) ) ) ) ) Investigation No. 337-TA-471 Order No. 35: Finding Complainant’s Motion No. 471-3 1 Moot In View Of Complainant’s Withdrawal On December 2,2002, pursuant to Commission rule 21 0.15 complainant moved for an order requiring respondents to file submissions on claim 18 of U.S. Patent No. 5,742,792 (the ‘792 patent) and claim 27 of U.S. Patent No. 5,909,692 (the ‘692 patent) pursuant to Order No. 12.

By letter dated December 5,2002 to the Secretary complainant stated that it withdraws Motion No. 471 -3 1.

Accordingly the administrative law judge finds Motion No. 47 1-3 1 moot in view of its withdrawal.

Order No. 2 1, which issued on October 8,2002, granted complainant’s Motion No. 471-15, which moved, & - alia, to include two additional claims in the investigation.

Respondents also argued that on information and belief, Natan Vishlitzky, a named inventor on the ‘347 patent, submitted a false declaratiodoath to the PTO in conjunction with the ‘347 patent application; that during Vishlitzky’s deposition testimony he stated{ Respondents raised the affirmative defense of inequitable conduct in their initial response to the complaint.

Referring to the ‘748 patent, respondents argued that on information and belief, including information found through inventor depositions and discovered documents, complainant’s 1 microcode, are material prior art lcnown to the named SRDF, including the{ inventors during prosecution of the ‘748 patent; that on information and belief, SRDF was first made available over one year before the earliest possible filing date attributable to the claims of the ‘748 patent; that the SRDF’s{ } microcode was available more than one year prior to the earliest possible filing date attributable to the claims of the ‘748 patent and is prior art under at least 35 U.S.C. Q 102(b); that the SRT)F was capable of performing all of the claimed features of the ‘748 patent; that at least the named inventor,( 1 that this material prior art was not disclosed to the PTO; and that, accordingly, this lack of disclosure provides a fLirther ground for finding the ‘748 unenforceable due to inequitable conduct.

Therefore, it was argued that the subject matter of Tamer is prior art to the ‘497 patent application; that Tamer teaches each of the limitations of the asserted ‘497 patent claims, describing the process of creating a mirror, splitting it, working independently and resynchronizing it; that, for example, Tamer teaches access to applications and storing data in a data storage facility, citing, u, ‘412 patent at col 5 Ins. 6-49; that Tamer also appears to disclose mirroring, citing ‘412 patent at col. 5 Ins. 38-40; that Tamer teaches that “the data storage systems are configured so that any data that is written to any of the mirrored volumes in the master unit 2 is automatically written to corresponding volumes in the sale unit 4,” citing ‘412 patent at col 5 Ins. 6-9; that Tamer also discloses ‘‘[iln the RDF-based implementation, the volumes which store the database files, also referred to as the source volumes (Rl), are mirrored to corresponding volumes on the other data storage system, also referred to as the target volumes (R2),” citing‘412 patent at col. 5 In.

prosecution history of the ‘939 patent estops EMC from asserting that the FBA formatted storage medium of claim 26 includes the cache memory?

Question No. 95 (To EMC And Hitachi) Claim 26 of the ‘692 patent contains the following language: A method for transforming and storing variable-length data records onto a fixed block architecture (FBA) formatted storage medium, and for retrieving a requested data record stored on said at least one FBA formatted storage medium, comprising the steps of.

EMC should respond to Hitachi’s assertion that its HODM has no transparent background mode with respect to the migration of data, as stated in Hitachi’s response dated October 4,2002 at VI-5.

Hitachi should provide, in its response to this order, a citation to support its assertion that “because HODM is a redundancy or mirroring type product, the RCU continues to receive write requests during the period of migration so as to make sure the RCU is updated so as to create a mirror of the MCU.” Hitachi’s Response dated October 4,2002 at VI-4.

advised that information on this matter Dane County can be obtained by contacting the College Hills Historic District, ~ ~ ~ g h ~ y

General infomation Bowdoin Rd., Corporate Limit, University Bay, and H m m d &., Shorewood Hills, concerning the Commission may also be obtained by accessing its Internet server 02001518 (http://wwW.usitc.gov).

Ltd. of Tokyo, Japan, and Hitachi Data Davidson Countv Systems Corporation of Santa Clara, DuPont Fire Hall, [Old Hickory MRA), Old California.

The Department of Jptice, Federal Bureau of Investigation, has submitted the following information collection request to the Office of Management and Budget ( O M ) for review and approval in accordance with the Paperwork Reduction Act of 1995.