Dell Inc., Hewlett-Packard Company, and Netapp, Incv.Electronics and Telecommunications Research Institute

Patent Trial and Appeal Board

May 16, 2014

09753245 (P.T.A.B. May. 16, 2014)

Trials@uspto.gov Paper 12
571-272-7822 Entered: May 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.,
Petitioners,

v.

ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
INSTITUTE,
Patent Owner.
____________

Case IPR2014-00152
Patent 6,978,346 B2

Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Patent 6,978,346 B2

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I. INTRODUCTION
On November 15, 2013, Dell, Inc., Hewlett-Packard Company and
NetApp, Inc. (collectively “Petitioners”) filed a Petition requesting an inter
partes review of claims 1 through 9 of U.S. Patent No. 6,978,346 B2
(Ex. 1001, “the ’346 patent”). Paper 2 (“Pet.”). Electronics and
Telecommunications Research Institute (“Patent Owner”), filed a
Preliminary Response. Paper 11 (“Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides as follows:
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the Petitioners would prevail
with respect to at least 1 of the claims challenged in the
petition.
Upon consideration of the Petition and Preliminary Response, we
determine that the information presented in the Petition shows that there is
not a reasonable likelihood that Petitioners would prevail in showing
unpatentability of claims 1-9 of the ’346 patent. Accordingly, pursuant to 35
U.S.C. § 314, we decline to institute an inter partes review of claims
1-9 of the ’346 patent.
A. Related Proceedings
The ’346 patent is involved in the following co-pending cases: Safe
Storage LLC v. StoneFly, Inc., 1-13-cv-01152; Safe Storage LLC v. Int’l
Business Machines Corp., 1-13-cv-0 1151; Safe Storage LLC v. Emulex
Corporation, 1-13-cv-01150; Safe Storage LLC v 3PAR Inc., 1-13-cv-
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01088; Safe Storage LLC v Oracle America Inc., 1-13-cv-01089; Safe
Storage LLC v ATTO Technology Inc., 1-13-cv-01090; Safe Storage LLC v.
VMware Inc., 1-13-cv-00928; Safe Storage LLC v. Promise Technology Inc.,
1-13-cv-00927; Safe Storage LLC v. Nexsan Corporation, 1-13-cv-00931 ;
Safe Storage LLC v. Overland Storage Inc., 1-13-cv-00932; Safe Storage
LLC v. IQSS LLC, 1-13-cv-00930; Safe Storage LLC v. Infortrend
Corporation, 1-13-cv-00929; Safe Storage LLC v. Cisco Systems Inc., 1-13-
cv-00926; Safe Storage LLC v. Silicon Graphics Int’l Corp., 1-12-cv-0
1629; Safe Storage LLC v. Dot Hill Systems Corp., 1-12-cv-01625 ; Safe
Storage LLC v. Hitachi Data Systems Corp., 1-12-cv-01627; Safe Storage
LLC v. Dell Inc., 1-12-cv-01624; Safe Storage LLC v. NetApp Inc., 1-12-cv-
01628; Safe Storage LLC v. Hewlett-Packard Company, 1-12-cv-01626, all
pending in the United States District Court for the District of Delaware. Pet.
1-2.
Petitioners filed previously a Petition for Inter Partes review of the
‘346 patent, IPR2013-00635. We instituted an inter partes review of claims
1-3 and 5-8 of the ’346 patent. We diod not institute inter partes review of
claims 4 and 9 of the ’346 patent.
B. The ’346 Patent
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. 1001, 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.

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Figure 4 of the ’346 patent is reproduced below:

Figure 4 is a block diagram of a host matching system including
RAID 490 and its interconnection to host computers 400-405. Ex. 1001,
2:643:6. 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 3:10-13. 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,
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471, 480, 481) of RAID controllers 460, 461. Id. at 3:31-34.
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 3:62-65. The
communication passage creates a “fault tolerant function” should one of
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
communication lines to network interface controller 481 of RAID controller
461, allowing RAID controller 480 to send information to RAID controller
461. Id. at 3:66-4:4.
By the arrangement described, the apparatus continues to operate in
the event either RAID controller 460 or 461 has an “occurrence of an error.”
Ex. 1001, 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.
C. Illustrative Claim
Claims 1 and 9 are the challenged independent claims. Claim 1 is
reproduced below:
1. An apparatus for a redundant interconnection between multiple
hosts and a RAID, comprising:

a first RAID controlling units and a second RAID controlling unit for
processing a requirement of numerous host computers, the first RAID
controlling unit including a first network controlling unit and a second
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network controlling unit, and the second RAID controlling unit including a
third network controlling unit and a fourth network controlling unit; and

a plurality of connection units for connecting the first RAID
controlling units and the second RAID controlling unit to the numerous host
computers, wherein the first RAID controlling unit and the second RAID
controlling unit directly exchange information with the numerous host
computers through the plurality of connecting units, and 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.

D. Prior Art Relied Upon
Petitioners rely upon the following prior art references.
Author Title of Reference Date Exhibit
TruCluster TruCluster Hardware
Configuration
Apr. 2000 Ex. 1003
Sicola US 6,601,187 B1 Mar. 31, 2000
1
Ex. 1004
OpenVMS Guidelines for OpenVMS
Cluster Configurations
Jan. 1999 Ex. 1005

E. The Alleged Grounds of Unpatentability
Petitioners allege the following grounds for unpatentability.
Claims Grounds References
1-9 § 103(a) TruCluster and Sicola
1-9 § 103(a) OpenVMS

1
Filing date, which Petitioners rely on for prior art purposes under 35 U.S.C.
§102(e). Pet. 8.
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II. ANALYSIS
A. Claim Construction
Principles of Law
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). The terms also are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). If an inventor acts as his or her own lexicographer, the definition
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998). An extraneous limitation should not be read
into the claims from the specification. E.g., E.I. du Pont de Nemours & Co.
v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An
extraneous limitation is one that, the presence of which in a claim, is
unnecessary for the purpose of making sense of the claim. See, e.g.,
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The
construction that stays true to the claim language and most naturally aligns
with the inventor’s description is likely the correct interpretation. See
Renishaw PLC, 158 F.3d at 1250.

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1. “RAID” (Claims 1 and 9)
2

Petitioners propose “RAID” be construed as “at least a redundant
array of independent disks.” Pet. 8 (citing Declaration of Dr. M. Ray
Mercer, Ex. 1006, 20-22). A “RAID” may include “RAID controllers.” Id.
(citing Ex. 1006, 20-21).
Patent Owner proposes that “RAID” be construed as “a redundant
array of independent disks, including RAID controllers, configured to be
used as a single peripheral by the host computers.” Prelim. Resp. 17-18.
Patent Owner argues that “RAID” includes RAID controllers, relying in part
on the language of claim 9: “a first and a second RAID controllers, included
in the RAID.” Prelim. Resp. 16. According to Patent Owner, a “RAID” is a
peripheral to “host computers,” and therefore, “RAID controllers” should be
a part of the construction. Prelim. Resp. 17. Patent Owner further argues
that Petitioners’ proposed inclusion of “at least” should be excluded from the
construction so as not to broaden the term unduly to include additional
computer equipment. Id.
“RAID” is well understood by a person of ordinary skill in the art as
an acronym for “redundant array of inexpensive disks.” Ex. 1001, Abstract.
We are not persuaded that any additional definition is needed to capture the
ordinary meaning of RAID. Thus, we construe “RAID” to mean “redundant
array of inexpensive disks.”
2. “RAID controller/RAID controlling unit” (Claims 1 and 9)
Petitioners contend that the term “RAID controlling unit” should be

2
Our claim construction analysis is the same as for IPR2013-00635. The
parties’ positions also are the same as those expressed in IPR2013-00635, as
reflected in the citations to the Petition and Preliminary Response of this
case.
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construed as “a functional component including hardware that may be
controlled by computer code, the functional component providing control to
implement RAID storage in an array of storage drives.” Pet. 8 (citing Ex.
1006, 18-20). Petitioners support their construction relying solely on the
declaration of Dr. Mercer, which is conclusory as to the proposed
construction, and states only that the ’346 patent does not define “RAID
controlling unit.” See Ex. 1006, 18-20.
Patent Owner argues that “RAID” and “RAID controller” should be
interpreted synonomously. Prelim. Resp. 18. Citing claim 9, for example,
Patent Owner contends that “RAID controllers” are hardware and connect to
other hardware. Id. Thus Patent Owner’s interpretation is “a hardware unit
within a RAID that controls operation of the RAID so as to make the RAID
appear as a single disk storage peripheral to the host computers.” Id.
Patent Owner does not explain why the specification of the
’346 patent requires the “RAID controller” be hardware, when a
combination of hardware and software is also possible. See Ex. 1001, figs.
1-6. Patent Owner’s arguments are insufficient to require interpretating the
’346 patent specification as requiring a hardware-only RAID. The parties’
proposals, therefore, improperly include extraneous language unsupported
by either the ’346 patent or extrinsic evidence.
For purposes of this decision, applying the broadest reasonable
interpretation in light of the specification, we, therefore, construe “RAID
controlling unit” and “RAID controller” to mean “a component that controls
operation of the RAID.”
3. “exchange/exchanges information” (Claims 1 and 9)
Patent Owner relies on the prosecution of the application for the
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’346 patent to propose that “exchanges information” means “information is
exchanged via one or more of the connection units.” Prelim. Resp. 20-21.
Petitioners do not propose a construction for these terms.
We are not persuaded that Patent Owner’s proposed construction is
correct. The claims use “exchange” and “exchanges information” according
to their ordinary sense: to transmit and receive information reciprocally.
3

The claim recites the structures between which information is exchanged,
i.e., between the RAID controlling units and the host computers, between the
first and fourth network controlling units, and between the second and third
network controlling units. Additional claim language requires only the
information to and from the host computers to be exchanged through the
connection units. Therefore, it would be improper to limit the recited
“exchange of information” to occur via connection units when such
limitation is expressly addressed in the claims at issue. The specification of
the ’346 patent is consistent with the ordinary meaning of transmitting and
receiving information reciprocally, because it describes that information is
transmitted to and from a network interface controller of a first RAID and
another network interface controller of a second RAID. Ex. 1001,
3:664:12.
Based on the foregoing, applying the broadest reasonable construction
in light of the specification, we construe “exchange/exchanges information”
to mean “to transmit and receive information reciprocally.”

3
Definition exchange (vb) (3), WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY, UNABRIDGED (1993), available at
http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary).
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Other Terms for Proposed Construction
For purposes of this decision, the other terms of the challenged claims
need not be construed expressly at this time.
B. Obviousness over TruCluster and Sicola
Petitioners contend that claims 1-9 of the ’346 Patent are obvious over
TruCluster and Sicola. Pet. 9-35. To support this position, Petitioners rely
on the testimony of Dr. Mercer. Ex. 1006, 22-79.
For the reasons discussed below, we determine that Petitioners have
not shown a reasonable likelihood that they will prevail on their assertion
that claims 1-9 are unpatentable as obvious over TruCluster and Sicola.
1. TruCluster Overview
TruCluster is a hardware server product provided originally by
Compaq Computer Corporation. Ex. 1003, 2, 23.
4
TruCluster describes
how to set up and maintain hardware configurations for the server. Id. at 23.
In conjunction with software, the server “extends single-system management
capabilities to clusters.” Id.

Figure 6-6 of TruCluster is reproduced below.

4
Page references are to “DHPN-1003” as designated by Petitioners, and not
to actual pages of TruCluster.
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Figure 6-6 shows a hardware configuration of a multi-bus failover mode.
Ex. 1003, 120, 122.
Still referring to Figure 6-6, Member Systems 1 and 2 are servers, and
components labeled KGPSA are Fibre Channel adapters for systems 1 and 2.
Ex. 1003 at 43. The components labeled DSGGA are Fibre Channel
switches. Id. “The Fibre Channel RAID Array 8000 (RA8000) midrange
departmental storage subsystem and Fibre Channel Enterprise Storage Array
12000 (ESA12000) house two HSG80 dual-channel controllers.” Id. at 45.
Each HSG80 controller A and B provides two ports, left and right, or 1 and
2, as shown in Figure 6-6. Id.
In transparent failover mode, only one left port and one right port of
each controller are active at any given time. Id. Thus only one port of each
controller is active. Id. If one controller fails and can no longer
communicate with the switch (DSGGA), the functions automatically fail
over to the other controller. Id.
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2. Sicola/’187 Patent Overview
Sicola describes a redundant data replication system including dual
Fibre Channel fabric links interconnecting each of the components of two
data storage sites. Ex. 1004, Abstract. Each site includes a host computer
and data storage array, with redundant array controllers and adapters. Id.
Figure 3 of Sicola is reproduced below.

Figure 3 is a block diagram of the system of Sicola. Ex. 1004, 7:65-66.
Hosts 101 and 102 each has two adapters 308, which support dual fabric
topology. Id. at 8:1-3. The hosts run software that allows fail over between
storage paths for controller-based storage arrays 20l/202 and
211/212. Id. at 8:34-37. There are two host ports 109 for each array
controller 201, 202, 211, and 212. Id. at 8:11-13. One port of each
controller is the host port that will serve local host 101/102. Id. at 8:45-48.
The other port of each controller is the remote copy port, used for backup.
Id. The configuration allows for applications using either of storage arrays
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203/213 to continue running given any failure of either fabric 103A or 103B,
or of either storage array. Id. at 8:7-10.
The RAID controllers via their network ports include timed heartbeat
signals. Ex. 1004, 9:35-36. Controller A1 sends a command or “heartbeat”
to controller B1, for example to write data. Id. at 9:47-51. In case of
failover, of controller A1 for example, control is transferred to controller A2.
Id. at 10:13-15. Similarly controller B2 shares storage array 213 with
controller B1, and B2 can access the storage array if B1 fails. Id. at 10:17-
21.
3. Claims 1-9 under § 103(a) (TruCluster and Sicola)
Independent claims 1 and 9 each includes an “exchanges information”
limitation. This limitation is dispositive of the grounds raised in the Petition,
and is analyzed below. Claim 1 recites the “exchanges information”
limitation as set out below:
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.
(emphasis added).

Claim 9 recites the limitation in similar language as set out below:

wherein the first network controlling unit in the first RAID controlling
unit exchanges information with the second network controlling unit
in the second RAID controlling unit, and the second network
controlling unit in the first RAID controlling unit exchanges
information with the first network controlling unit in the
second RAID controlling unit. (emphasis added).

We now turn to the parties’ positions with respect to claim 1.
Petitioners argue that the system shown in Fig. 6-6 of TruCluster includes
the same connection topology as in Figure 4 of the ’346 Patent. Pet. 10, 17.
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As a result, Petitioners argue TruCluster provides for the same
“communication passages” described in the ’346 Patent’s specification at
column 3, line 62, through column 4, line 12. Id. at 10-11 (citing Ex. 1006,
23). Petitioners contend that the “arrangement of TruCluster’s system
performs the ‘exchanges limitation’ of claim 1.” Id. at 11. Petitioners
conclude that the “exchanges information element” is suggested, if not
explicitly shown, by Figure 6-6 of TruCluster.
5
Id. at 11, 17 (citing Ex.
1006, 34-35).
Dr. Mercer’s testimony on obviousness based on TruCluster is set
forth below:
A person of ordinary skill in the art would have understood that RAID
controller A port 1 and RAID controller B port 1 could communicate
through the first switch and also that RAID controller A port 2 and
RAID controller B port 2 could communicate through the second
switch, as shown in Figure 6-6. Such information exchange between
the cited ports is strongly suggested by the architecture shown in
Figure 6-6.

Ex. 1006, 34.
Petitioners specifically argue as the first ground of unpatentability that
the “exchanges information” limitation would have been obvious to the
person of ordinary skill based on TruCluster and Sicola.
6
Pet. 11-13.
Petitioners argue Sicola teaches using ports in dual-ported RAID controllers
to communicate among the RAID controllers. Id. at 11. The ports of Sicola,

5
Petitioners do not allege, as a ground of unpatentability, that TruCluster,
absent Sicola, renders claims 1-9 obvious. We have set out the arguments
made regarding TruCluster as relevant to the combination of TruCluster and
Sicola.
6
However, there are statements in the Petition relying on TruCluster alone,
including, for example, that “every element of claim 1 is suggested, if not
explicitly shown, by Fig. 6-6 of TruCluster.” Pet. 11.
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it is further argued, are “a type of network controlling unit.” Id. (citing Ex.
1006, 23-24). Petitioners argue Sicola’s disclosure of a host port and a
“remote copy” port as “just like” the dual ported RAID controllers of
TruCluster Figure 6-6. Id. at 11-12 (citing Ex. 1004, 4:33-41, 8:44-48, fig.
3).
As to the “exchanges information” limitation at issue, Petitioners
argue that “the ’187 Patent [Sicola] demonstrates that it was also well known
that RAID controllers in a storage system would communicate with each
other using their respective network ports.” Id. at 18 (citing Ex. 1004, 4:33 -
41, 8:44-48, fig. 3). Petitioners allege Sicola teaches that information is
exchanged between the RAID controllers of Sicola via the network ports,
including heartbeat signals, data for storage, write commands,
acknowledgements, and failover information. Id. at 12 (citing Ex. 1004,
9:35-52, 10:8-21; Ex. 1006, 24). The alleged exchange of information
between port 1 of RAID controller A and port 1 of RAID controller B in
Sicola occurs via the switch to which they are both connected. Id. (citing
Ex. 1006, 24-25). Similarly, port 2 of RAID controller A exchanges
information with port 2 of RAID controller B via the switch to which they
are both connected. Id. at 12 and 18 (citing Ex. 1006, 24-25).
Petitioners contend one of ordinary skill would have combined
TruCluster and Sicola. Pet. 12. Petitioners first argue both are in the same
field of endeavor, “storage systems with redundant pairs of storage
controllers.” Id. at 12-13 (citing Ex. 1006, 24). Further, Petitioners allege
TruCluster’s architecture shows connecting the “network controlling units,”
i.e., ports 1 and 2 of Figure 6-6, through the DSGGA switches, providing
“information paths among the network control units.” Id. (citing Ex. 1003,
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25). Furthermore, Petitioners argue the combination would yield predictable
results. Id. at 13 (citing Ex. 1006, 25; KSR International Co. v. Teleflex Inc.,
550 U.S. 398, 416-417 (2007); MPEP § 2143).
Relevant to the “exchanges information” limitation, Patent Owner
argues that claims 1and 9 require the exchange of information between two
“RAID controlling units” both of which are part of the same RAID. Prelim.
Resp. 28. Patent Owner contends Figure 6-6 of TruCluster shows
communication of the ports 1 and 2 of the HSG80 controllers with the host
computers, but not between the HSG80 controllers. Id. at 28-29. Patent
Owner argues the “mere connection does not suggest at all, let alone
strongly suggest, exchanging information.” Id. at 29.
Patent Owner contends TruCluster alone does not disclose the
“exchanges information” limitation, or Petitioners would not have relied on
the combination with Sicola for this limitation. Prelim. Resp. 30. Patent
Owner argues that Sicola teaches something different from the claimed
“exchanges information” limitation. Id. at 31. Specifically, Patent Owner
argues Sicola Figure 3 discloses two RAIDs that communicate between each
other. Id. at 31-32.
Patent Owner also argues that substituting the RAID and RAID
controllers of TruCluster and Sicola, as Petitioners claim would be known to
one of ordinary skill, does not result in the “exchanges information”
limitation. Prelim. Resp. 28-38
In particular, Patent Owner points out that the evidence does not teach
the information exchange that the claims require. To illustrate this point,
Patent Owner provides an annotation of Figure 3 of Sicola, reproduced
below.
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Patent Owner states that the solid line in its annotation of Figure 3 of Sicola
illustrates the exchange of information between two of the recited network
controlling units, but argues that this “dedicated link” between a local array
controller and a remote array controller does not meet the claimed
“exchanges information” limitation. Prelim. Resp. 34-35 (citing Ex. 1006 at
34 (quoting Ex. 1004, 4:33-34)). Patent Owner argues the dotted line in its
annotation of Figure 3 “represents the claimed “exchang[e of] information”
between network controlling units of RAID controllers of the same RAID.”
Id. at 35. According to Patent Owner, the claimed communication
illustrated by the dotted line is missing in Sicola. Id. We agree with Patent
Owner that Petitioners have failed to provide sufficient information that four
of the network controlling units of TruCluster would communicate as taught
by Sicola to meet the “exchange information” limitation, when read in light
of claim 1 and 9’s additional, express limitations regarding the network
controlling units.
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As stated above, the “exchanges information” limitation, when read in
light of claim 1 and 9’s additional, express limitations regarding the
network controlling units,” and its construction are dispositive of the
obviousness ground based on TruCluster and Sicola.
7
Accordingly, our
analysis is directed to those limitations and related issues.
First, we are not persuaded that TruCluster discloses the “exchanges
information” limitation in addition to the network controlling unit
limitations, as argued in a claim chart provided by Petitioner’s expert, Dr.
Mercer. See Ex. 1006, 34. Each of the ports 1 and 2, i.e., network
controlling units of claim 1, communicate with the host through the
DSGGA, i.e., connecting units of claim 1. It has not been shown that the
ports associated with each of the two HSG80 controllers, i.e., RAID
controlling units of claim 1, communicate with the ports of the other
HSG80. Furthermore, failover is a significant reason for the disclosed
architecture. TruCluster discloses that if one controller fails and can no
longer communicate with the switch (DSGGA), the functions automatically
fail over to the other controller. Ex. 1003, 45. Dr. Mercer testifies that the
architecture of Figure 6-6 of TruCluster shows:
RAID controller A port 1 and RAID controller B port 1 could
communicate through the first switch and also that RAID controller A
port 2 and RAID controller B port 2 could communicate through the
second switch, as shown in Figure 6-6. Such information exchange
between the cited ports is strongly suggested by the architecture
shown in Figure 6-6.

Ex. 1006, 34 (emphasis added). Dr. Mercer’s testimony on this point, which
is not supported by underlying facts or data, is not persuassive. See 37 CFR

7
We need not address the other limitations or arguments made by Patent
Owner regarding admissibility and prior art issues. See Prelim. Resp. 21-25.
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20
§ 42.65(a). Showing the mere connection in TruCluster, without more, does
not persuade us that the recited “exchanges information,” including the
network controlling units limitation “could” occur.
As to whether Sicola teaches the “exchanges information” limitation,
Petitioners rely again on the testimony of Dr. Mercer. Ex. 1006, 34-37.
There is no sufficient factual support for the explanation that a person of
ordinary skill would combine the TruCluster system shown in Figure 6-6
with the controller communication scheme disclosed in Sicola. An
obviousness rationale may be reasonable if the combination of familiar
elements according to known methods does no more than yield predictable
results. KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007). More
specifically, “when a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). A general assertion that a patent simply arranges old elements
must, therefore, follow a showing that each element performs the same
function it had been known to perform. We do not see how the Petitioner’s
assertion of obviousness shows that TruCluster’s system—which includes a
multi-bus failover capability—would perform that failover function when
Sicola’s inter-site controller communications require a dedicated link that
would eliminate such a function. See Prelim. Resp. 35-37 (arguing that the
use of Sicola’s dedicated links for the “exchange of information” would
eliminate TruCluster’s multi-bus failover capability). And there is no
sufficient factual support in either the Petition or the Declaration of Dr.
Mercer to suggest that a person of ordinary skill in the art would find it
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obvious to modify the TruCluster system to include the Sicola
communications at the cost of losing the failover function.
Claim 9 has the same single RAID requirement and “exchanges
information” limitation. Petitioners make the same arguments for
unpatentability made in connection with claim 1. Pet. 34-35. Claims 2-8 all
depend from claim 1, and for reasons discussed, the challenges to claims 2-8
also fail.
In consideration of the above, we are not persuaded that Petitioners
have shown a reasonable likelihood that they will be successful in
demonstrating any of claims 1-9 would have been unpatentable as obvious
over the combination of TruCluster and Sicola.
C. Obviousness over OpenVMS
Petitioners contend that claims 1-9 of the ’346 patent are obvious over
OpenVMS. Pet. 8-9, 35-59. To support this position, Petitioners rely on the
testimony of Dr. Mercer. Ex. 1006, 80-148.
For the reasons discussed below, we are not persuaded that Petitioners
have made a sufficient showing that there is a reasonable likelihood that they
would prevail in challenging claims 1-9 based on obviousness over
OpenVMS.

1. OpenVMS Overview
OpenVMS is a guide authored by Compaq Computer Corporation,
which describes configurations, applications, and operating environments for
the OpenVMS Cluster product. Ex. 1005, 1, 17.
8
The OpenVMS Cluster

8
Page references are to “DHPN-1005” as designated by Petitioners and not
to actual pages of OpenVMS.
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system is a configuration that allows many components to work as a single
virtual system. Id. at 17, fig. 1.
Figure 7-5 of OpenVMS is reproduced below.

Figure 7-5 shows a system for storage interconnect. Ex. 1005, 106. Four
hosts (Alpha) are shown, each having four adapters. Id. As shown, the
adapters connect to four Fibre Channel switches. Id. Eight dual ported
storage controller modules (HSG) are shown, two per storage subsystem. Id.
Each host has two independent paths to each storage controller module. Id.
OpenVMS shows various interconnect types, including Fibre
Channel. Id. at 38, Table 4.2. If one interconnect or adapter fails, multiple
interconnects allow the node communications to automatically move to
another interconnect. Id. at 38. Another benefit of OpenVMS with multiple
interconnects is load balancing. Id. The system automatically chooses the
best path. Id.

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OpenVMS describes the failover mode as follows:

In transparent failover mode, the HSx presents each logical unit
on one port of the dual controller pair. Different logical units may be
assigned to different ports, but an individual logical unit is accessible
through one port at a time. When the HSx detects that a controller
module has failed, it moves the logical unit to the corresponding port
on the surviving controller.

The assumption in transparent mode is that the two ports are on
the same host bus, so the logical unit can move from one port to the
other without requiring any changes to the host’s view of the device.
The system manager must ensure that the bus configuration is correct
for this mode of failover.

Ex. 1005, 70.
2. Claims 1-9 under § 103(a) (OpenVMS)
Petitioners contend OpenVMS teaches that HSG RAID controllers of
Figs. 7-1 and 7-5 are connected to switches, which allow the HSG RAID
controllers to be able to communicate with each other. Pet. 43-44, 58.
Further, the RAID controllers exchange information with each other. Id.
(citing Ex. 1005, 67, 70). The disclosure is related to how the HSG
controllers communicate in the failover context. Id. (citing Ex. 1005, fig. 7-
5, Ex. 1006, 93-97). Petitioners conclude the “exchanges information”
limitation would have been obvious. Id. at 44 (citing Ex. 1006, 96).
Petitioners contend the limitation is “strongly suggested by the architecture
of Figure 7-5 because the first network controlling unit is connected through
a switch to the fourth network controlling unit, and the second network
controlling unit is connected through another switch to the third network
controlling unit.” Id. (citing Ex. 1006, 96).
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Patent Owner points to the “Multibus Failover Configuration” shown
in Figure 6-1 of OpenVMS. Prelim. Resp. 41-42. Patent Owner contends
OpenVMS, while stating “[O]ne HSx controller detects that the other other
controller is no longer functioning[,]” does not explain how a failure is
detected. Id. Patent Owner argues the associated Figure 6-1 shows that
there is no exchange of information between the HSx controllers. Id. Patent
Owner’s annotation of Figure 6-1 is reproduced below.

Patent Owner’s contention is that there is no path through the Alpha host to
provide the “exchanges information” limitation. Id. at 42. Patent Owner
argues other figures relied on in the Petition relate to “generic
communication” or separate “storage subsystems.” Id. (citing Ex. 1005,
figs. 7-1 and 7-5, Ex. 1006, 94-96). Thus the exchange of information is
between separate RAIDs, and not the single RAID claimed. Id. at 43.
We are not persuaded that any of the architectures shown in Figures 6-
1, 7-1, or 7-5 discloses or suggests the “exchanges information” limitation.
Petitioners do not argue the limitation is shown, but rather that the
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“exchanges information” limitation would have been obvious to the person
of ordinary skill from the architectures shown. Ex. 1006, 96.
As to Figure 6-1, we are persuaded by Patent Owner’s arguments that
the OpenVMS architecture does not teach the recited connection between
controllers. See Prelim. Resp. 42 (arguing that OpenVMS fails to explain
how an HSx controller detects a failure and that one HSx controllers is not
connected to another HSx controller).
With regard to Figure 7-1 of OpenVMS, we are persuaded by Patent
Owner’s argument that this diagram depicts “generic communication,” and
does not teach or suggest the “exchange information” limitation.
Figure 7-1 of OpenVMS is reproduced below.

Figure 7-1 shows a logical view of a switched topology. Dr. Mercer testifies
that this topology of Figure 7-1 shows that the controllers exchange data
through the switch because one HSx controller detects that the other
controller is no longer functioning. See Ex. 1006, 94-95. We agree,
however, with Patent Owner that OpenVMS does not explain how an HSx
controller detects the failure. See Prelim. Resp. 42-43. Particularly, we note
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that Dr. Mercer’s declaration focuses on communication between
controllers, but the claims require an exchange of information between very
specific network controlling units of those controllers, namely that there be a
transmission and receipt of information, reciprocally, between the first and
fourth network controlling units and between the second and third network
controller units of the two controllers. Focusing on a pair of arrows in
Figure 7-1 to state that “the RAID controllers can exchange information
with each other through the switches” is not sufficient to teach or suggest the
“exchange information” limitation in addition to the network controlling
units limitations.
With regard to Figure 7-5, Dr. Mercer opines that the “exchanges
information” limitation would have been obvious from the disclosed
architecture. Ex. 1006, 96. However, Dr. Mercer’s declaration fails to
explain sufficiently how this architecture suggests the exchange of
information between the network controlling units of the two controllers, as
claimed. The declaration merely states that the “communication is strongly
suggested by the architecture.” Ex. 1006, 96. Patent Owner, however,
argues that the only controller communication implied by the diagram and
disclosed in OpenVMS is the communication between the HSG controller
and the host. Prelim. Resp. 43 (further arguing that OpenVMS only
discloses paths between a host and a storage controller). On the balance of
the evidence presented, we are not persuaded by Petitioner’s arguments that
OpenVMS teaches or suggests the “exchange information” limitation.
Finally, we have considered Petitioner’s argument that it would have
been obvious to a person of ordinary skill in the art for “the first network
controlling unit to exchange information with the fourth network controlling
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unit and for the second network controlling unit to exchange information
with the third network controlling unit through their respective switches.”
Pet. 44. The rationale provided for obviousness is supported entirely by Dr.
Mercer’s statements that the architecture strongly suggests such a
communication, and that the feature is merely a combination of prior art
elements according to known methods to yield predictable results. Ex. 1006,
96-97. Patent Owner argues that the Petitioners failed to provide an
articulated reasoning with rational underpinning. Prelim. Resp. 44-45. We
agree with Patent Owner.
As to Petitioner’s first assertion—the “communication is strongly
suggested”—we agree, as stated above, with Patent Owner that OpenVMS
does not support that suggestion. As to the second assertion, an obvious
modification resulting from the combination of known elements must be
supported by evidence that those elements are known. Neither the Petition
nor Dr. Mercer’s declaration shows sufficiently that it was known to
exchange information between the specific network controlling units of two
controllers, as claimed. Therefore, on the record before us, we determine
that Petitioners failed to establish a resonable likelihood that they would
prevail as to their assertion that claim 1 is obvious over OpenVMS.
Claim 9 has the same “exchanges information” and network
controlling unit limitation. Petitioners make the same arguments for
unpatentability made in connection with claim 1. Pet. 58-59. Claims 2-8 all
depend from claim 1, and for reasons discussed, the challenges to claims 2-8
also fail.
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Based on the record before us, we determine that Petitioners have
failed to present sufficient evidence to show a reasonable likelihood that any
of claims 1-9 would have been unpatentable as obvious from OpenVMS.
III. CONCLUSION
For the foregoing reasons, we are not persuaded that the information
presented in the Petition establishes a reasonable likelihood that Petitioners
would prevail in establishing the unpatentability of any challenged claim of
the ’346 Patent.
IV. ORDER
Accordingly, it is
ORDERED the Petition for inter partes review based on Petitioner’s
challenges to the patentability of claims 1-9 of the ’346 Patent is denied.

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For PETITIONERS:

Lead Counsel
David McCombs
david.mccombs.ipr@haynesboone.com

Back-up Counsel
Andrew S. Ehmke
andy.ehmke.ipr@haynesboone.com
Thomas W. Kelton
Thomas.kelton.ipr@haynesboone.com
John Russell Emerson
Russell.emerson.ipr@haynesboone.com

For PATENT OWNER:

Lead Counsel
Mathew Phillips
matthew.phillips@renaissanceiplaw.com

Back-up Counsel
Alexander Giza
agiza@raklaw.com