`571.272.7822
`
`
`
`
`
`
`
` Paper No. 51
`
` Filed: July 29, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VEEAM SOFTWARE CORPORATION,
`Petitioner,
`
`v.
`
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2013-00142
`Patent 6,931,558 B1
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. BACKGROUND
`Veeam Software Corporation (“Petitioner”) filed a Petition for inter
`partes review of claims 16–23 of U.S. Patent No. 6,931, 558 B1 (“the ’558
`patent”) pursuant to 35 U.S.C. §§ 311–319 and 37 C.F.R. §§ 42.1–42.123.
`(Paper 6, “Pet.”). Symantec Corporation (“Patent Owner”) filed a Patent
`Owner Preliminary Response. Paper 10 (“Prelim. Resp.”). Taking into
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`account Patent Owner’s Preliminary Response, we determined that there is a
`reasonable likelihood that challenged claims 17–23 are unpatentable.
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review, on August 7,
`2013, as to claims 17–23 of the ’558 patent. Paper 11 (“Dec.”). Patent
`Owner filed a request for rehearing on August 21, 2013 seeking
`reconsideration of our decision on the ground of anticipation of claims 18–
`20 and 22 under 35 U.S.C. § 102 by Goshey. Paper 13. We denied,
`subsequently, inter partes review of claims 18–20 and 22 on that ground.
`Paper 17.
`After institution, Patent Owner filed a Patent Owner Response (Paper
`22, “PO Resp.”) and a contingent Motion to Amend (Paper 23, “Mot. to
`Amend”). Petitioner filed a reply to the Patent Owner Response. Paper 28
`(“Pet. Reply”). A hearing was held on May 5, 2014, a transcript of which
`appears in the record. Record of Oral Hearing, Paper 50 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This decision is a final
`written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the challenged claims. For the reasons discussed below, we
`determine that Petitioner has shown by a preponderance of the evidence that
`claims 17–23 are unpatentable.
`
`
`A. Related Proceedings
`In addition to this proceeding, Petitioner filed a petition for inter
`
`partes review challenging the patentability of claims 1–15 of the ’558
`patent. See Veeam Software Corp. v. Symantec Corp., Case IPR2013-00141,
`Paper 5. In that proceeding, we instituted inter partes review as to claims 1–
`15 of the ’558 patent. Veeam Software Corp. v. Symantec Corp., Case
`
`
`
`2
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`IPR2013-00141 (PTAB Aug. 7, 2013) (Paper 11). Further, we instituted
`inter partes review based on Petitioner’s challenges to the patentability of
`certain claims of Patent Owner’s U.S. Patents 7,093,086 (IPR2013-00150)
`and 7,191,299 (IPR2013-00143). Our final decisions in these proceedings
`are being entered concurrently with this decision.
`
`The parties indicate that the ’558 patent is involved in a case in the
`U.S. District Court for the Northern District of California, Symantec Corp. v.
`Veeam Software Corp. (No. 3:12-cv-00700). Pet. 1; Paper 9, 2.
`
`
`B. The ’558 Patent (Ex. 1001)
`The ’558 patent is titled “Computer Restoration Systems and
`
`Methods” and generally relates to local and wide area interconnected
`computers and data communications networks. More particularly, the patent
`relates to restoration of computer systems backed up on storage managers,
`such as in a network, upon a “crash” or other similar event that prohibits
`normal “boot[-]up” operation. Ex. 1001, col. 1, ll. 10–15.
`
`The ’558 patent explains that the client computer has access to a
`storage manager application, such as a server computer of the network
`operating a storage management software program. Id. at Abstract. All
`client files, including configuration files, as well as application and data
`files, of the client device are saved on the network by the storage manager
`application. Id.
`
`The client device is booted over the network, rather than locally to the
`client device by a boot disk or otherwise. Id. The boot program is loaded to
`the client device, and the client device retrieves configuration and file
`information over the network from the storage manager application. Id. The
`
`
`
`3
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`client device configures its disk according to the configuration information.
`Id. All other files and data of the client device at the time of a failure of the
`client device are saved on the disk substantially in the condition and state
`just prior to the failure, and as most recently backed up to the storage
`manager application. Id.
`
`Figure 3 of the ’558 patent is reproduced below:
`
`
`Figure 3 illustrates server computer 104 having server components 300,
`including restore server 302, boot server 304, file server 306, and storage
`manager 308. Id. at col. 3, ll. 32–35; col. 5, ll. 10–15. The restore server
`shown in Figure 3 above, and described in the text of the patent, is known as
`a bare metal restore (BMR) server. Id. at col. 5, ll. 11–12.
`
`
`C. Illustrative Claims
`Independent claims 17 and 18 of the ’558 patent are illustrative of the
`claims at issue:
`17. A method of restoring a client device on failure of the
`client device, comprising the steps of:
`
`
`
`4
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`
`saving a state of the client device, including client disk
`
`configuration information, prior to the failure;
`
`resetting the client device;
`
`booting the client device; and
`
`configuring the client device according to the state from
`the step of saving.
`
`18. A system comprising:
`
`backup software; and
`
`a restoration server;
`wherein the backup software is configured to create one or
`more backups of a client device, wherein at least one backup of
`the one or more backups comprises client disk configuration
`information; and
`wherein, following a failure of the client device, the restoration
`server is configured to:
`
`perform a network boot of the client device; and
`restore a client disk configuration using the client disk
`configuration information.
`
`
`
`D. Grounds of Unpatentability
`We instituted inter partes review of the ’558 patent based upon the
`
`following grounds of unpatentability:
`1. Claims 17–23 are anticipated under 35 U.S.C. § 102 by BMR User
`Guide1;
`2. Claims 18–23 are anticipated under 35 U.S.C. § 102 by BMR
`Webpages2; and
`
`1 THE KERNEL GROUP, Bare Metal Restore User Guide For Tivoli Store
`Manager: Version 1.4.3 1–142 (2001) (Ex. 1003).
`2 THE KERNEL GROUP, Bare Metal Restore User’s Guide: Version 1.1 for
`AIX (Aug. 31, 2000),
`www.web.archive.org/web/20000831083617/http:/www.tkg.com/bmr/docs/
`5
`
`
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`
`3. Claim 17 is anticipated under 35 U.S.C. § 102 by Goshey3.
`Dec. 20; Paper 17, 1–2.
`
`
`II. DISCUSSION
`A. Claim Construction
`We begin our analysis by determining the meaning of the claims. In
`
`an inter partes review, claim terms in an unexpired patent are given their
`broadest reasonable construction in light of the specification of the patent in
`which they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`meaning as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`i. Client Disk Configuration Information
`We determined that the broadest reasonable interpretation of “client
`
`disk configuration information” is “information regarding disk partitions,
`volume groups, logical volumes, and/or file systems.” Dec. 8. The broadest
`reasonable interpretation of “client disk configuration information” was
`proposed by Petitioner (Pet. 7) and adopted by us in the Decision on
`Institution (Dec. at 8). Patent Owner maintains that the adopted
`interpretation is improper for the reason set forth in its Preliminary Response
`
`
`white.html (last visited Aug. 31, 2000); THE KERNEL GROUP, Disaster
`Recovery and the Tivoli Storage Manager: How Bare Metal Restore Fills
`the Gap (Aug. 31, 2000),
`www.web.archive.org/web/20000831083617/http:/www.tkg.com/bmr/docs/
`white.html (last visited Aug. 31, 2000) (Ex. 1002).
`3 Goshey et al., U.S. Patent No. 6,205,527 B1 (issued Mar. 20, 2001) (Ex.
`1004).
`
`
`
`6
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`(see Prelim. Resp. 4–5; see also Dec. at 8 (determining that Patent Owner’s
`argument regarding an alleged lexicographic definition of client disk
`configuration data was unpersuasive)), but accepts the Board’s interpretation
`for the purposes of the Patent Owner Response. PO Resp. 3.
`B. Grounds Based on BMR User Guide (Ex. 1003)
`Petitioner argues that claims 17–23 are anticipated under 35 U.S.C.
`§ 102 by BMR User Guide. Pet. 17–27; Pet. Reply 2–11. “A claim is
`anticipated only if each and every element as set forth in the claim is found,
`either expressly or inherently described, in a single prior art reference.”
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
`1987). For the reasons discussed below, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 17–23 are
`anticipated by BMR User Guide.
`i. BMR User Guide
`As described in BMR User Guide, the BMR product allows a client
`machine to be restored completely from the data saved in an enterprise
`storage management (ESM) server, without requiring separate system
`backups or reinstalls. Ex. 1003, 1. In the event that the client loses a boot
`disk or suffers some other catastrophic failure, BMR can be used to restore
`the machine to the state at which it was backed up last to the ESM. Id.
`BMR is integrated into ESM, providing the disaster recovery feature that the
`ESM lacks. Id.
`The Figure on page 3 of BMR User Guide, reproduced below, depicts
`the BMR product.
`
`
`
`7
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`
`
`The Figure depicts a BMR server, connected to a boot server, a file server,
`and an ESM server. Id. at 3. The boot server, file server, and ESM server
`are connected to a restore client. Id. The Figure depicts that the boot server
`transmits the boot image to the restore client; the file server transmits “OS,
`BMR, & ESM files needed at restore time” to the restore client; and the
`ESM server transmits all backed-up client files to the restore client. Id.
`
`BMR User Guide describes a client restoration process that is “highly
`automated” and includes the following ten steps:
`1. The user tells the BMR server to prepare to restore the
`client.
`2. The BMR server retrieves the UNIX client’s configuration
`data from the ESM server. NT clients retrieve the client
`configuration file from the ESM server and to control re–
`configuration.
`3. The BMR server creates a customized client boot script and
`makes the appropriate boot image and filesystems available
`to the client.
`
`
`
`8
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`
`4. The client boots from the boot server and starts running its
`customized boot script.
`5. The client mounts the necessary filesystems from the file
`server or SAMBA server.
`6. The client configures its disks, logical volumes, filesystems,
`etc.
`7. The client uses the standard ESM client to restore all its files
`from the ESM server, including the operating system,
`applications, configuration data, and user files.
`8. The client configures its boot record and configuration
`database.
`9. The client reboots itself.
`10. The client performs post-boot cleanup.
`Id. at 4.
`
`ii. Independent Claims 17 and 18
`Patent Owner argues that BMR User Guide does not anticipate claims
`17 and 18 because BMR User Guide does not disclose the claimed 1) client
`disk configuration data and 2) network boot caused by the server device. PO
`Resp. 11–20. We will address each of these disputed limitations in turn.
`a. Client Disk Configuration Information
`Independent claim 17 recites “saving a state of the client device,
`including client disk configuration information” and “configuring the client
`device according to the state from the step of saving.” Independent claim 18
`recites “at least one backup . . . comprises client disk configuration
`information” and a restoration server configured to “restore a client disk
`configuration using the client disk configuration information.”
`Petitioner argues that BMR User Guide discloses these limitations
`because BMR User Guide discloses saving a state of machine configuration
`and a restoration process that includes configuring a client’s disks, logical
`volumes, filesystems, etc. Pet. Reply 8; Pet. 18–19. Petitioner argues that,
`
`
`
`9
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`given these disclosures, one of ordinary skill in the art would understand that
`the saved client configuration data includes client disk configuration
`information, because in order for the client to be completely recovered, the
`saved client configuration must include the client disk configuration
`information. Pet. 18–19; Pet. Reply 6–10; see also Ex. 1007 ¶ 39; Ex. 1014
`¶¶ 11–14 (supporting testimony of Petitioner’s expert, Dr. Shenoy).
`Patent Owner argues that, although BMR User Guide discloses the
`state of the machine configuration information is saved and discloses,
`separately, a client configuring its disks, logical volume, and filesystem,
`BMR User Guide fails to disclose, explicitly, that the saved state of the
`machine configuration includes the client disk configuration information.
`PO Resp. 12–18; see also Ex. 2011 ¶¶ 39–46 (supporting testimony of
`Patent Owner’s expert Dr. John Levy). Patent Owner argues that BMR User
`Guide is vague as to where the information used to configure the client’s
`disks, logical volume, and filesystem is stored. See id.
`We are not persuaded by Patent Owner’s argument. BMR User Guide
`discloses a ten step “highly automated” restoration process in which a client
`device is restored after a failure. Ex. 1003, 4. Step six of the BMR User
`Guide’s restoration process states “[t]he client configures its disks, logical
`volumes, filesystems, etc.” Id. In order to configure disks, logical volumes,
`and filesystems during a highly automated restoration process, the client
`must obtain information regarding disks, logical volumes, and filesystems
`(i.e., client disk configuration information) from some previously saved file.
`See Tr. 76 (in response to a question from the panel at the oral hearing,
`counsel for Patent Owner agreed that the information that the client would
`use to configure the disks “has to come from some sort of file”). BMR User
`
`
`
`10
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`Guide discloses that “all files (including system files) must be backed up to
`the ESM server” and that “BMR also saves the client’s configuration at
`backup time so that an up-to-date snapshot of the machine configuration is
`always saved with the system’s data.” Ex. 1003, 2 (emphases added); see
`also id. at 5 (“It is important that every backup captures a complete snapshot
`of the system because BMR restores the machine to the state at which it was
`last backed up.”) (emphases added). BMR User Guide further discloses:
`Bare Metal Restore (BMR) allows a machine to be completely
`restored from the data that is saved in an Enterprise Storage
`Manager (ESM), without requiring separate system backups or
`reinstalls. . . . Bare Metal Restore can be used to restore the
`machine to the state at which it was last backed up to an ESM.
` . . . .
`When you use BMR, your clients are backed up normally to
`their ESM server(s). The only differences are that all of the
`clients’ files are backed up and a program is automatically run
`before the backup is performed to save the state of the machine
`configuration. This information allows BMR to completely
`recover a machine from just the ESM backup.
`Id. at 1 (emphases added). Given these disclosures, we agree with
`Petitioner’s expert, Dr. Prashant Shenoy, that the client disk configuration
`information must have been saved as part of the configuration information
`during the backup. Ex. 1007 ¶ 39.
`For the reasons given above, we determine that BMR User Guide
`discloses that information for configuring disks, logical volumes, and
`filesystems (i.e., client disk configuration information) is saved with the
`configuration information on the ESM.
`b. Network Boot
`Independent claim 18 recites that the restoration server is configured
`to “perform a network boot of the client device.” Petitioner argues that this
`11
`
`
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`limitation is met by BMR User Guide’s disclosure of a boot server network-
`booting a client. Pet. 23–24 (citing Ex. 1003, 2); Pet. Reply 10–11. Patent
`Owner argues that, although BMR User Guide describes a network boot,
`BMR User Guide does not describe that the server device or boot server
`causes the network boot, because BMR User Guide describes that a human
`operator is required to perform multiple steps prior to the initiation of a
`network boot. PO Resp. 17–20. Patent Owner’s argument implies that this
`limitation precludes the intervention of a human operator, in any capacity,
`during a network boot. See id.
`We see nothing in this limitation that would preclude a human
`operator from performing steps prior to the initiation of a network boot.
`BMR User guide discloses that the boot server performs a “network boot” to
`boot the client device prior to restoration. Ex. 1003, 2. Further, BMR User
`Guide states: “BMR uses the standard bootp or bootparam protocol to
`network-boot the client from the boot server.” Id. at 2. These are the same
`protocols that the ’558 patent uses as the network boot. Ex. 1001, col. 6,
`ll. 59–62 (“The network boot performed by the client computer 106 in such
`manner uses the standard ‘bootp’ and/or ‘bootparams’ protocols to network
`boot the client computer 106 from the boot server 304 . . . .”).
`For the reasons discussed above, we determine that BMR User Guide
`discloses a restoration server performing a network boot.
`iii. Dependent Claims 19–23
`
`Patent Owner makes no arguments regarding the additional limitations
`recited in dependent claims 19–23. Upon review of the Petitioner’s
`evidence and analysis (Pet. 23-26), we determine that Petitioner has shown
`
`
`
`12
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`by a preponderance of the evidence that the dependent claims are
`unpatentable.
`
`
`C. Ground Based on BMR Webpages (Ex. 1002)
`
`
`BMR Webpages describes essentially the same BMR product
`described in BMR User Guide, which we determined anticipates claims 17–
`23, we find it unnecessary to address separately the question of patentability
`of claims 17–23 as being anticipated by BMR Webpages. However, BMR
`User Guide is a more complete description of the product from BMR
`Webpages. We do not find claims 17-23 to be anticipated by BMR
`Webpages.
`
`
`D. Ground Based on Goshey (Ex. 1004)
`Petitioner argues that claim 17 is anticipated under 35 U.S.C. § 102 by
`Goshey. Pet. 28–37; see Pet. Reply 11–14. For the reasons discussed
`below, we determine that Petitioner has demonstrated by a preponderance of
`the evidence that claim 17 is anticipated by Goshey.
`i. Goshey
`Goshey discloses an “intelligent” backup system. Ex. 1004, col. 1,
`ll. 16–20. The system is illustrated in Figure 1A, which is reproduced
`below:
`
`
`
`13
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`
`
`Figure 1A of Goshey illustrates computer system 100 including computer
`monitor 101 and computer housing 102. Computer housing 102 is shown
`connected to exemplary peripheral stoarge devices, such as external hard
`disk 104a and removable media storage device 104b. Computer housing
`102 typically includes a standard hard disk and may also include extra
`internal hard disk 104c. Id. at col. 6, l. 61–col. 7, l. 10.
`ii. Independent Claim 17
`
`Patent Owner argues that Goshey does not anticipate claim 17 because
`BMR User Guide does not disclose 1) saving or restoring client disk
`configuration information and 2) resetting the client device. PO Resp. 20–
`22. We will address each of these disputed limitations in turn.
`a. Client Disk Configuration Information
`Independent claim 17 recites “saving a state of the client device,
`including client disk configuration information” and “configuring the client
`device according to the state from the step of saving.”
`Petitioner argues that the Goshey disclosures of saving partition
`information and using this information to duplicate partitions on another
`hard drive meets these limitations. Pet. 29–31, 34–35; Pet. Reply 11–13.
`
`
`
`14
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`Patent Owner argues, generally, that Goshey’s relied upon disclosure is not
`the same as saving and restoring client disk configuration information. PO
`Resp. 20–22. Patent Owner, however, does not include any other
`explanation as to how the Goshey disclosures are different. Id.
`We are not persuaded by Patent Owner’s argument. Goshey discloses
`partitioning of the cartridge storage media and the formatting of each
`partition in the same scheme as the drive it represents. Ex. 1004, col. 21,
`ll. 19–49. Goshey discloses that after a failure, a new “hard drive is
`partitioned to match the settings that existed in the host computer’s hard
`drive previous to the system failure.” Id. at col. 25, ll. 27–29; see also id. at
`col. 4, ll. 65–67 (“[T]he . . . system . . . assists in partitioning and formatting
`the hard disk for the user.”). Further, Table A of Goshey includes partition
`information. Id. at col. 15, ll. 48–66. We fail to see why these disclosures
`of Goshey do not meet the claimed limitations and Patent Owner’s argument
`includes no explanation. See PO Resp. 20–22.
`We, thus, determine that Goshey discloses saving and restoring of
`client disk configuration information.
`b. Resetting the Client Device
`Independent claim 17 recites “resetting the client device.” Petitioner
`
`relies upon Goshey’s disclosure of re-booting the peripheral storage device
`to meet this limitation. Pet. 30 (citing Ex. 1004, col. 3, ll. 9–13); Pet. Reply
`13–14. Petitioner, relying upon its expert, Dr. Shenoy, argues that Goshey’s
`“re-boot procedure is necessarily preceded by a reset of the computer.” Pet.
`30 (citing Ex. 1007 ¶ 49). Patent Owner, relying upon its expert, Dr. Levy,
`argues that Goshey’s re-boot procedure does not necessarily require a re-
`
`
`
`15
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`boot because a soft boot does not require any reset. PO Resp. 21 (citing Ex.
`2011 ¶ 70).
`
`We give weight to the testimony of Petitioner’s expert, Dr. Levy, and
`determine that Goshey’s re-boot is necessarily preceded by a reset. Patent
`Owner’s expert, Dr. Levy, states that the re-boot could include a soft boot
`(i.e., a soft rest) or a hard boot. Ex. 2011 ¶ 70. Claim 17 broadly recites
`“resetting” and does not distinguish whether the claimed reset is a soft reset
`or a hard reset, and therefore, encompasses both. We, thus, determine that
`Goshey’s disclose of a re-boot meets the resetting limitation of claim 17.
`For this reason, we determine that Goshey discloses resetting the
`client device.
`
`
`
`E. Motion to Amend
`Patent Owner filed a contingent Motion to Amend the claims under
`
`37 C.F.R. § 42.121. Petitioner filed an Opposition to the Motion to Amend
`(Paper 29, “Am. Opp.”), and Patent Owner filed a Reply to the Motion to
`Amend (Paper 39, “Am. Reply”).
`Patent Owner proposes to substitute claims 28–33 for challenged
`claims 17–20, 22, and 23. Mot. to Amend, 1–4. To the challenged claims,
`Patent Owner’s Motion to Amend proposes to add four limitations: 1) that
`the client device is reset by a controlling device, 2) that the client disk
`configuration information comprises partitions, volume groups, logical
`volumes, and files systems, and 3) that the configuration files are mounted at
`the client device from a file server. Patent Owner argues that each of these
`additional limitations are not disclosed in the prior art of record, and,
`therefore, the proposed substitute claims are not anticipated by the cited
`
`
`
`16
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`prior art. See id. at 6–13; Am. Reply 2–4. Petitioner argues that Patent
`Owner’s Motion to Amend is deficient because it fails to consider all prior
`art references cited in this proceeding and fails to demonstrate that the
`substitute claims are obvious over the cited prior art. See Am. Reply 3–7.
`We shall address each of the proposed additional limitations in turn.
`For the reasons discussed below, Patent Owner’s Motion to Amend is
`denied.
`
`
`i. Patentability
`a. Controlling Device for Resetting the Client Device
`
`Substitute claim 29 adds that the server device is “configured to: reset
`the client device using a controlling device connected to the client” to
`challenged claim 18. Mot. to Amend, 3. Patent Owner argues that none of
`BMR Webpages, BMR User Guide, Deshayes, or DRAC4 anticipates the
`substitute claims because none of these prior art references describe a
`controlling device for resetting the client device. Id. at 6–7, 10–12. Patent
`Owner also argues that the added feature is “significant” and broadly states
`that none of the prior art known to it “used such a device in connection with
`the claimed [device restoration] system of substitute claim 29 of the [’]558
`patent.” Id. at 10–12.
`
`Patent Owner, however, fails to demonstrate that the substitute claims
`are patentable because of the addition of a controlling device for resetting
`the client. Patent Owner bears the burden of proof in demonstrating
`patentability of the proposed substitute claim over the prior art of record and
`also prior art known to Patent Owner, and, thus, entitlement to add these
`
`4 DELL™, DELL OPENMANAGE™ REMOTE ASSISTANT CARD VERSION 2.X
`USER’S GUIDE 1-1–4-6, A-1–C-10, Index 1–2 (1999) (Ex. 1013).
`
`
`
`
`17
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`proposed substitute claims to its patent. See Idle Free Sys., Inc. v.
`Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013)
`(Paper 26) (“Idle Free”). It is insufficient for Patent Owner simply to
`explain why the proposed substitute claims are patentable in consideration of
`the ground of unpatentability on which the Board instituted review. Id.
`Patent Owner’s argument is confined to whether the cited prior art
`anticipates the substitute claims, and fails to demonstrate that the addition of
`the controlling device is unobvious over the cited prior art and over all prior
`art known to Patent Owner. Further, neither Patent Owner’s Motion to
`Amend nor its supporting Declaration by Dr. Levy (Ex. 2013), addresses the
`fact that ’558 patent discloses that such resetting devices are known. The
`’558 patent states:
`Remote re-boot and restoration can also occur according to the
`method 400, for example in the case of a system like an AIX SP
`node, where the physical “front panel” (i.e., on, off, reset and
`similar control circuitry and equipment) of the client computer
`106 can be manipulated through software from another device,
`so that the controlling device can electrically (and, if necessary,
`mechanically) initiate a reset as if the reset button on the client
`computer 106 is triggered.
`Ex. 1001, col. 6, ll. 58–66 (emphasis added); see also id. at col. 2, ll. 27–29
`(describing AIX as a “conventional” backup system). Patent Owner’s
`Motion to Amend, thus, fails to demonstrate that the addition of the
`controlling device causes the substituted claim to be patentable over not only
`the prior art of record but also over all the prior art known to Patent Owner,
`particularly, in light of the fact that BMR User Guide discloses using an AIX
`client (see Ex. 1003, 108).
`
`
`
`18
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`
`b. Client Disk Configuration Information and Partitions, Volume Groups,
`Logical Volumes, and File Systems
`
`Substitute claim 28 adds that the configuration files include client disk
`configuration information to challenged claim 17. Mot. to Amend, 2.
`Substitute claim 29 adds that the client disk configuration information
`“compris[es] partitions, volume groups, logical volumes, and file systems”
`to challenged claim 18. Id. at 3. Patent Owner argues that neither BMR
`Webpages nor BMR User Guide describes that the client disk configuration
`information comprises partition or volume group information. Id. at 7–8.
`Patent Owner’s argument is confined to whether some of the cited
`prior art anticipates the substitute claims, and fails to demonstrate that the
`addition of this feature causes the substitute claim to be novel and unobvious
`over all the cited prior art and all prior art known to Patent Owner. See
`discussion of Idle Free above. As previously discussed, we determined that
`the BMR User Guide discloses client disk configuration information that
`includes “disks, logical volumes, filesystems, etc.” Ex. 1003, 4. Neither
`Patent Owner’s Motion to Amend nor the supporting Declaration of
`Dr. Levy (Ex. 2013 ¶¶ 38–43) addresses whether the addition of partition
`and volume group information to the BMR User Guide would have been
`obvious to one of ordinary skill in the art, particularly in light of Dr. Levy’s
`statements that a volume group is multiple logical volumes, which are
`partitions that are managed as a single disk drive (Id. ¶¶ 39, 41). See Am.
`Opp. 4.
`
`c. Mounting Configuration Files
`
`Substitute claim 28 adds “mounting configuration files at the client
`device from a file server” and that the client disk configuration information
`is from “the mounted configuration files” to challenged claim 17. Mot. to
`19
`
`
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`Amend 2. Patent Owner argues that BMR Webpages, BMR User Guide,
`and Goshey do not disclose mounting configuration files, which include
`client disk configuration information, from a file server. Id. at 8–10, 12–13.
`
`Again, Patent Owner’s argument is confined to whether some of the
`cited prior art anticipates the substitute claim, and fails to demonstrate that
`the addition of the configuration files being mounted from the file server
`causes the substitute claims to be novel and unobvious over all the cited
`prior art and all prior art known to Patent Owner. See Am. Opp., 8.
`ii. Broadening
`Patent Owner argues that substitute claims 29–33 include all of the
`
`limitations of the respective challenged claim and that “[e]ach one of Patent
`Owner’s proposed substitute claims narrows the scope of the original claim
`it replaces.” Mot. to Amend, 5. Patent Owner, however, replaces the term
`“restoration server” with the facially broader term “server device” in each of
`substitute claims 29–33. Id. at 2–4. This amendment is not responsive to an
`alleged ground of unpatentability and appears to enlarge the scope of the
`claims. During inter partes review, a patent owner may not amend a
`challenged claim in a manner that enlarges the scope of that claim. 35
`U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). A substitute claim is not
`responsive to an alleged ground of unpatentability of a challenged claim if it
`does not either include or narrow each feature of the challenged claim being
`replaced. 37 C.F.R. § 42.121 (a)(2). See Idle Free, Paper 26, slip op. at 5.
`Patent Owner’s Motion to Amend makes no other mention of this
`replacement nor does it contain any explanation as to why this amendment
`does not broaden the substitute claims. As the moving party, Patent Owner
`
`
`
`20
`
`
`
`IPR2013-00142
`Patent 6,931,558 B1
`
`bears the burden of proof to establish that it is entitled to the relief requested.
`37 C.F.R. § 42.20(c).
`For the reasons discussed above, Patent Owner’s Motion to Amend is
`denied.
`
`
`
`F. Motion to Exclude
`Patent Owner filed a Motion to Exclude (Paper 34, “Motion to
`Exclude”) on March 31, 2014. Petitioner filed an opposition to the Motion
`to Exclude (Paper