Trials@uspto.gov
`571-272-7822
`
`
`Paper 16
`Entered: February 24, 2015
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION and
`ORACLE AMERICA, INC.,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2014-00976
`Patent 6,978,346
`____________
`
`
`
`Before BRIAN J. McNAMARA, MIRIAM. L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 16
`Entered: February 24, 2015
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION and
`ORACLE AMERICA, INC.,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2014-00976
`Patent 6,978,346
`____________
`
`
`
`Before BRIAN J. McNAMARA, MIRIAM. L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2014-00976
`Patent 6,978,346
`
`
`
`INTRODUCTION
`
`
`
`The Board declined to initiate inter partes review of U.S. Patent
`
`No. 6,978,346. Paper 14, (“Dec.”). Petitioner filed a Request for Rehearing
`
`contending that the Board abused its discretion in declining to institute
`
`review because two “findings regarding Chong’s disclosures” were
`
`“erroneous, misapprehending and/or overlooking pertinent disclosures.”
`
`Paper 15, (“Req. for Reh’g”) 1.
`
`
`
`We have reviewed Petitioner’s contentions presented in the Request
`
`for Rehearing and we are not persuaded that Petitioner has pointed out that
`
`we misapprehended or overlooked Chong’s pertinent disclosures. In our
`
`Decision on Institution we explained that we were persuaded by Patent
`
`Owner’s analysis and conclusions regarding whether Chong disclosed
`
`identical data written to each of two data storage devices. Dec. 79.
`
`Petitioner now argues that Patent Owner’s arguments were “misleading,
`
`[and] misrepresenting Chong’s disclosures.” Req. for Reh’g 2. In an
`
`attempt to explain the shortcomings of Patent Owner’s arguments, Petitioner
`
`recasts its argument to point to a “different data flow” allegedly presented in
`
`the Petition. Id. These explanations, however, do not show that we
`
`overlooked of misapprehended the evidence presented in the Petition.
`
`
`
`First, Petitioner cites in its Request for Rehearing numerous citations
`
`and paragraphs of allegedly supporting materials that were neither cited nor
`
`explained in the Petition for the contention that Chong discloses a RAID.
`
`See, e.g., Paper 1 (“Pet.”) 1215 (citing exclusively to Dr. Katz’s
`
`Declaration, Ex. 1001 ¶¶ 3637, 40); Cf. Req. for Reh’g 2 (citing to Ex.
`
`1001 ¶¶ 36, 40, 42, 48, 50, 57, 60, 63, 93, 95). A Request for Rehearing is
`
`
`
`2
`
`
`
`IPR2014-00976
`Patent 6,978,346
`
`
`not an opportunity to expand argument or explain allegedly supporting facts
`
`otherwise not presented in the Petition.
`
`
`
`Notwithstanding the expanded explanations presented for the first
`
`time in the Request for Rehearing, we are not persuaded that we
`
`misapprehended the operation of Chong. At the heart of the issues raised by
`
`Petitioner is the allegation that Chong transfers identical data to both data
`
`storage devices. Req. for Reh’g 35, 812. Patent Owner alleged, and we
`
`agreed, that although Chong teaches caching the data at the controllers,
`
`Chong does not disclose that data is written from the controller 116 to the
`
`data storage device 125. See Dec. 8; Prelim. Resp. 32. There is no express
`
`disclosure in Chong of writing identical data to both data storage devices in
`
`either Figure 3 or Figure 4. Neither can we infer from the citations in Chong
`
`that Petitioner proffers in its Request for Rehearing that identical data is
`
`written to both data storage devices in either Figure 3 or 4. For example,
`
`Petitioner points to Chong’s disclosures in Ex. 1005, 3:1622, 2530,
`
`3440, and 4:2629. These disclosures, at best, show that identical data is
`
`cached at each of controllers 16, 22 because both controllers receive the
`
`same data in a fiber channel loop. But Chong states that “[f]rames addressed
`
`to data storage device 24 are passed through PSOC 62 via cache 66 [, i.e.,
`
`controller 16].” Ex. 1005, 3:3638. There is no disclosure of the same data
`
`being passed through controller 22 to the data storage device 24 in any of the
`
`proffered citations, ergo no “data mirroring” occurs. Chong also states, with
`
`reference to Figure 3, that “each of controllers 116 and 122 is equivalent to
`
`the combination of primary and secondary controllers 16 and 22 in FIG. 1.”
`
`
`
`3
`
`
`
`IPR2014-00976
`Patent 6,978,346
`
`
`Ex. 1005, 4:2628. Again, controllers 116 and 122 cache the same data, but
`
`they do not write identical data to their respective data storage devices.
`
`Indeed, without an express disclosure of the identical writing
`
`operation Petitioner alleges, it makes no sense to read Chong as writing
`
`identical data to both storage devices. For example, Chong discloses that
`
`when a primary controller fails, the secondary controller with the cached
`
`data takes over the writing function to the same data storage device. See Ex.
`
`1005, 4:59–67 (explaining that the host continues to write to data storage
`
`device 125, regardless of which controller actually performs the service).
`
`That is, there is no need to copy data to another data storage device because
`
`the data storage device assigned to the host continues to serve that host, even
`
`though a different controller may service the host in the event of a failure.
`
`Accordingly, Petitioner has not persuaded us that the panel misapprehended
`
`or overlooked Chong’s disclosures alleged to support Petitioner’s contention
`
`that “data mirroring” is supported by Chong.
`
`
`
`Furthermore, disagreements with the Board’s conclusions are not a
`
`basis for alleging that the Board misapprehended or overlooked the
`
`arguments and evidence presented. We analyzed the facts as presented by
`
`both parties, and Patent Owner’s arguments regarding Chong were
`
`persuasive. The Request for Rehearing starts with a premise that Patent
`
`Owner mischaracterized Chong, and asks us to conclude that Petitioner’s
`
`proffered version of Chong is better supported. We disagree with
`
`Petitioner’s premise, and further conclude that Petitioner has not met its
`
`burden of showing that we should modify our decision based on the
`
`arguments presented in the Request for Rehearing.
`
`
`
`4
`
`
`
`IPR2014-00976
`Patent 6,978,346
`
`
`
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`We also have considered Petitioner’s argument that Chong discloses
`
`fail-over of data storage devices, a fact that Petitioner contends we
`
`misapprehended or overlooked. Req. for Reh’g 1213. Again, upon review
`
`of Chong, we agreed with Patent Owner that Chong’s disclosure of fail-over
`
`operation of the controllers does not support the contention that Chong also
`
`discloses a fail-over operation for the data storage devices. Dec. 9. The
`
`Request for Rehearing points out that Chong states that the disclosed fail-
`
`over operation also applies to failure of data storage devices. Req. for
`
`Reh’g 12. But we did not misapprehend or overlook this disclosure, for we
`
`noted this in our Decision by stating that: “Even if we consider that Chong
`
`summarily states that the disclosed fail-over operation also ‘applies if one of
`
`the data storage devices 124 and 125 fails . . . the conclusion reached by Dr.
`
`Katz is based on a combination of ‘data mirroring’ and ‘fault tolerance’—a
`
`combination that we are not persuaded has been shown sufficiently.”
`
`Dec. 9. Contrary to Petitioner’s assertion, we did not misapprehend the
`
`“significance” of the cited Chong disclosures. See Req. for Reh’g 1213
`
`(citing Ex. 1005, 3:36, 4:2832, 5:23). We were not persuaded that these
`
`disclosures amount to sufficient evidence1 amounting to a reasonable
`
`likelihood that Petitioner would prevail when considering the evidence
`
`presented by the Petition and the arguments made in the Patent Owner
`
`Preliminary Response.
`
`
`
` 1
`
` We noted in our Decision on Institution that Patent Owner presented
`arguments regarding the conclusory opinions of Dr. Katz on the point of
`fault tolerance. Dec. 9 (citing Prelim. Resp. 3738).
`
`
`
`5
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`
`
`IPR2014-00976
`Patent 6,978,346
`
`
`
`
`With regard to whether Dr. Katz’s opinion should have been treated
`
`differently, we disagree. See Req. for Reh’g 1314. We do not see any
`
`reason presented in the Request for Rehearing to deviate from our
`
`determination regarding the weight afforded the Declaration. Attempts to
`
`bolster the credibility Dr. Katz’s opinions in the Request for Rehearing do
`
`not show that we misapprehended or overlooked those opinions. We stated
`
`in our Decision that “we give little credit to Dr. Katz’s conclusions that
`
`Chong data storage devices are configured as a RAID,” because we found
`
`the factual predicate for those opinions to be unsupported by Chong. Dec. 9
`
`(emphasis added). Therefore, arguments by Petitioner that we “refus[ed] to
`
`credit Dr. Katz’s opinions” is not a fair characterization of our Decision, and
`
`arguments to the contrary are not persuasive to show that we
`
`misapprehended or overlooked the proffered opinions and the alleged
`
`preeminence of Dr. Katz as an expert.
`
`
`
`Having considered the arguments presented in the Request for
`
`Rehearing, we are not persuaded that Petitioner has shown that we
`
`misapprehended or overlooked the Chong disclosures or the Declaration of
`
`Dr. Katz in denying institution for failure to show that Chong discloses a
`
`RAID, as claimed. Accordingly, our Decision on Institution remains as
`
`issued, without modification.
`
`Order
`
`
`
`It is
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`6
`
`
`
`IPR2014-00976
`Patent 6,978,346
`
`
`PETITIONER:
`
`Todd M. Friedman
`Gregory S. Arovas
`Benjamin Lasky
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`todd.friedman@kirkland.com
`greg.arovas@kirkland.com
`benjamin.lasky@kirkland.com
`eugene.goryunov@kirkland.com
`
`PATENT OWNER:
`
`Matthew C. Phillips
`Derek Meeker
`RENAISSANCE IP LAW GROUP LLP
`matthew.phillips@renaissanceiplaw.com
`derek.meeker@renaissanceiplaw.com
`agiza@raklaw.com
`
`
`
`
`7
`
`
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