Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 14
`Entered: December 11, 2014
`
`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 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying 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
`____________
`
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION and
`ORACLE AMERICA, INC.,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`
`____________
`
`Case IPR2014-00976
`Patent 6,978,346 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`
`
`
`I.
`INTRODUCTION
`The Petition requests institution of inter partes review of claims 19
`of U.S. Patent No. 6,978,346 B2 (“the ’346 patent”) pursuant to 35 U.S.C.
`§§ 311-319. Paper 1 (“Petition” or “Pet.”). Patent Owner filed a
`Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314.
`Petitioner challenges claims 19 (“the challenged claims”) as
`unpatentable under 35 U.S.C. § 102 as anticipated by Chong.1
`We determine that, based on the record before us, Petitioner has not
`demonstrated a reasonable likelihood that it will prevail in establishing the
`unpatentability of all the challenged claims. Accordingly, we deny the
`petition for inter partes review of the ’346 patent.
`II.
`BACKGROUND
`The ’346 patent is the subject of an ongoing inter partes review (Dell
`Inc. v. Electronics & Telecommunications Research Institute, Case
`IPR2013-00635 (PTAB)). Two recently filed petitions alleging
`
`
`1 The Petition provides two separate references regarded as Chong in this
`Decision. First, the Petition identifies U.S. Patent No. 6,070,251 (“the
`’251 patent”), issued to Chong on May 30, 2000, alleged to qualify as prior
`art under § 102 (a), (e). (Ex. 1005). Second, the Petition identifies a foreign
`counterpart to the ’251 patent, Japanese Pat. No. JP-H11-120092A,
`published on April 30, 1999, alleged to be prior art under § 102(b). (Exs.
`10061007). Petitioner admits that the relevant disclosure in these two
`references is “substantially identical.” Pet. 1011. Therefore, this Decision
`refers to Chong as indicating the disclosure in the ’251 patent.
`
`
`
`
`2
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`unpatentability of the ’346 patent have been docketed as VMware, Inc. v.
`Electronics and Telecommunications Research Institute, Case IPR2014-
`00901 (PTAB) and International Business Machines Corporation v.
`Electronics and Telecommunications Research Institute, Case IPR2014-
`00949 (PTAB). A brief summary of the ’346 patent follows.
`1. The ’346 patent (Ex. 1004)
`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. 1004, Abstract. As a result
`of the redundant interconnection, the apparatus allows increased bandwidth
`in the event one of two RAID controllers 460 and 461 has a failure. Id. at
`3:1–9.
`Figure 4 of the ’346 patent is reproduced below:
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`Figure 4 is a block diagram of a host matching system including
`RAID 490 and its interconnection to host computers 400405. Ex. 1004,
`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 the 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 the
`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
`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.”
`
`
`
`
`4
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`Ex. 1004, 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.
`2. Claim Interpretation
`Claim 1 of the ’346 patent is illustrative of the subject matter claimed.
`The claim is directed to “an apparatus for a redundant interconnection
`between multiple hosts and a RAID.” Claim 1. Giving the term “RAID” its
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the disclosure, we determined, in our
`Decision on Institution in IPR2013-00635, that the term’s construction is
`“redundant array of inexpensive disk.” See Dell Inc. v. Elec. & Telecomm.
`Research Inst., Case IPR2013-00635, slip op. at 78 (PTAB Mar. 20, 2014)
`(Paper 19). Petitioner in the instant case agrees with that construction.
`Pet. 5.
`Patent Owner challenges our construction arguing that “reasonable
`meaning is attributed to the terms ‘redundant’ and ‘array’” and that the
`meaning of “array” and “disks” should be elaborated upon. Prelim. Resp.
`1415. Patent Owner proposes that we construe RAID as meaning “a single
`logical unit for mass storage that provides fault tolerance and recovery via
`employing multiple physical disk drives.” Id. at 18. We decline to expand
`on the meaning of RAID, as argued by Patent Owner. We need not
`determine whether to give meaning to each specific word of the acronym
`“RAID” in order to determine whether to institute trial.
`We now turn to an overview of Chong’s disclosure in light of the
`arguments raised concerning the disclosure of a RAID.
`
`
`
`
`5
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`3. Overview of Chong (Ex. 1005)
`Chong is directed to high availability and caching data storage
`devices. Ex. 1005, Abstract. Figure 3, reproduced below, discloses a
`preferred embodiment that includes two hosts, host 1 and host 2,
`communicating with data storage devices 124, 125 via switching circuit set
`110 and controllers 116, 122 on two fiber channel loops. Id. at 4:1519.
`
`
`
`Figure 3, above, also depicts that switching circuits 111, 112 are controlled
`by control circuits 114, 115, respectively. Id. at Fig. 3; 4:4347. During
`normal operation, controller 116 functions as the primary controller for
`host 1, and controller 122 functions as the primary controller for host 2. Id.
`The fail-over software in each controller 116, 122 may detect a failure in the
`controller itself, the other controller, or data storage devices 124, 125. Id. at
`
`
`
`6
`
`
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`4:2832. If a failure is detected, the switching circuits receive the fail-over
`detection results to control circuits 114, 115. Id. at 4:5259. Data directed
`to the failed controller is directed to the other controller. Id. For example, if
`a failure is detected in controller 122, controller 122 will be disabled, and
`controller 116 remains active and caches directed to controller 122 to both
`data storage devices 124, 125. Id. at 4:5927. In this example, host 2
`continues to access data storage device 125 despite the failure. Id.
`III. ANALYSIS
`The Petition states that Chong discloses a RAID because of the
`following:
`1) The two data storage devices appear to the hosts as a single,
`reliable drive. Pet. 13 (citing Ex. 1001 ¶ 36).
`2) Identical data is written to the two data storage devices, for data
`mirroring. Id. (citing Ex. 1005, 3:3049, 4:1519, 4:2628,
`4:5051; Ex. 1007 ¶¶ 9, 1213); see also Pet. 15.
`3) The configuration disclosed by Chong is a RAID configuration.
`Pet. 15 (citing Ex. 1001 ¶¶ 36, 40).
`Patent Owner challenges Petitioner’s assertions stated above. Prelim.
`Resp. 2438. The stated reasons are as follows: (1) that Chong does not
`disclose a RAID; (2) identical data is not written to the two storage devices;
`(3) no fail-over of data storage devices is disclosed; and (4) the Declaration
`submitted in support of Petitioner’s contentions should be afforded no
`weight. Id. We agree with all the reasons proffered by Patent Owner, and
`determine that Petitioner has failed to show a reasonable likelihood that it
`
`
`
`7
`
`
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`will prevail. A summary of our analysis supporting our determination
`follows.
`First, there is insufficient support for Petitioner’s contention that
`Chong discloses two data storage devices that appear as a single, reliable
`drive. Petitioner cites to Dr. Katz’s Declaration to support that contention.
`See Pet. 13 (citing Ex. 1001 ¶ 36). The Declaration states that data is written
`identically to both storage devices 124, 125. Ex. 1001 ¶ 36. We are not
`persuaded that Chong discloses writing identical data to both data storage
`devices as Dr. Katz states. Although Chong discloses that the controllers
`cache the same data (Ex. 1005, 3:4549), the embodiments in Figures 3 and
`4 do not depict, nor are these embodiments described as, writing the same
`data to both data storage devices. We are persuaded, instead, by Patent
`Owner’s analysis of Chong and the proffered conclusion that the Chong
`controllers do not write identical data to both data storage devices. See
`Prelim. Resp. 3135.
`As a result of this conclusion, we give little weight to Dr. Katz’s
`explanation that given the combination of “data mirroring” and “fault
`tolerance,” the two data storage devices appear as a single, reliable drive,
`e.g., a RAID. See Ex. 1001 ¶ 36. The first premise of Dr. Katz’s
`explanation relies on “data mirroring,” which has been shown to be not
`credible, as already discussed. Further, as to “fault tolerance,” we are
`persuaded by the evidence and arguments presented by Patent Owner that if
`a data storage device fails, none of the embodiments of Chong describes a
`storage device fail-over operation. See Prelim. Resp. 3536. We agree with
`
`
`
`8
`
`
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`Patent Owner that Chong’s disclosure of the fail-over operation of controller
`failure does not support the contention that Chong also discloses a fail-over
`operation for the data storage devices. See id. 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” (Ex. 1005 5:23), the
`conclusion reached by Dr. Katz is based on the combination of “data
`mirroring” and “fault tolerance”—a combination that we are not persuaded
`has been shown sufficiently. See also Prelim. Resp. 3738 (making the
`point that Dr. Katz’s Declaration, at the cited paragraphs in the Petition, is
`conclusory). Accordingly, we give little credit to Dr. Katz’s conclusion that
`the Chong data storage devices are configured as a RAID.
`Because Petitioner has failed to show an express disclosure of a RAID
`in Chong, and because Petitioner’s declarant has failed to show sufficient
`and credible support for the contention that Chong discloses a RAID to a
`person of ordinary skill in the art, we determine that there is not a reasonable
`likelihood that Petitioner will prevail in showing that claims 19 are
`unpatentable, as anticipated by Chong.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we do not institute inter partes review of
`the ’346 patent.
`V. ORDER
`After due consideration of the record before us, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`9
`
`
`
`
`
`IPR2014-00976
`Patent 6,978,346 B2
`
`
`
`PETITIONER:
`Todd M. Friedman (Lead Counsel)
`Gregory S. Arovas (Back-up Counsel)
`Eugene Goryunov (Back-up Counsel)
`Benjamin Lasky (Back-up Counsel)
`KIRKLAND & ELLIS LLP
`IBM-Safe-Storage-KEService@kirkland.com
`
`PATENT OWNER:
`
`Matthew C. Phillips (Lead Counsel)
`Derek Meeker (Back-up Counsel)
`Alexander C.D. Giza (Back-up Counsel)
`RENAISSANCE IP LAW GROUP LLP
`matthew.phillips@renaissanceiplaw.com
`derek.meeker@renaissanceiplaw.com
`agiza@raklaw.com
`
`
`
`
`
`
`
`10
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
