
`Ground 1
`
`’346 Patent Claims
`Claims 1-9
`
`Basis for Rejections
`Obvious under §103 based on Mylex in
`
`view of Hathorn
`
`Ground 2
`
`Claims 1-9
`
`Obvious under §103 based on Hathorn
`
`in view of Mylex
`
`Ground 3
`
`Claims 1-9
`
`Obvious under §103 based on Deitz or
`
`Mylex in view of Griffith or DeKoning
`
`
`
`1 The Complaint against Oracle (Case No. 13-cv-01089) was served on June 19, 2013. The
`
`Complaint against IBM (Case No. 13-cv-01151) was served on July 1, 2013.
`
`3
`
`

`

`
`IPR of U.S. Patent No. 6,978,346
`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
`
`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). Petitioners submit, for purposes of the IPR only, that the
`
`2 The Mylex paper was publicly available for download via www.mylex.com. (See Ex. 1009.)
`
`4
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`

`

`
`IPR of U.S. Patent No. 6,978,346
`claim terms are presumed to take on their broadest reasonable interpretation in view of the
`
`specification of the ’346 patent. In particular, Petitioners expressly reserve the right to
`
`submit constructions for individual claim terms in the matters now pending in the District of
`
`Delaware, under the legal standards applicable in those proceedings which are different
`
`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
`
`“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
`
`disks.” (Ex. 1001 at Abstract; Ex. 1003, ¶¶ 14-16.)
`
`5
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`

`

`
`IPR of U.S. Patent No. 6,978,346
`“RAID controller/RAID controlling unit” (Claims 1-9)
`
`2.
`
`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.)
`
`3.
`
`“exchange/exchanges information” (Claims 1-9)
`
`Under the broadest reasonable interpretation in light of the specification, the phrases
`
`“exchange information” and “exchanges information” should both be construed to mean “to
`
`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
`
`construction is supported by the specification, which uses the term hub to refer to a hub or
`
`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
`
`unit” should be construed as “the part of a RAID controller that allows the RAID controller to
`
`communicate with the ‘connection units.’” (Ex. 1003, ¶¶ 14-16.)
`
`6
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`

`

`
`IPR of U.S. Patent No. 6,978,346
`
`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
`
`controller has two network interface controllers (“NICs”). The system has two hub/switch
`
`devices. Fig. 4 illustrates the system described in the ’346 patent:
`
`
`
`Figure 4 is a block diagram of a system including RAID 490 and its interconnection
`
`to host computers 400-405. (Id. at 2:64-3:6.) RAID 490 includes two RAID controllers 460
`
`and 461 and hubs 440 and 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 and 471, and RAID controller 461 includes network interface controllers 480
`
`and 481. (Id. at 3:11-13.) Each host computer has its own network interface controller (410
`
`7
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`

`

`
`IPR of U.S. Patent No. 6,978,346
`to 415), which connects the host computer through the hubs to the network interface
`
`controllers (470, 471, 480, 481) of RAID controllers 460 and 461. (Id. at 3:31-35.)
`
`This structure provides a “communication passage between two RAID controllers.”
`
`(Id. at 3:64-65.) For example, RAID controller 460 can send data to RAID controller 461 via
`
`NIC 470, switch/hub 440, and NIC 480. (Id. at 3:66-4:12.)
`
`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.)
`
`8
`
`

`

`V.
`
`
`IPR of U.S. Patent No. 6,978,346
`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 Petitioners will prevail with respect to the Challenged Claims.
`
`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
`
`Channel product line of external RAID controllers and the use of storage area networks to
`
`configure reliable and high-performance pools of storage. (Ex. 1006 at 2.) Mylex discloses
`
`SANs (storage area networks) made up of hubs and switches that include redundant
`
`connections between multiple hosts and RAID arrays, allowing for host-independent
`
`failover. (Id. at 16.) Mylex teaches fault tolerance where NICs on one RAID controller take
`
`over the function of NICs on a faulty RAID controller. (Id. at Figs. 17-19; Ex. 1003, ¶¶ 39-41,
`
`140-141). Mylex discloses a direct heartbeat path between controllers for exchanging fault
`
`tolerance information. (Ex. 1006 at Fig. 17).
`
`9
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`

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`IPR of U.S. Patent No. 6,978,346
`
`Hathorn
`ii.
`The Hathorn patent, entitled “Remote Data Shadowing Using A Multimode Interface
`
`To Dynamically Reconfigure Control Link-Level And Communication Link-Level” and
`
`assigned to IBM, is directed to DASDs (direct access storage devices) and discloses that
`
`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
`
`error correction procedures. (Ex. 1005 at 2:4-11.)
`
`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
`
`primary and secondary storage controller ports 321, 324, 331, and 334 [to] be dynamically
`
`set to communicate either as a channel or control unit link-level facility.” (Ex. 1005 at 8:1-6;
`
`10:41-45.) A “channel link-level facility” allows the storage controller ports on two different
`
`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
`
`discloses redundant RAID systems including multiple host computers connected to a
`
`plurality of hubs, where 1) one hub is connected to (i) an active RAID controller port on a
`
`10
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`

`
`IPR of U.S. Patent No. 6,978,346
`first RAID controller and (ii) an inactive RAID controller port on a second RAID controller,
`
`and 2) a second hub is connected to (i) an inactive RAID controller port on a first RAID
`
`controller and (ii) an active RAID controller port on a second RAID controller. (Ex. 1003, ¶¶
`
`224.)
`
`Deitz discloses the transmission of heartbeat signals (also called pings or polls)
`
`between RAID controllers through an inter-RAID-controller path (Figure 1) or a storage-side
`
`path (Figure 2, and 6:59-64). (Ex. 1008, at Figures 1-2; 6:59-63.)
`
`Griffith
`iv.
`The Griffith patent, titled “RAID Systems During Non-Fault And Faulty Conditions On
`
`A Fiber Channel Arbitrated Loop SCSI Bus Or Switch Fabric Configuration,” is assigned to
`
`Digi-Data Corporation. Griffith discloses a RAID system that uses arbitrated fiber channels
`
`or switch fabric to connect multiple host computers and storage array controllers (“SACs”).
`
`(Ex. 1007, at Abstract.) Griffith Figure 5 shows an embodiment of an “ACTIVE-ACTIVE
`
`redundant RAID system … which incorporates a switch fabric configuration.” (Id. at 4:53-55;
`
`Ex. 1003, ¶ 207.) Griffith teaches that fault tolerance information can be exchanged either
`
`through (i) a direct path between RAID controllers or (ii) by allowing the NICs to exchange
`
`information using the existing switch network. (Ex. 1007, at 9:15-21; 8:25-26; 9:37-40; Ex.
`
`1003, ¶¶ 204-16.) For example, see the annotated Griffith Fig. 4 below:
`
`11
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`

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`IPR of U.S. Patent No. 6,978,346
`
`
`Griffith discloses a redundant RAID system in which the switch fabric connecting the
`
`
`
`host computers and the controllers “provides redundancy in the case of any single computer
`
`or controller failure.” (Ex. 1007, at 2:35-38; 8:63-64.) “[E]ach SAC is designated a primary
`
`SAC for an array of storage units, which it normally serves as controller, and as a secondary
`
`SAC for another array of storage units.” (Id. at Abstract; Ex. 1003, ¶ 209.)
`
`DeKoning
`v.
`The DeKoning patent, titled “Methods And Apparatus For Coordinating Shared
`
`Multiple Raid Controller Access To Common Storage Devices,” is assigned to LSI Logic
`
`Corp. DeKoning discloses an “invention [that] provides inter-controller communications …
`
`[so that a plurality of RAID controllers] communicate among themselves to permit continued
`
`operations in case of failures.” (Ex. 1010 at 3:15-21.) DeKoning teaches using several
`
`12
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`

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`IPR of U.S. Patent No. 6,978,346
`communication mediums to exchange between RAID controllers, including using the
`
`existing host-side communication bus. (Id. at 4:58-5:10; Ex. 1003, ¶¶ 206, 216.)
`
`Motivation to Combine
`B.
`One of ordinary skill would have been motivated to apply the respective teachings of
`
`Mylex and Hathorn to render obvious claims 1-9 of the ’346 Patent. One of ordinary skill
`
`would have been motivated to combine the teachings of Mylex with Hathorn because of the
`
`close relationship between Mylex Corporation and IBM, assignee of the Hathorn patent. In
`
`September of 1999, IBM acquired Mylex. Storage system designers at IBM in the 2000
`
`timeframe would have been strongly motivated to combine and leverage storage technology
`
`from Mylex, and vice versa. Later IBM products were partly based on the technology IBM
`
`acquired from Mylex, demonstrating that the motivation to combine these features was real
`
`and actually resulted in new products. (Ex. 1003, ¶ 34.)
`
`Mylex and Hathorn also are directed to the same field of endeavor, and both
`
`describe similar redundant RAID systems that connect multiple hosts to switches or hubs,
`
`which in turn connect to RAID controllers with two or more ports. Both Mylex and Hathorn
`
`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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`IPR of U.S. Patent No. 6,978,346
`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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`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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`IPR of U.S. Patent No. 6,978,346
`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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`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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`IPR of U.S. Patent No. 6,978,346
`[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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`Specifically, a person of ordinary skill would understand that the Mylex paper
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`discloses every element of the ’346 patent’s claims 1-9, with the exception of a direct
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`exchange of information between network interface controlling units. Instead, the Mylex
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`paper discloses a direct “heartbeat” communication path between controllers for exchanging
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`information. However, the Hathorn patent teaches that communication paths are expensive,
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`and that this expense can be reduced by modifying network interface controlling unit ports
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`to use the existing switch network for communications between RAID controllers (instead of
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`using a direct “heartbeat” path). (Ex. 1003, ¶¶ 32, 48-55.) An annotated Mylex Figure 17 is
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`included below showing this combination:
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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, Petitioners present a single claim chart to address Grounds 1-2.
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`IPR of U.S. Patent No. 6,978,346
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`
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`Additionally, a person of ordinary skill would understand that the Hathorn patent
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`discloses every element of the ’346 patent’s claims 1-9, with the possible exception of the
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`fault tolerance functionality recited in the ’346 patent’s claims 4 and 9. However, the Mylex
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`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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`17
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`IPR of U.S. Patent No. 6,978,346
`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 performance for processing host commands
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`on the active ports. (Ex. 1003, ¶ 95). In the event of a fault, using the fault tolerance
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`teachings of Mylex, the second and fourth network interface controlling units could be
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`configured to execute a function of the first and third network interface controlling units
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`when one of the RAID controlling units is faulty. An annotated Mylex Figure 17 is included
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`below showing this configuration:
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`Claim No