Dell Inc.v.Acceleron, LLC

Patent Trial and Appeal Board

Jan 16, 2014

09987917 (P.T.A.B. Jan. 16, 2014)

Trials@uspto.gov Paper 13
Tel: 571-272-7822 Entered: January 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
DELL INC.
Petitioner

v.

ACCELERON, LLC
Patent Owner
____________

Case IPR2013-00443
Patent 6,948,021 B2
____________

Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
JEREMY M. PLENZLER, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Patent 6,948,021 B2

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I. INTRODUCTION
A. Background
Dell Inc. (“Petitioner”) filed a petition to institute an inter partes review of
claims 1-4, 6-19, 30, and 34-36 (the “challenged claims”) of U.S. Patent No.
6,948,021 B2 (Ex. 1001, “the ’021 Patent”) pursuant to 35 U.S.C. §§ 311-319.
Paper 5 (“Pet.”). Acceleron, LLC (“Patent Owner”) submitted a preliminary
response. Paper 9 (“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 petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.
The information presented in the Petition sets forth Petitioner’s contentions
of unpatentability of the challenged claims under 35 U.S.C. §§ 102 and/or 103
based on the following specific grounds (Pet. 18-57):
Reference[s] Basis Claims challenged
Fung1 § 102 1-4, 6, 7, 13, 18, and 19
Fung and Gasparik2 § 103 30
Fung and Gallagher3 § 103 14-17
Fung, Gasparik, and
Gallagher § 103 34-36

1 U.S. Patent No. 7,032,119 B2 (Ex. 1005) (“Fung”).
2 U.S. Patent No. 6,157,974 (Ex. 1007) (“Gasparik”).
3 U.S. Patent No. 6,742,068 B2 (Ex. 1008) (“Gallagher”).
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Patent 6,948,021 B2

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Reference[s] Basis Claims challenged
Fung and PXE4 § 103 14-17
Fung, Gasparik, and
PXE § 103 34-36
Bottom5 § 102 1-4, 6-9, 13, 18, and 19
Bottom and Gasparik § 103 10-12 and 30
Bottom and Gallagher § 103 14-17
Bottom, Gasparik, and
Gallagher § 103 34-36
For the reasons described below, we determine that the present record fails
to show a reasonable likelihood Petitioner will prevail in showing the
unpatentability of any claim. Accordingly, we deny institution as to all claims of
the ’021 Patent.
B. Related Proceedings
Petitioner indicates that the ’021 Patent is the subject of the following co-
pending federal district court litigation: Acceleron, LLC v. Hitachi Data Systems
Corp., Case No. 1:12-cv-02996 (N.D. Ga.); and Acceleron, LLC v. Dell, Inc., Case
No. 1:12-cv-04123 (N.D. Ga.). Pet. 2. Additionally, the ’021 Patent at issue in
this proceeding is also at issue in Inter Partes Review No. IPR2013-00440, which
was filed concurrently with this Petition by Petitioner.
C. The ’021 Patent
The ’021 Patent is titled “Cluster Component Network Appliance System
and Method for Enhancing Fault Tolerance and Hot-Swapping” and generally

4 Preboot Execution Environment (PXE) Specification, Version 2.1, September 20,
1999 (EX. 1015) (“PXE”).
5 U.S. Patent No. 6,950,895 (Ex. 1006) (“Bottom”).
IPR201
Patent 6

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Patent 6,948,021 B2

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microprocessor 202, memory module 204, bus management chipset including a
Northbridge chip 206(a) and a Southbridge chip 206(b), an ethernet interface chip
208, hardware BIOS 210 and a hot swap connector 212 mounted on a PCB.” Id. at
4:29-33. The hardware BIOS 210 for each CPU module provides remote boot
capability enabling the CPU modules to run different types of operating systems.
Id. at 4:36-44. Different CPU modules operating in the same chassis may be
booted with different operating systems and different applications. Id. at 4:54-56.
The status of each CPU module can be monitored by a microcontroller so
that the CPU modules can be reset remotely in the event of operating system
instability or crash. Id. at 4:64-5:6.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer network appliance, comprising:
a plurality of hot-swappable CPU modules, wherein each CPU
module is a stand-alone independently-functioning computer;
a hot-swappable power module;
a hot-swappable ethernet switch module; and
a backplane board having a plurality of hot swap mating
connectors, wherein the at least one backplane board interconnects
each of the CPU modules with the at least one power module and
the at least one ethernet switch module, such that the at least one
power module and the at least one ethernet switch module can be
used as a shared resource by the plurality of CPU modules.
D. Claim Construction
Consistent with the statute and the legislative history of the Leahy-Smith
America Invents Act, the Board will interpret claims of an unexpired patent using
the broadest reasonable construction in light of the specification of the patent. See
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
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37 C.F.R. § 42.100(b). Claims are to be given their broadest reasonable
interpretation consistent with the specification, reading the claim in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
1. “is a stand-alone . . . computer”
Petitioner proposes that a “stand-alone computer” is “a computer that is
‘configured to operate as a computer when not connected to a computer network
appliance or to any other CPU.’” Pet. 9. Furthermore, Petitioner argues that the
phrase “is a stand-alone computer” recited in claim 1 should be construed as a
computer “capable of operating as a stand-alone computer.” Pet. 9 (emphasis
added). Petitioner explains that the proposed construction is required because
claim 13, which depends from claim 1, further recites that “a CPU module operates
as a stand[-]alone computer.” Pet. 9. Specifically, Petitioner explains that 35
U.S.C. § 112, ¶ 4 requires the phrase “is a stand-alone computer” to be construed
more broadly than the phrase “operates as a stand-alone computer” recited in claim
13. Id. We are not persuaded by Petitioner’s argument. The plain language of
claim 1 clearly states that the CPU module is a stand-alone computer. We see no
reason to construe the phrase in a manner contrary to its plain and ordinary
meaning, as proposed by Petitioner.
For purposes of the decision, therefore, we construe the phrase “is a stand-
alone computer” to require a computer that is configured to operate as a computer
when not connected to a computer network appliance or to any other CPU.
2. “independently-functioning computer”
The term “independently-functioning computer” does not appear in the
specification of the ’021 Patent. Petitioner proposes that the term “independently-
functioning computer” be construed to have its plain meaning, which Petitioner
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argues is a computer that “functions independently of the operations or functions
of any other CPU in the computer network appliance.” Pet. 7 (quoting Declaration
of Robert Horst (“Horst Declaration”), Ex. 1018, ¶ 27). We determine that this
construction is consistent with the specification, which explains that “different
CPU modules operating in the same chassis may be booted with different OS’s and
different applications.” Ex. 1001, 4:54-56.

Therefore, we construe the term “independently-functioning computer” to
mean a computer that functions independently of the operations or functions of any
other CPU in a computer network appliance (e.g., a server).

II. ANALYSIS
A. Priority Claim for the ’021 Patent
Petitioner argues that certain claims of the ’021 Patent are not entitled to the
benefit of the filing date of U.S. Provisional Application No. 60/248,834
(“’834 Provisional”). Pet. 5-6 (citing Ex. 1002). Specifically, Petitioner argues
that claims 1-4, 6-19, 30, and 34-36 of the ’021 Patent are not entitled to the
provisional filing date because those claims are not explicitly or implicitly
described, supported, or enabled by the disclosure of the ’834 Provisional. Pet. 7.
Petitioner argues that the ’834 Provisional does not disclose a hot-swappable CPU
module wherein “each CPU module is a stand-alone independently-functioning
computer,” as required by claims 1-4 and 6-19, or wherein “each CPU module is
an independently functioning stand-alone computer,” as required by claims 30 and
34-36. Id. Petitioner further argues that an “independently-functioning” computer
is not inherently a “stand-alone” computer and that “independently-functioning” is
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not an inherent requirement of the hot-swappable CPU module claimed by the ’021
Patent. Id. at 8.
Patent Owner counters that the “independently functioning” feature is
supported by the ’834 Provisional and, therefore, all the claims of the ’021 Patent
are entitled to the priority date of the ’834 Provisional. Specifically, Patent Owner
cites to the disclosure in the ’834 Provisional that “heterogeneous CPU modules
(different CPU speeds, memory space and bus chipsets, etc.) may be mounted in
the same chassis without affecting the operation of any other CPU module.”
Prelim. Resp. 6 (citing Ex. 2004, 3). Additionally, Patent Owner cites to the
disclosure in the ’834 Provisional that “different generations of CPU modules may
operate in the same chassis without requiring an update of existing modules.” Id.
Patent Owner argues that the ’834 Provisional’s disclosure of mounting “without
affecting the operation of any other CPU module” supports the notion of
“independently functioning.” Prelim. Resp. 6. Furthermore, Patent Owner argues
that the ability to mount a new-generation CPU module without updating the
existing CPU modules further supports the notion of “independently-functioning.”
Id. Thus, Patent Owner argues that the ’834 Provisional provides sufficient
support for the claimed “stand-alone, independently-functioning computer.” Id.
For purposes of this decision, we are persuaded by Patent Owner’s
arguments that the ’834 Provisional discloses a CPU module that is
“independently-functioning.” Accordingly, we are persuaded that claims 1-4, 6-
19, 30, and 34-36 of the ’021 Patent are entitled to the filing date of the ’834
Provisional.
B. Status of Fung As Prior Art
Petitioner argues that Fung qualifies as prior art under 35 U.S.C. § 102(e)
because Fung claims the benefit of the filing date of two provisional applications
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11/16/00
9/27/00
Fung Prov. 1
& Fung Prov. 2
filed
’021 Patent
filed
11/16/01
4/11/01
Fung Prov. 3
filed
Bottom Prov.
filed
4/30/01
Bottom Patent
filed
6/13/01
5/18/01
Fung Patent
filed
’834 Prov.
filed
filed before the ’834 Provisional. Pet. 17. Specifically, Petitioner states that Fung
was filed on May 18, 2001, and claims the benefit of Provisional Application No.
60/283,375, filed on April 11, 2001, Provisional Application No. 60/236,043
(“Fung Provisional 1”), filed on September 27, 2000, and Provisional Application
No. 60/236,062 (“Fung Provisional 2”), filed on September 27, 2000. Pet. 17.
As shown in the timeline of filing dates for the relevant patents and their
provisionals provided in Diagram 1 below, the ’021 Patent was filed after Fung,
but the ’021 Patent claims the benefit of the ’834 Provisional, filed prior to Fung.

Diagram 1
As further illustrated in Diagram 1 above, Fung claims priority to three provisional
applications, Fung Provisionals 1 and 2 (filed before the ’834 Provisional) and a
third provisional application, Provisional Application No. 60/283,375, filed on
April 11, 2001 (“Fung Provisional 3”). Therefore, only subject matter receiving
the benefit of either the Fung Provisional 1 or Fung Provisional 2 filing date would
qualify as prior art to the ’021 Patent under 35 U.S.C. § 102(e).
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Patent Owner argues that Fung does not qualify as prior art under 35 U.S.C.
§ 102(e) because the subject matter of Fung relied upon by Petitioner is not present
in either Fung Provisional 1 or Fung Provisional 2. Prelim. Resp. 8-9. More
particularly, Patent Owner states that Petitioner identifies a “server module” in
Fung as disclosing the “CPU module” claimed in the ’021 Patent, but Patent
Owner maintains that neither Fung Provisional 1 (Ex. 2006) nor Fung Provisional
2 (Ex. 2007) discloses a “server module.” Prelim. Resp. 9. Patent Owner
maintains that Fung Provisional 1 discloses a “computer node,” but fails to disclose
a “server module.” Prelim. Resp. 9 (citing Ex. 2006, 10). Patent Owner further
notes that neither the Petition nor the supporting Horst Declaration (Ex. 1018)
provides citations to either Fung Provisional 1 or Fung Provisional 2. Prelim.
Resp. 9.
Petitioner asserts that “Fung qualifies as prior art . . . under 35 U.S.C.
§ 102(e).” Pet. 17. Petitioner further asserts that Fung claims the benefit of the
three provisional applications. Id. But Petitioner does not provide any support
from those documents. Only two of the three provisional applications referenced
by Fung (Fung Provisional 1 and Fung Provisional 2) were filed prior to the
effective date of the ’021 Patent (see Diagram 1 above). For Petitioner to establish
Fung Provisionals 1 and 2 as a “prior art patent or printed publication,” it must
specify the disclosure in those references that support the relied upon subject
matter from Fung. 37 C.F.R. § 42.104(b)(4). The Petition fails to specify such
disclosure.
As Patent Owner notes, neither the Petitioner nor its expert, Dr. Horst, cite
either to Fung Provisional 1 or Fung Provisional 2. See Pet. 18-38; see also Ex.
1018, ¶¶ 112- 134. In fact, Petitioner fails to provide copies of Fung Provisional 1
or Fung Provisional 2 as exhibits. The Petition and the Horst Declaration rely only
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upon the issued Fung patent (Ex. 1005), without demonstrating how the pertinent
subject matter in Fung is supported by Fung Provisional 1 or Fung Provisional 2.
See Pet. 18-38; see also Ex. 1018, ¶¶ 112- 134. Therefore, Petitioner fails to
identify the “specific portions of the evidence that support” its challenges, as
required by 37 C.F.R. § 42.104(b)(5).
We determine that Petitioner has not demonstrated a reasonable likelihood
that it will prevail with respect to the challenges that include Fung, and these
challenges are denied.
C. Status of Bottom As Prior Art
Petitioner argues that Bottom qualifies as prior art at least to claims 1-4, 6-
13, 18, 19, 30, and 34-36 under 35 U.S.C. § 102(e) because Bottom claims the
benefit of a provisional application filed before the ’021 Patent. Pet. 17-18.
Specifically, Petitioner states that Bottom was filed on June 13, 2001, and claims
the benefit of U.S. Provisional Application No. 60/287,466, filed on April 30, 2001
(“Bottom Provisional”). Pet. 17.
As shown in Diagram 1 above, although Bottom and the Bottom Provisional
were filed before the filing date of the ’021 Patent, they were filed after the ’834
Provisional. Therefore, Bottom would qualify as prior art to the challenged claims
only in the event that we were to agree with Petitioner that these claims of the ’021
Patent are not entitled to the benefit of the ’834 Provisional. As discussed above,
we are not persuaded by Petitioner’s argument. Accordingly, we determine that
Bottom does not qualify as prior art to the challenged claims of the ’021 Patent.
Therefore, Petitioner has not demonstrated a reasonable likelihood that it will
prevail with respect to the challenges that include Bottom, and these challenges are
denied.

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III. CONCLUSION
Petitioner has failed to demonstrate a reasonable likelihood of prevailing on
its assertions as to any of the challenged claims. We therefore do not institute an
inter partes review on any of the asserted grounds as to any of the challenged
claims.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to the challenged claims of the
’021 Patent.

PETITIONER:

Kevin J. Meek
Paula D. Heyman
Nicholas A. Schuneman
BAKER BOTTS LLP
kevin.meek@bakerbotts.com
paula.heyman@bakerbotts.com
nick.schuneman@bakerbotts.com

PATENT OWNER:

N. Andrew Crain
Scott Horstemeyer
THOMAS HORSTEMEYER LLP
andrew.crain@thomashorstemeyer.com
scott.horstemeyer@thomashorstemeyer.com