Unified Patents Inc.v.Data Speed Technology LLCDownload PDFPatent Trial and Appeal BoardMar 6, 201508555259 (P.T.A.B. Mar. 6, 2015) Copy Citation 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. IPR2014-01564 Patent 5,867,686 2 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 IPR2014-01564 Patent 5,867,686 3 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). IPR2014-01564 Patent 5,867,686 4 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 IPR2014-01564 Patent 5,867,686 5 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 IPR2014-01564 Patent 5,867,686 6 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. IPR2014-01564 Patent 5,867,686 7 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)] IPR2014-01564 Patent 5,867,686 8 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. IPR2014-01564 Patent 5,867,686 9 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 IPR2014-01564 Patent 5,867,686 10 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. IPR2014-01564 Patent 5,867,686 11 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. IPR2014-01564 Patent 5,867,686 12 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. IPR2014-01564 Patent 5,867,686 13 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 Copy with citationCopy as parenthetical citation