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
`2014-00949
`
`
`
`IPR No:
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`SECOND CORRECTED 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 ........................ 3
`A. Grounds for Standing Under 37 C.F.R. § 42.104 ............................................. 3
`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) ..................................... 5
`1. “RAID” (Claims 1-9) .................................................................................... 6
`2. “RAID controller/RAID controlling unit” (Claims 1-9) ............................... 7
`3. “exchange/exchanges information” (Claims 1-9) ......................................... 7
`4. “connection unit” (Claims 1-9) ..................................................................... 7
`5. “network interface controller,” “network controlling unit,” and “network
`interface controlling unit” (Claims 1-9) .............................................................. 7
`IV. SUMMARY OF THE ’346 PATENT ........................................................... 8
`A. Brief Description .............................................................................................. 8
`B. Prosecution History .......................................................................................... 9
`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 .................................................................. 10
`A. Brief Description of the References ............................................................... 10
`i. Mylex .............................................................................................................. 10
`ii. Hathorn ........................................................................................................... 11
`iii. Deitz ............................................................................................................ 12
`
`

`

`
`IPR of U.S. Patent No. 6,978,346
`iv. Griffith ......................................................................................................... 12
`v. DeKoning ........................................................................................................ 14
`B. Motivation to Combine ................................................................................... 14
`A. [GROUND 1 and GROUND 2] – The Combination of Mylex and Hathorn
`Renders Obvious Claims 1-9 ................................................................................ 17
`i. Detailed Disclosure......................................................................................... 20
`B. [GROUND 3] – The Combination of Deitz or Mylex with Griffith or
`DeKoning Renders Obvious Claims 1-9 .............................................................. 42
`i. Detailed Disclosure......................................................................................... 44
`VI. CONCLUSION ............................................................................................. 59
`
`
`
`
`
`ii
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`

`

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`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).
`
`iii
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`

`
`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 the
`
`references presented in this petition. Petitioners 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.
`
`1
`
`

`

`
`IPR of U.S. Patent No. 6,978,346
`The ’346 patent is also the subject of IPR No. IPR2013-00635 and petitions
`
`for IPR Nos. IPR2014-00901 and IPR2014-00976.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8 (b)(3)
`
`
`
`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.
`
`2
`
`

`

`
`IPR of U.S. Patent No. 6,978,346
`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 complaints against
`
`Petitioners in the Delaware District Court Actions.1 Petitioners are not barred or
`
`estopped from requesting this review challenging the Challenged Claims on the
`
`below-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`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
`
`’346 Patent Claims
`
`Basis for Rejections
`
`
`1 The Complaint against Oracle (No. 13-cv-01089) was served June 19, 2013.
`
`The Complaint against IBM (No. 13-cv-01151) was served July 1, 2013.
`
`3
`
`

`

`Ground 1 Claims 1-9
`
`
`IPR of U.S. Patent No. 6,978,346
`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
`
`
`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 Deitz patent was filed on 10/28/1999, thus Deitz (Ex.
`
`2 The Mylex paper was publicly available for download via www.mylex.com.
`
`(See Ex. 1009.)
`
`4
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`

`

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`IPR of U.S. Patent No. 6,978,346
`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 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.
`
`5
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`

`

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`IPR of U.S. Patent No. 6,978,346
`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
`
`Broadest Reasonable Interpretation
`
`“RAID”
`
`“redundant array of inexpensive disks”
`
`“RAID controller/RAID controlling
`
`“a component that controls operation of the
`
`unit”
`
`RAID”
`
`“exchange/exchanges information”
`
`“to transmit and receive information
`
`“connection unit”
`
`reciprocally”
`
`“a hub or switch”
`
`“network interface controller,”
`
`“the part of a RAID controller that allows
`
`“network controlling unit,” and
`
`the RAID controller to communicate with
`
`“network interface controlling unit”
`
`the ‘connection units’”
`
`
`
`1.
`
`“RAID” (Claims 1-9)
`
`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.)
`
`6
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`

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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.)
`
`7
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`

`

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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. (Ex, 1001 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,
`
`8
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`

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`IPR of U.S. Patent No. 6,978,346
`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 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
`
`9
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`IPR of U.S. Patent No. 6,978,346
`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 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
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`10
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`

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`IPR of U.S. Patent No. 6,978,346
`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).
`
`ii. Hathorn
`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
`
`11
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`

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`IPR of U.S. Patent No. 6,978,346
`“channel link-level facility” allows the storage controller ports on two different
`
`RAID controllers to exchange information. (Id. at 5:8-15.)
`
`iii. Deitz
`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 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 (Fig. 2, and 6:59-64). (Ex. 1008, at Figs. 1-2; 6:59-63.)
`
`iv. Griffith
`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
`
`12
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`

`
`IPR of U.S. Patent No. 6,978,346
`Figure 5 shows an embodiment of an “ACTIVE-ACTIVE redundant RAID system
`
`… which incorporates a switch fabric configuration.” (Id. at 4:53-55) 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, ¶¶ 205, 208, 210-214.) For example, see the annotated Griffith
`
`Fig. 4 below:
`
`
`
`
`
`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
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`IPR of U.S. Patent No. 6,978,346
`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 communication
`
`mediums to exchange between RAID controllers, including using the existing host-
`
`side communication bus. (Id. at 4:58-5:10; Ex. 1003, ¶ 206.)
`
`B. Motivation to Combine
`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
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`Mylex. Storage system designers at IBM in the 2000 timeframe would have been
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`strongly motivated to combine and leverage storage technology from Mylex, and
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`vice versa. Later IBM products were partly based on the technology IBM acquired
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`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
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`or hubs, which in turn connect to RAID controllers with two or more ports. Both
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`Mylex and Hathorn describe redundancy in terms of sending communications
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`between two or more RAID controllers and/or network interface controller ports.
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`Both Mylex and Hathorn disclose RAID 1-type systems (disk mirroring/
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`shadowing) (Ex. 1006 at 12; Ex. 1005 at 1:9-12), and disclose using off-the-shelf
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`components for constructing the RAID system, and as such their combination is
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`merely the use of known techniques to achieve predictable results. (Ex. 1006 at 15
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`(marketing “Mylex controllers”); Ex. 1005 at 6:25-34 (describing an IBM
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`Enterprise Systems/9000 (ES/9000) processor running DFSMS/MVS operating
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`software, IBM 3990 Model 6 storage controllers, and an IBM ESCON Director
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`dynamic switch).) One of ordinary skill would have been motivated to study
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`multiple examples of disk mirroring systems when designing a new RAID system.
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`As a result of their similarity, one of ordinary skill would have been able to apply
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`the fault tolerance teachings of Mylex to the system disclosed by Hathorn, or the
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`modifying NICs to communicate teachings of Hathorn to the system disclosed by
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`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
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`Griffith teachings of exchanging fault tolerance information using the existing
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`switch network or (ii) the DeKoning teachings of using a host-side communication
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`bus to allow RAID controllers to exchange information, to the systems described in
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`Mylex or Deitz in order to render every claim in the ’346 patent obvious. Mylex,
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`Deitz, Griffith and DeKoning are in the same field of endeavor. Each describes
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`redundant RAID systems that connect multiple hosts to RAID controllers. While
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`Griffith only discloses using one switch or hub, and DeKoning discloses using a
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`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
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`terms of sending communications between two or more RAID controllers and/or
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`network interface controlling unit ports. One of ordinary skill would have been
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`motivated to study multiple examples of fault tolerant RAID systems when
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`designing a new RAID system, and Mylex Corporation, IBM (assignee of the
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`Deitz patent) and Digi-Data Corporation (assignee of the Griffith patent) were all
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`RAID providers. One of ordinary skill would have known to look at the teachings
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`of these RAID providers when configuring redundant RAID systems. Furthermore,
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`Mylex, Deitz, and Griffith all describe redundant RAID systems comprised of off-
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`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
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`controllers”); Ex. 1007 at 5:33-35 (“A preferred SAC is the Z-9100 Ultra-Wide
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`SCSI RAID controller manufactured by Digi-Data Corporation, Jessup, Md.”); Ex.
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`1008 at 5:33-36 (“controllers 105 can be any suitable fibre channel compatible
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`controller that can be modified to operate according to the present invention, such
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`as for example the DAC960SF, commercially available from Mylex, Inc., Boulder,
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`Colo.”).)
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`One of ordinary skill also would have been motivated to combine the
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`teachings of Griffith with Mylex controllers because Griffith discloses that its
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`“preferred dual-port disk is the 3.5-Inch Ultrastar2 XP available from IBM” (Ex.
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`1007 at 8:38-39), and there was a close relationship between IBM and Mylex
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`Corporation. In September of 1999, IBM completed the acquisition of Mylex.
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`Storage system designers in that timeframe using the IBM 3.5-Inch Ultrastar2 XP
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`disclosed in Griffith would have been strongly motivated to combine and leverage
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`the teachings from other IBM and Mylex storage technology.
`
`A.
`
`[GROUND 1 and GROUND 2] – The Combination of Mylex and
`Hathorn Renders Obvious Claims 1-9
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`Claims 1-9 of the ’346 patent are obvious in light of Mylex in view of the
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`teachings of Hathorn, and/or Hathorn in view of the teachings of Mylex, thereby
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`rendering each of these claims unpatentable under 35 U.S.C. § 103.
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`Specifically, a person of ordinary skill would understand that the Mylex
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`paper discloses every element of the ’346 patent’s claims 1-9, with the exception
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`of a direct exchange of information between network interface controlling units.
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`Instead, the Mylex paper discloses a direct “heartbeat” communication path
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`between controllers for exchanging information. However, the Hathorn patent
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`teaches that communication paths are expensive, and that this expense can be
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`reduced by modifying network interface controlling unit ports to use the existing
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`switch network for communications between RAID controllers (instead of using a
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`direct “heartbeat” path). (Ex. 1003, ¶¶ 32, 48-55.) An annotated Mylex Figure 17
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`is included below showing this combination:
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`
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`Additionally, a person of ordinary skill would understand that the Hathorn
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`patent discloses every element of the ’346 patent’s claims 1-9, with the possible
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`exception of the fault tolerance functionality recited in the ’346 patent’s claims 4
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`and 9. However, the Mylex paper teaches fault tolerance as claimed. (Ex. 1003,
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`¶¶ 40-41.) Hathorn discloses that all NICs can be modified to exchange
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`information using the switch network. (Ex. 1005 at 11:25-43 (“The primary storage
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`controller 325, acting as host with the ports 324 enabled as channel link-level
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`facility, sends an EPC frame to the secondary storage controller 335 … the
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`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
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`to Hathorn Fig. 3, ports 324B and 334B (2nd and 4th NICs) can be used to
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`exchange fault tolerance information in a non-faulty state, as claimed. Using the
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`fault tolerance teachings of Mylex, these ports can execute a function of ports
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`324A and 334A (1st and 3rd NICs) in a faulty state, as claimed.
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`Further, with respect to claim element [4b], one of ordinary skill, using the
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`teachings of Hathorn, would have found it obvious to configure Mylex’s second
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`and fourth network interface controlling units to exchange fault tolerance
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`information. For example, with reference to Mylex Fig. 17, using the “reserved”
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`second and fourth NICs for exchanging fault tolerance information, while neither
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`controller is faulty, would be a matter of obvious design choice, as this would
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`allow maximum performance for processing host commands on the active ports.
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`(Ex. 1003, ¶ 95.) In the event of a fault, using the fault tolerance teachings of
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`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
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`units when one of the RAID controlling units is faulty. An annotated Mylex
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`Figure 17 is included below showing this configuration:
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`
`
`Detailed Disclosure
`
`i.
`[1a] An apparatus for a redundant interconnection between multiple
`hosts and a RAID, comprising:
`
`Mylex and Hathorn both disclose redundant interconnections between
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`multiple hosts and a RAID. (Ex. 1003, ¶¶ 56-60.) Mylex discloses redundant
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`connections between servers and storage devices. (Ex. 1006 at Figs. 12, 17; id. at
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`15 (“each controller has redundant paths to host systems and pairs of controllers
`
`provide redundant paths to disks”); id. at 11, 16.) A server as described by Mylex
`
`functions as a host. (Id. at 11, 16.) Mylex further discloses a RAID storage device.
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`(Id. at 11, 12.)
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`Hathorn, e.g., at F