Unified Patents Inc.v.Data Speed Technology LLC

Patent Trial and Appeal Board

Mar 6, 2015

08555259 (P.T.A.B. Mar. 6, 2015)

Trials@uspto.gov Paper No. 9
571.272.7822 Entered: March 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
UNIFIED PATENTS INC.,
Petitioner,
v.
DATA SPEED TECHNOLOGY LLC,
Patent Owner.
_______________

Case IPR2014-01564
Patent 5,867,686
_______________

Before RAMA G. ELLURU, BART A. GERSTENBLITH, and
DAVID C. McKONE, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
I. INTRODUCTION
A. Background
Unified Patents Inc. (“Petitioner”) filed a Corrected Petition (Paper 4,
“Pet.”) requesting institution of inter partes review of claims 1–11 of
U.S. Patent No. 5,867,686 (Ex. 1001, “the ’686 patent”). Data Speed
Technology LLC (“Patent Owner”) timely filed a Preliminary Response
(Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
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Under 35 U.S.C. § 314(a), an inter partes review may be instituted
only if “the information presented in the petition . . . 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.” Inter partes review is instituted
only if the petition supporting the asserted ground demonstrates “that there is
a reasonable likelihood that at least one of the claims challenged in the
petition is unpatentable.” 37 C.F.R. § 42.108(c).
For the reasons given below, on this record we find that Petitioner has
not established a reasonable likelihood of prevailing with respect to at least
one challenged claim of the ’686 patent. Accordingly, we deny the Petition
and decline to institute an inter partes review of the ’686 patent.
B. Related Proceedings
The parties represent that the ’686 patent is asserted in various actions
in the United States District Court for the District of Delaware. Pet. 4–5;
Paper 6, 2–3.
C. The Prior Art
Petitioner relies on the following prior art references:
Andrew S. Tanenbaum and Sape J. Mullender, An Overview of the
Amoeba Distributed Operating System, 15 (3) SIGOPS OPERATING SYSTEMS
REVIEW 51–64 (July 1981) (Ex. 1002, “Overview”);
Robbert van Renesse et al., The Design of a High-Performance File
Server, PROCEEDINGS OF THE INTERNATIONAL CONFERENCE ON DISTRIBUTED
COMPUTING SYSTEMS, Newport Beach, CA, 22–27 (June 1989) (Ex. 1003,
“High Performance”); and
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Fred Douglis et al., A Comparison of Two Distributed Systems:
Amoeba and Sprite, 4 (4) COMPUTING SYSTEMS 353–84 (Fall 1991)
(Ex. 1004, “Comparison”).
D. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–11 of the
’686 patent on the following ground:
1

Reference(s) Basis Claim(s) challenged
Overview, High Performance,
and Comparison
§ 103(a) 1–11
E. Real Party-in-Interest
Patent Owner asserts that we should not institute an inter partes
review of the ’686 patent because Petitioner failed to name the real party-in-
interest. Prelim. Resp. 2–5. In light of our determination that Petitioner has
not established a reasonable likelihood of prevailing with respect to at least
one challenged claim of the ’686 patent, however, we do not reach whether
Petitioner’s identification of Unified Patents Inc. as the real party-in-interest
is correct.
F. The ’686 Patent
The ’686 patent is directed to an information storage system that
“enables multiple hosts, connected to a common bus, to read and write to the
mass storage device independently in real time on a first[-]come basis.”
Ex. 1001, 1:11–18. The information storage system includes a “controller”

1
Petitioner supports its challenge with a declaration executed by
Dr. Norman Hutchinson, Ph.D., on September 29, 2014 (Ex. 1005, “the
Hutchinson Declaration”) and a declaration executed by Jodi L. Gregory on
September 27, 2014 (Ex. 1006).
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for managing the resources of a common mass storage device to enable
multiple hosts connected to a common bus to read and write to the mass
storage device independently. Id. at 3:13–18; 6:6–13.
In particular, each host is able to read and write to the mass storage
device on an independent, first-come, real-time basis by locking the
requested address space irrespective of origination. Id. at 3:19–23, 6:13–16.
Although an address storage space may be locked, the data within such
space “is always readable by another host.” Id. at 3:23–25. Should a
subsequent host issue a command to write to the locked address space,
however, the command is aborted and a flag is set indicating to the
subsequent requesting host that the area is locked. Id. at 3:25–28, 6:18–21.
G. Illustrative Claims
Claims 1, 6, and 10 are the only independent claims challenged in this
proceeding. Claims 2–5 depend from claim 1, claims 7–9 depend from
claim 6, and claim 11 depends from claim 10. Independent claims 1 and 10
are illustrative of the claimed subject matter and are reproduced below:
1. A method of providing memory access to a memory mass
storage device by a plurality of computers, each functioning
under an independent operating system, such method
comprising the steps of:
receiving a write access request identifying a memory
space from a requesting computer of the plurality of computers
by the memory mass storage device;
granting access and reserving the memory space for the
exclusive use of the requesting computer and denying write
access to the memory space by any other computer of the
plurality of computers for the duration of the access grant to the
requesting computer; and
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receiving a write access request and a required memory
size from a second requesting computer of the plurality of
computers.
Ex. 1001, 42:66–43:13.
10. A computer system comprising:
a memory mass storage device;
a plurality of computers, each functioning under an
independent operating system, operably connected to the
memory mass storage device through an external bus;
a communication processor of the memory mass storage
device operably connected to the plurality of computers through
the external bus for receiving an access request from a
requesting computer of the plurality of computers identifying a
memory space of the memory mass storage device;
a controller of the memory mass storage device operably
connected to the communication processor for granting
exclusive write access to the identified memory space by the
requesting computer for a duration of the access grant to the
requesting computer;
means for storing at least one byte of data from the
requesting computer into the identified memory space; and
a dynamic memory map containing a listing of the
identified memory space.
Id. at 44:17–39.
II. CLAIM CONSTRUCTION
While Petitioner presents constructions for several claim terms, no
terms require express construction for purposes of this Decision.
III. ANALYSIS
A. Claims 1–5
Claim 1 and, because of their dependency from claim 1, claims 2–5
recite, inter alia, “granting access and reserving the memory space for the
exclusive use of the requesting computer and denying write access to the
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memory space by any other computer of the plurality of computers for the
duration of the access grant to the requesting computer.” Ex. 1001, 43:6–10.
Petitioner asserts that Overview, High Performance, and Comparison would
have rendered the subject matter of claims 1–5 obvious to one of ordinary
skill in the art at the time of the invention. Pet. 33–45. In asserting that the
above-recited step of claim 1, referred to by Petitioner as step “b,” is taught
by the references, Petitioner relies on High Performance and Comparison.
Pet. 37–38. Petitioner quotes the following from Comparison: “A process
may create a new file, specifying its initial contents and receiving a
capability for it. It may then modify the contents, but the file may not be
read until it has been committed.” Id. at 37 (quoting Ex. 1004, 14).
2

Petitioner also quotes the following from High Performance:
The Bullet interface consist[s] of four functions:
 BULLET.CREATE(SERVER, DATA, SIZE, P-FACTOR)->
CAPABILITY
 BULLET.SIZE(CAPABILITY)->SIZE
 BULLET.READ(CAPABILITY, &DATA)
 BULLET.DELETE(CAPABILITY)
The BULLET.CREATE function is the only way to store data
on a Bullet server. The SERVER argument specifies which
Bullet server to use. This enables users to use more that [sic]
on Bullet server. The DATA and SIZE arguments describe the
contents of the file to be created. A capability for the file is
returned for subsequent usage.
Ex. 1003, 3 quoted in Pet. 38. Additionally, Petitioner quotes a portion of
the Hutchinson Declaration: “The Amoeba File Server grants access and
reserves the memory space for the exclusive use of the requesting computer
because it denies accesses by any other computer until the requesting

2
Exhibit pin citations are to the page numbers of the exhibit, rather than the
page number of the particular reference included as the exhibit.
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computer indicates the end of its access grant by committing the newly
created file.” Id. at 37 (quoting Ex. 1005, 36).
Patent Owner asserts that Petitioner’s quotations fail to show that the
references teach the recited “reserving the memory space for the exclusive
use of the requesting computer and denying write access to the memory
space by any other computer” step of claims 1–5. Prelim. Resp. 8–9. With
respect to Petitioner’s quotation from High Performance, Patent Owner
contends that none of the four functions quoted, “create, size, read and
delete,” “appear to have anything to do with reserving memory space or
denying write access to the memory space.” Id. at 9. With respect to
Comparison, Patent Owner asserts that the quoted portion indicates that a
file “may not be ‘read’ until it has been committed. This statement has
nothing to do with reserving memory space or denying write access to the
memory space.” Id.
High Performance is directed to, inter alia, the “Bullet file server,”
which “achieves high throughput and low delay by a radically different
software design than current file servers.” Ex. 1003, 1. Each Bullet server
file is “stored contiguously, both on disk and in the server’s RAM [(random
access memory)] cache[,]” instead of “storing files as a sequence of disk
blocks.” Id. The server employs the concept of “an immutable file, to
improve performance, to enable caching, and to provide a clean semantic
model to the user.” Id. High Performance explains that the Bullet file server
was developed as part of the “Amoeba distributed operating system project.”
Id.
Comparison describes the Amoeba operating system, which “provides
a high-performance user-level IPC [(industrial personal computer)]
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mechanism,” which “caches files only on servers” and “uses a centralized
server to allocate processors and distribute load automatically.” Ex. 1004,
1–2.
3
Comparison explains that the “standard Amoeba file server” is known
as the Bullet Server, and provides “an immutable file store, which simplifies
file replication.” Id. at 14.
Based on this record, we are not persuaded that Petitioner’s quotation
from High Performance, identifying the four functions of the Bullet interface
and describing the “BULLET.CREATE” function teaches “reserving the
memory space for the exclusive use of the requesting computer” or “denying
write access to the memory space by any other computer of the plurality of
computers” as recited in claims 1–5. The Hutchinson Declaration includes
this quotation from High Performance, but fails to explain how these
functions teach these steps of the claims. Ex. 1005, 36–37.
Petitioner’s quotation from Comparison suffers from a similar
deficiency. The selected quotation discloses that the “file may not be read
until it has been committed” (Pet. 37 (quoting Ex. 1004, 14)), but we are not
persuaded that the disclosure teaches “reserving the memory space for the
exclusive use of the requesting computer” or “denying write access to the
memory space by any other computer of the plurality of computers” as
recited in claims 1–5. The Hutchinson Declaration also includes this
quotation from Comparison, but again fails to explain how this disclosure
teaches these steps of the claims. Ex. 1005, 36–37. The Comparison
quotation expressly indicates that the Bullet file server may deny read
access, but neither Petitioner nor Dr. Hutchinson explains how this

3
Comparison compares the Amoeba operating system to the Sprite
operating system. Ex. 1004, 1.
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disclosure teaches that the server also reserves memory space for the
exclusive use of the requesting computer or denies write access to the
memory space by any other computer .
Accordingly, on the record before us, Petitioner has not established a
reasonable likelihood of prevailing on the assertion that the combination of
Overview, High Performance, and Comparison would have rendered
claims 1–5 of the ’686 patent obvious to one of ordinary skill in the art at the
time of the invention.
B. Claims 6–9
Claim 6 and, because of their dependency from claim 6, claims 7–9
recite, inter alia, “granting access and reserving the memory space for the
exclusive use of the first requesting computer and denying write access to
the memory space by any other computer of the plurality of computers for
the duration of the access grant to the first requesting computer.” Ex. 1001,
43:38–42. Petitioner asserts that Overview, High Performance, and
Comparison would have rendered the subject matter of claims 6–9 obvious
to one of ordinary skill in the art at the time of the invention. Pet. 45–51. In
particular, Petitioner relies upon its argument regarding element “1b” of
claim 1 in its discussion of how the references teach the above-recited steps
of claim 6. Pet. 45; see also Ex. 1005, 44 (referring to “claim 1b”).
Patent Owner asserts that the Petition “merely refers . . . back to its
analysis of claim 1,” in addressing claim 6. Prelim. Resp. 9. Thus, Patent
Owner argues claim 6 along with claim 1. Id.
The “granting access,” “reserving the memory space for the exclusive
use,” and “denying write access,” steps of claim 6 are nearly identical to
those of claim 1, the difference being that claim 6 recites that the exclusive
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use is for the first requesting computer. For the reasons explained in our
discussion of claim 1 above, see Section III.A., Petitioner has not established
a reasonable likelihood of prevailing on the assertion that the combination of
Overview, High Performance, and Comparison would have rendered
claims 6–9 of the ’686 patent obvious to one of ordinary skill in the art at the
time of the invention.
C. Claims 10 and 11
Claim 10 and, because of its dependency from claim 10, claim 11
recite, inter alia, “a controller of the memory mass storage device operably
connected to the communication process for granting exclusive write access
to the identified memory space by the requesting computer for a duration of
the access grant to the requesting computer.” Ex. 1001, 44:29–33.
Petitioner asserts that Overview, High Performance, and Comparison would
have rendered the subject matter of claims 10 and 11 obvious to one of
ordinary skill in the art at the time of the invention. Pet. 51–58. In asserting
that the above-recited step of claim 10 is taught by the references, Petitioner
solely relies on two disclosures from Comparison. Pet. 53–54. First,
Petitioner refers to the following, “[i]n contrast, Amoeba implements a
‘microkernel,’ with a minimal set of services (most importantly,
communication and low-level process management) implemented within the
kernel.” Id. (quoting Ex. 1004, 9). Second, Petitioner refers to the
following:
[b]oth Amoeba and Sprite implement communication
mechanisms to enable processes to communicate with each
other and to hide machine boundaries. Their mechanisms for
doing so, however, are different. Amoeba presents the whole
system as a collection of objects, on each of which a set of
operations can be performed using RPC.
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Id. at 54 (quoting Ex. 1004, 11). Petitioner also relies upon its argument
regarding step “1b” of claim 1.
4
Id. at 54.
Patent Owner contends that Petitioner appears to “merely refer[] back
to its discussion of ‘claim 1b’ to address this claim limitation.” Prelim.
Resp. 11. Patent Owner, thus, asserts that Petitioner’s discussion of this
element of claim 10 is deficient for the same reasons discussed in the context
of claim 1—Petitioner’s quotations do not address “granting exclusive write
access . . . for a duration of the access grant.” Id. (quoting claim 10).
Petitioner’s quotations from Comparison are directed to arguing that
Amoeba includes a controller, rather than providing additional support to
Petitioner’s argument that Comparison discloses the “granting exclusive
write access . . . for a duration of the access grant” step of claims 10 and 11.
Instead, Petitioner’s argument regarding this step of claims 10 and 11 relies
upon the same positions put forth for what it refers to as “element 1b” of
claim 1. Petitioner also includes a quotation from the Hutchinson
Declaration (Pet. 53 (quoting Ex. 1005, 51), but Dr. Hutchinson similarly
fails to explain how the additional cited portions of Comparison disclose the
“granting exclusive write access . . . for a duration of the access grant” step
of the claims.
Accordingly, for the reasons explained in our discussion of claim 1
above, see Section III.A., Petitioner has not established a reasonable
likelihood of prevailing on the assertion that the combination of Overview,
High Performance, and Comparison would have rendered claims 10 and 11

4
The Hutchinson Declaration also includes the two quoted portions from
Comparison and refers back to “claim 1b.” Ex. 1005, 51.
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of the ’686 patent obvious to one of ordinary skill in the art at the time of the
invention.
IV. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition does not demonstrate that there is a reasonable likelihood that
Petitioner will prevail in challenging claims 1–11 of the ’686 patent as
unpatentable under 35 U.S.C. § 103(a).
V. ORDER
In consideration of the foregoing, it is ORDERED that the Petition is
DENIED and no trial is instituted.

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For PETITIONER:

Michael L. Kiklis
Scott A. McKeown
Oblon, Spivak, McCelland, Maier & Neustadt, LLP
CPdocketkiklis@oblon.com
CPdocketMckeown@oblon.com

For PATENT OWNER:

John R. Kasha
Kelly Kasha
Kasha Law LLC
john.kasha@kashalaw.com
kelly.kasha@kashalaw.com