Dell Inc.v.Electronics & Telecommunications Research Institute

Patent Trial and Appeal Board

Feb 27, 2015

09753245 (P.T.A.B. Feb. 27, 2015)

Trials@uspto.gov Paper 39
571-272-7822 Entered: February 27, 2015

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 IPR2013-00635
Patent 6,978,346 B2

___________

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

ANDERSON, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
On September 27, 2013, Dell, Inc., Hewlett-Packard Company, and
NETAPP, Inc. (collectively, “Petitioner”) 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 1 (“Pet.”). On March 20, 2014, we
instituted trial for claims 1–3 and 5–8 of the ’346 patent on certain of the
grounds of unpatentability alleged in the Petition. Paper 19 (“Decision on
Institution” or “Dec. Inst.”).
After institution of trial, Electronics and Telecommunications
Research Institute (“Patent Owner”) filed a Patent Owner Response. Paper
28 (“PO Resp.”). Petitioner filed a Reply. Paper 33 (“Pet. Reply”).
An oral hearing was held on December 18, 2014. The transcript of
the consolidated hearing has been entered into the record. Paper 38 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
A. Related Proceedings
The ’346 patent has been asserted against Petitioner in the following
actions: Safe Storage LLC v. Dell Inc., 1-12-cv-01624 and Safe Storage LLC
v. NetApp Inc., 1-12-cv-01628. Pet 1–2. Petitioner advises us of an
additional seventeen actions involving the ’346 patent against third parties,
all pending in the United States District Court for the District of Delaware.
Id.
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
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of the redundant interconnection, the apparatus allows increased bandwidth
in the event one of the two RAID controllers 460 and 461 has a failure. Id.
at 3:1–9.
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 3:11–13. Each host computer has its
own network interface controller (410–415), 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.
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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.
In summary, and as shown in Figure 4, a communication circuit is
provided for an error recovery, while maintaining bandwidth communication
between two RAID controllers 460, 461. Ex. 1001, 3:1–5. Even though one
RAID controller 460 or 461 has an occurrence of a trouble, the bandwidth
becomes twice the single connection bandwidth. Id. at 3: 6–9.
C. Illustrative Claim
Independent 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 network controlling unit,
and the second RAID controlling unit including a third network
controlling unit and a fourth network controlling unit; and
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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. Ground Upon Which Trial Was Instituted
Trial was instituted on the ground alleging that claims 1–3 and 5–8 of
the ’346 patent are anticipated under 35 U.S.C. § 102(b) by Hathorn, U.S.
Patent No. 5,574,950, issued November 12, 1996.
II. ANALYSIS
A. Claim Construction
1. 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).
2. “RAID” (Claim 1)
In the Decision on Institution we found that “RAID” is well
understood by a person of ordinary skill in the art as an acronym for
“redundant array of inexpensive disks.” Dec. Inst. 8 (citing Ex. 1001,
Abstract). Patent Owner does not dispute the interpretation, but points out
that each word of the construction conveys additional significance. PO
Resp. 10.
With regard to the word “disks,” Patent Owner argues that “disks”
means “disk drives,” and that a RAID is an “array of multiple disk drives
configured for redundancy.” Id. (citing Declaration of Dr. Thomas M.
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Conte, Ex. 2003 ¶¶ 16, 18). Based on the presence of “array” in our
preliminary construction, Patent Owner offers evidence that an “array” is “a
single logical storage unit of disk drives.” Id. at 11 (citing Webster’s
Computer Dictionary 308 (9th ed. 2001) (Ex. 2004, 11); Microsoft
Computer Dictionary 437 (5th ed. 2002) (Ex. 2005, 3)
1
; Ex. 2003 ¶ 19).
Patent Owner also directs us to Dr. Conte’s testimony for additional support.
See Ex. 2003 ¶¶ 16–21. Patent Owner also cites to Weygant, which it
alleges “only states that combinations of striping and mirroring do not
appear as a single logical unit, but other forms of RAID like RAID Level 1
mirroring do.” Tr. 38:9–13; Ex. 1003, 153.
2
Lastly, Patent Owner points to
Chen which states that disk arrays “organize multiple independent disks into
a large high-performance logical disk.” Tr. 38:14–19; Ex. 1011, 5. Thus,
Patent Owner contends that “RAID” should be construed as “a single logical
unit for mass storage that provides fault tolerance and recovery via
employing multiple physical disk drives.” PO Resp. 12 (citing Ex. 2003 ¶
38).
Petitioner proposes a construction of “RAID” consistent with the
construction we provided in the Decision on Institution. Pet. 8. In response
to Patent Owner’s proposal, Petitioner argues that “the data mirroring

1
The dictionary definitions are dated in 2001 and 2002, respectively, after
the foreign priority date of the ’346 patent, September 19, 2000. See Exs.
2004 and 2005. However, references having publication dates after the
critical date may be cited to show the state of the art at or around the time of
the invention. Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955, 969–70
(Fed. Cir. 2001); see also In re Wilson, 311 F.2d 266, 268–269 (CCPA
1962).
2
Citations to Weygant (Ex. 1003) are to Weygant’s pages and not the
Exhibit page number.
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operation of Hathorn is a RAID configuration.” Pet. Reply 1.
3
Petitioner
offers evidence that data mirroring is RAID Level 1. Id. at 3–4 (citing
Declaration of Dr. M. Ray Mercer, Ex. 1006, 22–23; Second Declaration of
Dr. M. Ray Mercer, Ex. 1012, 3–4). Both cited portions of Dr. Mercer’s
Declarations cite to Weygant (Exhibit 1003) as supporting Dr. Mercer’s
opinion that “RAID” may be construed differently depending upon the
particular RAID configuration, i.e., RAID Level 1–5. Pet. Reply at 7–8; Ex.
1003, 153. Dr. Mercer also cites to a 1999 edition of Microsoft Computer
Dictionary, where the definition of “RAID” does not include “single logical
storage unit.” Ex. 1006, 22. Dr. Mercer testifies that, at the time the
application for the ’346 patent was filed, on December 29, 2000, “there is no
one definition of the term that is agreed by everyone.”
4
Id. at 21. Relying
on Weygant, Dr. Mercer concludes that, in a RAID, “a group of disks do[es]
not have to be configured as a single unit.” Id. at 4.
We first review the intrinsic evidence as to the meaning of “RAID.”
The written description of the ’346 patent restates the acronym for RAID,
but otherwise lacks additional description of RAID or its functionality.
Consistently and throughout the written description, RAID is referred to in
the singular, i.e., “the apparatus for a redundant interconnection between
multiple hosts and a RAID comprises a plurality of RAID controllers.” Ex.

3
Petitioner’s Reply Brief lacks page numbers. Page number references used
here begin with page 1, the first page following page iv.
4
Dr. Mercer cites to the 1999 edition of Microsoft Computer Dictionary,
which is not an exhibit of record, and, therefore, constitutes inadmissible
hearsay, absent an exception. Nevertheless, the excerpt relied on need not
be admissible for the opinion of Dr. Mercer regarding the definition of
“RAID” to be admitted. Fed. R. Evid. 703. We further note that Patent
Owner does not allege that the excerpt should be excluded.
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1001, 2:16–18 (emphasis added). The claims also recite “a RAID.” Id. at
5:7–8. Figure 4 of the ’346 patent shows RAID 490 as a single component
within a box which includes two RAID controllers 460 and 461. Similarly,
the ’346 patent represents the prior art RAID as a single component. Ex.
1001, Fig. 1, element 130; Fig. 2, element 240; Fig. 3, element 340. Neither
party relies on the prosecution history (Exhibit 1002), and our independent
review of that history failed to reveal any additional insight as to the term’s
meaning.
We now turn to the extrinsic evidence. Patent Owner’s expert,
Dr. Conte, testifies that a RAID is a mass storage device built from multiple,
physical disk drives. Ex. 2003, 9. This evidence is uncontroverted. The
prior art supports Dr. Conte. Weygant discloses that a RAID is a single
logical unit, but also in “various combinations of striped and mirrored
configurations.” Ex. 1003, 153. Chen defines RAID to be Redundant
Arrays of Inexpensive Disks. Ex. 1011, 1. (emphases added). Chen’s
discussion of RAID technology states that the problem of obtaining high
performance is addressed by “arrays, which organize multiple independent
disks into a large, high-performance logical disk.” Id. at 2 (emphasis
added).

The Specification consistently refers to RAID in the singular. Both
Weygant and Chen, which predate the effective filing date of the ’346
patent, and the testimony of Dr. Conte, support that a RAID is a single
logical unit. Although Weygant also indicates that a RAID can exist in
forms other than a single logical unit, those forms are limited to “striped and
mirrored” configurations. Ex. 1003, 153. Furthermore, although the two
dictionary definitions cited by Patent Owner are found in dictionaries
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published after the foreign priority date of the ’346 patent, they further
substantiate the proposition that those of ordinary skill generally refer to
RAID as a single logical unit. Exs. 2004, 2005. We have not been shown
evidence that the RAID of the ’346 patent is configured in a “striped and
mirrored configuration,” which might not be in the single unit configuration
of RAID. See Ex. 1003, 153. The evidence, on the full record before us,
persuades us that it is necessary to modify our preliminary construction of
“RAID” to account for the understanding of a person of ordinary skill in the
art in light of the ’346 patent disclosure. Accordingly, applying the broadest
reasonable interpretation we construe “RAID,” as the term is used in the
’346 patent, to mean “a single logical unit for mass storage using multiple
physical disk drives.”
3. “RAID controlling unit” (Claim 1)
In the Decision on Institution we found “RAID controlling unit” to
mean “a component that controls operation of the RAID.” Dec. Inst. 9–10.
In our analysis, we declined to include extraneous language unsupported by
either the ’346 patent or extrinsic evidence. Id. Patent Owner states that our
interpretation “is not incorrect,” but points out that each word of the
construction conveys additional significance. PO Resp. 12. Patent Owner
argues that the function of a RAID controller is to provide redundancy by
writing redundant data to multiple disk drives. Id. Thus, either a RAID
controller, or multiple RAID controllers, “must be able to write to all of the
disk drives in the RAID unit in order to perform redundancy.” Id. at 12–13
(citing Ex. 2003 ¶¶ 39, 41). Patent Owner contends that there must be a
second RAID controller to establish the redundancy it argues is required for
a RAID. PO Resp. 42–46. Patent Owner proposes that “RAID controlling
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unit” be construed as “a component that controls operation of the RAID so
as to provide redundant storage of data among the array of disk drives.” Id.
at 13.
Petitioner argues that the construction of “RAID controlling unit”
from the Decision on Institution should not be further narrowed. Pet.
Reply 8. Also, Petitioner disagrees with Patent Owner that “a RAID
controlling unit must directly access all disks in the RAID.” Id.
We find that Patent Owner’s proposal imports limitations not
supported by the Specification, e.g., “among the array of disk drives.” Other
than its appearance in the Abstract of the ’346 patent, as part of the acronym
for RAID, “array” does not appear in the Specification of the ’346 patent.
We decline to go beyond the ’346 patent to add limitations to the
construction not supported by the Specification, particularly when Patent
Owner’s expert agrees with our preliminary construction. Ex. 2007, 64:7–
11.
That we changed our construction of RAID does not impact our
construction of “RAID controlling unit.” We are presented with no
compelling reason to change our construction from the Decision on
Institution. Accordingly, applying the broadest reasonable interpretation to
the term RAID controlling unit, we construe “RAID
controlling unit” to mean “a component that controls operation of the
RAID.”
4. “First RAID controlling unit” and
“Second RAID controlling unit” (Claim 1)

“First RAID controlling unit” and “second RAID controlling unit”
were not interpreted in the Decision on Institution, but Patent Owner argues
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the terms should be construed. PO Resp. 13. Based on the claim language
and Specification, Patent Owner argues that the “first” and “second RAID
controlling units” are for “the same RAID.” Id. Patent Owner asserts the
only RAID in the claim appears in the preamble and should be given weight.
Id. at 14 (citing Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367,
1372 (Fed. Cir. 2014) (citations omitted)). Petitioner does not specifically
argue against Patent Owner’s construction and has no proposal of its own.
As discussed above, we have construed RAID controlling unit. Claim
1 recites “a first RAID controlling units and a second RAID controlling unit
for processing a requirement of numerous host computers.” The
Specification states that the RAID supports “a fault tolerance of RAID
controllers and simultaneously heightening a performance.” Ex. 1001,
Abstract, 1:12–14. Further, “a RAID comprises a plurality of RAID
controllers for processing requests of numerous host computers connected
with one another.” Id. at 2:17–19. We agree that the claim and disclosure
both include “a RAID” and two or more RAID controlling units. This is
supported by the claim language, which recites a RAID and two RAID
controlling units. The claim does not recite an express numerical
correspondence between a RAID and the RAID controlling units.
Nevertheless, we have construed “RAID” and “RAID controlling unit,”
above, and are satisfied that no construction of additional similar terms
(“first RAID controlling unit” and “second RAID controlling unit”) is
needed.
5. “exchange/exchanges information” (Claim 1)
Neither party argues the “exchange/exchanges information” limitation
of claim 1. As we found in the Decision on Institution, claim 1 uses
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“exchange” and “exchanges information” according to their ordinary sense:
to transmit and receive information reciprocally.
5
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. The claim language requires only the information to and
from the host computers to be exchanged through the connection units. The
specification of the ’346 patent is consistent with the ordinary meaning of
giving 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.
We are presented with no reason to change our construction from the
Decision on Institution. Accordingly, applying the broadest reasonable
construction in light of the Specification, we construe “exchange/exchanges
information” to mean “to transmit and receive information reciprocally.”
Dec. Inst. 1011.
6. “network controlling unit”
“Network controlling unit” was not interpreted in the Decision on
Institution, but Patent Owner argues the term should be construed and that
the term is “generally understood to one skilled in the art as a hardware
controller that supplies communication functionality when attached to a
computer network.” PO Resp. 16 (quoting Ex. 2003 ¶ 42). Patent Owner

5
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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submits that the ’346 patent discloses two ports for each controller, one for
transmitting and one for receiving. Id. Patent Owner, thus, proposes that the
term additionally “includ[es] one or more ports.” Id. at 1617. A network
controlling unit having one port, according to Patent Owner, is too limiting
and not disclosed in the Specification. Id.
Petitioner argues that the term should be given the plain and ordinary
meaning thereof.
6
Pet. Reply 9. In support for its argument, Petitioner
reminds us that we disagreed in the Decision on Institution with the assertion
in the Petition that a “network controlling unit” is necessarily specific
hardware. Id. Petitioner points out that the Specification does not mention
ports in connection with the “network controlling units,” and only in
connection with the “hub” or “switch.” Id. at 10. Through its expert,
Petitioner proposes a construction: “any component allowing a device to
communicate over a network.” Id. (citing Ex. 1012, 58). Petitioner
contends that its proposal is consistent with the plain and ordinary meaning
of the term. Id.
The experts for both parties agree that “network controlling unit”
refers to a device for communication connected to a network. We do not
agree with Patent Owner that the broadest reasonable interpretation requires
that “one or more” ports be part of the construction. PO Resp. 1617.
However, there must be a connection to the network for communication to
occur. Accordingly, we construe “network controlling unit” as “a

6
Petitioner appears to rely on the Decision on Institution where we said that
“Other Terms for Proposed Construction” would be given their ordinary and
customary meaning and would not be construed “at this time.” Dec. Inst. 11.
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component, connected to a network, for providing communication over the
network.”
7. “connection unit/hub/switch” (Claim 5)
In the Decision on Institution, we found that, consistent with the
definition provided in the Specification, “connection unit” is “a hub or
switch.” Ex. 1001, 3:1318. The preceding was Petitioner’s proposal in the
Petition. Pet. 6. Patent Owner acknowledges the preceding definition but
argues that “hub” and “switch” are not one in the same. PO Resp. 17.
Patent Owner has no specific proposal for either “hub” or “switch” and only
argues they are different in some unspecified way. Neither of the parties’
experts testifies as to any difference between these terms.
We find that the Specification treats “hub” and “switch” as
equivalents. For example, Figure 4 shows components 440 and 441 labeled
as a “HUB OR SWITCH.” We are not persuaded by Patent Owner’s
argument that “hub” should be interpreted to exclude or be different from a
“switch.” PO Resp. 19.
B. Anticipation By Hathorn
Petitioner contends that claims 13 and 58 of the ’346 patent are
anticipated under 35 U.S.C. § 102(b) by Hathorn. Pet. 9, 45–60. To support
this position, Petitioner relies on the testimony of Dr. Mercer. Ex. 1006,
130163 (including claim chart). For the reasons discussed below, we
determine that Petitioner has not shown by a preponderance of the evidence
that claims 13 and 58 are unpatentable as anticipated by Hathorn.
1. Hathorn Overview
Hathorn discloses a remote copy system with dynamically modifiable
ports on the storage controller that are alternatively configurable. Ex. 1005,
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Abstract. A primary storage controller can appear as a host processor to a
secondary storage controller. Id. Hathorn describes a method for
communicating between host processors and storage controllers, or between
storage controllers.
Figure 3 of Hathorn is reproduced below.

Figure 3 is a block diagram of one embodiment of a remote dual copy
system of the invention described in Hathorn. Primary storage
controller 322 communicates through port A 321 with secondary storage
controller 332. Ex. 1005, 8:1115. As shown in Figure 3, port A 321 acts
as a channel link-level facility through communication links 350, dynamic
switch 305, communication links 351, dynamic switch 315, and
communication links 346 to communicate with secondary storage controllers
332 and/or 335. Id.
2. Analysis
Our discussion focuses on claim 1, the only independent claim at
issue. All remaining challenged claims depend, directly or indirectly, from
claim 1.
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Petitioner cites to Hathorn’s primary and secondary hosts and two
dynamic switches 305, 315 as redundant interconnections recited in the
preamble of claim 1. Pet. 46–47 (citing Ex. 1005, Fig. 3; Ex. 1006, 132–
134). Petitioner also points out that Hathorn describes a RAID configuration
that can be used in connection with a direct access storage device
(“DASD”). Id. (citing Ex. 1005, 2:5–11).
Petitioner further points to Hathorn’s storage controllers 322, 325, and
332, 335, respectively, as RAID controlling units that process requests from
the primary host and secondary host for transferring data or records from the
DASDs. Pet. 48 (citing Ex. 1006, 135–136). Petitioner also alleges that:
(1) the communication ports in the storage controllers meet the “network
controlling unit” limitation; (2) the first and second network controlling
units are met by ports A, B 324; and (3) the third and fourth network
controlling units are met by ports A, B 334. Pet. 48–49 (citing Ex. 1005,
8:5–6; Ex. 1006, 137–139).
Petitioner alleges that Hathorn’s dynamic switches 305, 315 meet the
recited “connection units.” Pet. 50 (citing Ex. 1005, Fig. 3; Ex. 1006, 139–
141). The switches connect to the RAID controlling units by links 351. Id.
Hathorn discloses the following concerning Figure 3:
primary storage controller 322, via port A 321, can communicate with
primary host 301 by communication links 350, dynamic switch 305
and communication link 341, wherein port A 321 is a control unit
link-level facility. Alternately, primary storage controller 322, via the
same port A 321, can communicate with secondary storage controller
332 by communication links 350, dynamic switch 305,
communication links 351, dynamic switch 315, and communication
links 346, wherein port A 321 acts as a channel link-level facility.
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Ex. 1005, 8:6–15. Petitioner alleges the preceding disclosure and other
similar disclosures in Hathorn disclose that the RAID controlling units
“exchange information” through the connection units as claimed. Pet. 51–52
(citing Ex. 1005, 7:28–35, 8:3–15, Fig. 6, step 601; Ex. 1006, 141–142).
Petitioner contends that Hathorn explains that ports A and B 334, i.e.,
the third and fourth network controlling units, initiate the operation of Figure
4. Pet. 52–53 (citing Ex. 1005, 8:3–15; Ex. 1006, 143–144). Similarly,
Petitioner argues that ports A and B 324, i.e., the first and second network
controlling units, perform the data mirroring of Figure 5. Id. (citing Ex.
1005, 8:61–63, 9:49–51; Ex. 1006, 143–144). Petitioner relies on the
preceding evidence to support that Hathorn discloses the second “exchanges
information” limitation of claim 1.
Patent Owner relies on its construction of RAID and argues that
“Hathorn also supports the view that a RAID ‘array’ must be a single logical
storage unit of disk drives.” PO Resp. 11. Patent Owner contends that
Hathorn:
makes a clear distinction between a “RAID” and a mirroring or
dual-copy system employing two disk drives, which, although
redundant, do not form an ‘array’ in the sense of a RAID.
Indeed, Hathorn describes these two scenarios as
“alternative[s].”

PO Resp. 11 (citing Ex. 1005, 1:60–2:11).

Beyond arguing that Hathorn does not show a RAID according to
Patent Owner’s proposed construction, Patent Owner emphasizes the
difference between Hathorn’s DASDs and a RAID. PO Resp. 22–23.
Specifically, Patent Owner points to Petitioner’s reliance on Hathorn’s
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Figure 3 and notes that Figure 3 makes no mention of “RAID,” only
DASDs. Id.
Patent Owner emphasizes that Petitioner’s reliance on the sole
mention of RAID in Hathorn is made in the Background discussion at
column 2, lines 4 through 11. PO Resp. 23–24. The pertinent portion of
Hathorn is as follows:
Another data back-up alternative that overcomes the need to
double the storage devices involves writing data to a redundant
array of inexpensive devices (RAID) configuration. In this
instance, the data is written such that the data is apportioned
amongst many DASDs. If a single DASD fails, then the lost
data can be recovered by using the remaining data and error
correction procedures. Currently there are several different
RAID configurations available.

Ex. 1005, 2:4–11. Patent Owner argues that the cited disclosure from
Hathorn distinguishes a RAID configuration from the “single DASD,”
concluding that Hathorn discloses that a RAID would “be formed of
‘many DASDs.’” PO Resp. 23–24(citing Ex. 1005, 2:8). Again,
Patent Owner points out that there is no mention of Figure 3 in the
cited disclosure. Id. at 24.
Patent Owner disagrees with the Decision on Institution’s
statement that “[t]he use of a RAID is disclosed specifically in
Hathorn as a type of DASD.” PO Resp. 24 (citing Dec. Inst. 15).
Petitioner relies on its expert, Dr. Conte, for support, citing the
following: (1) Figure 3 of Hathorn does not mention RAID; (2) the
column 2 discussion in Hathorn is not connected to Figure 3; and (3)
Hathorn states that a RAID is made up from “many DASDs.” Id. at
25 (citing Ex. 2003 ¶ 52).
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Patent Owner also argues that it is improper to combine the
column 2 disclosure of Hathorn with Figure 3 to find that claim 1 is
anticipated. PO Resp. 28. Thus, Hathorn does not disclose the
limitations of claim 1 “arranged or combined in the same way as
recited in the claim, [and] it cannot be said to prove prior invention of
the thing claimed, and cannot anticipate under 35 U.S.C. § 102.” Id.
at 27 (citing Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008)). Patent Owner also argues that combining the
Background description in column 2 with the embodiment of Figure 3
of Hathorn “is in the province of an obviousness inquiry, not
anticipation.” Id. at 28. The ground at issue here is anticipation, and
Patent Owner concludes that the challenge must fail. Id.
Patent Owner contends that Petitioner clarified its position on
how Hathorn shows a RAID through the deposition of Petitioner’s
expert, Dr. Mercer. PO Resp. 34–35. Patent Owner characterizes the
Petitioner’s challenge as “a mirrored or remote-copy pair of different
DASDs in Figure 3 constitute a RAID.” Id. (citing Ex. 2006, 97
7
).
Patent Owner argues two DASDs do not form a RAID because they
do “not form a single logical unit or drive.” Id. at 36 (citing Ex. 2003
¶ 59).
In addition to its argument that Hathorn’s Figure 3 does not
disclose a RAID configuration, Patent Owner argues Hathorn lacks
“first” and “second RAID controlling units.” PO Resp. 37–48. Patent
Owner also argues that Hathorn fails to disclose a “RAID controlling
unit” with two “network controlling units.” Id. at 48–50. Patent

7
See Ex. 2006, 97:4–18.
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20
Owner argues that Hathorn fails to anticipate claims 2, 3, and 8 under
the Petition’s interpretation of “coupled” and “connected.” Id. at 50–
54. Turning to claim 5, Patent Owner argues Hathorn fails to disclose
a “hub” as claimed. Id. at 58. Patent Owner’s last argument relates to
connection of connection ports with the host computer, as recited in
claims 5–7. Id. at 55–57.
Petitioner responds that the data mirroring operation of Hathorn
is a RAID configuration. Pet. Reply 1. And Petitioner also contests
Patent Owner’s arguments regarding the “RAID controller,” arguing
that Hathorn’s storage controllers satisfy the broadest reasonable
interpretation of RAID controller, i.e., “a component that controls
operation of the RAID.” Id. at 2.
Petitioner argues that Figure 3 of Hathorn shows data being
shadowed or mirrored between DASDs 326, 336 through storage
controllers 325, 336. Pet. Reply 3. Petitioner’s annotation of Hathorn
Figure 3 is reproduced below.

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21
Figure 3, according to Petitioner, shows how Hathorn mirrors data
between DASD 326 and DASD 336. Id. Petitioner argues that disk
mirroring is RAID level 1. Id. at 3–4 (citing Ex. 1006, 22–23, 142–
144; Ex. 1012, 3–4).
8
Petitioner contends that Hathorn’s two storage
controllers are two RAID controlling units because each provides
control for the mirroring operation. Id. at 4–5. Further, Petitioner
argues DASDs 326, 336 make up a RAID. Tr. 11:1–6.
Petitioner concludes that, because data mirroring is RAID level
1, Hathorn discloses a RAID. Pet. Reply 5. Petitioner’s argument
continues to rely on the Background disclosure in Hathorn, which
references a “RAID.” Id. Petitioner also notes that Patent Owner’s
expert, Dr. Conte, acknowledges that Hathorn’s mirroring involving
two storage controllers 325, 335 and two switches 305, 315
“hypothetically would constitute a RAID controlling Unit A.’” Id.
(citing Ex. 2003, 32–33).
In response to Patent Owner’s argument that a RAID
controlling unit must be able to write directly to all disks in a RAID,
Petitioner argues that this feature, which may be advantageous, is not
recited in the claims. Pet. Reply 6. Further, Petitioner argues the
claims express no relationship between the RAID and RAID
controlling units. Id.
Petitioner has additional arguments relating to other limitations
of claim 1 and to the dependent claims. See Pet. Reply 8–15.
Because our decision rests on the analysis of “RAID” and “RAID

8
Exhibits 1006 and 1012, Dr. Mercer’s first and second declarations, in turn
cite to Weygant and Chen, Exhibits 1003 and 1011, for additional support
that data mirroring is RAID level 1.
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Patent 6,978,346 B2

22
controlling unit” limitations, we need not repeat those arguments in
detail here.
Petitioner cites to the Background section of Hathorn to
establish that “DASDs can be configured as a RAID.” Pet. Reply 5
(citing Ex. 1005, 2:5–11) (emphasis added). Being capable of a RAID
configuration is not the same as an actual RAID. To rebut Patent
Owner’s arguments that Hathorn’s reference to a RAID is not enough
to conclude that Hathorn discloses a RAID, Petitioner argued at the
oral hearing that Figure 3, alone, shows a RAID configuration because
it shows mirroring. Tr. 12:9–13:2. Petitioner alleges that Hathorn
discloses that dual copy DASDs, where data is written to an additional
DASD, is “sometimes referred to as mirroring.” Ex. 1005, 1:65–67.
We are not persuaded by Petitioner’s argument that because DASDs
are made up of disks and because a RAID is a redundant array of
inexpensive disks “that DASDs can be arranged as a RAID.” See Tr.
13:12–18.
RAID is described in Hathorn as a specific architecture that is
“[a]nother data back-up alternative” to DASD. Ex. 1005, 1:60–2:4,
2:4–7. The evidence, thus, supports a distinction, in the reference
upon which the challenge is based, between RAID and DASD.
The record does support that RAID level 1, one of several
possible RAID configurations, is “disk mirroring.” Ex. 1006, 4, 22;
Ex. 1003, 153; Ex. 2007, 37:3–11. Further, Hathorn describes its
“remote data shadowing” as “mirroring.” Ex. 1005, 1:65–67.
However, although Hathorn may disclose a RAID level 1
configuration, the question before us is whether Hathorn discloses a
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23
RAID as we have construed the term, i.e., a “single logical unit.”
Petitioner now argues that DASDs 326, 336 are a RAID. Pet. Reply
3. We agree with Patent Owner that DASDs 326, 336 are not a single
logical unit because primary host 301 can individually (or directly)
access either one of those DASDs. See Tr. 50:4–7.
Furthermore, Petitioner’s argument presented at oral hearing as
to what is a RAID, DASDs 326, 336, differs from Petitioner’s
contention presented in the Petition, where Petitioner cited generally
to DASDs as RAIDs. Pet. 47 (annotated Fig. 3). The late change in
position raises a concern that when arising so late in the proceeding
the timing of presenting rebuttal evidence may be unfair and
imbalanced, especially in light of our rules requiring that the Petition
must specify where each element of the claim is found in the prior art
patent. 37 C.F.R. §42.104(b)(4). We address, nevertheless, the merits
of Petitioner’s latest position, recognizing that Patent Owner rebutted
the new arguments sufficiently to dispel the prejudice that may have
been sustained and would have precluded our consideration.
Based on the foregoing, we are persuaded that Petitioner has
not shown by a preponderance of the evidence that Hathorn discloses
a RAID as we have construed the term. Independent claim 1 recites
RAID, and claims 2–3 and 5–8 all depend, directly or indirectly, from
claim 1 and thus necessarily recite RAID. Petitioner has failed to
show by a preponderance of the evidence that claims 1–3 and 5–8 of
the ’346 patent are anticipated by Hathorn.

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III. ORDER
For the reasons given, it is
ORDERED that claims 1–3 and 5–8 of U.S. Patent No. 6,978,346
have not been shown by a preponderance of the evidence to be unpatentable;
and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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25
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

Derek Meeker
derek.meeker@renaissanceiplaw.com