Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: May 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`HEWLETT PACKARD ENTERPRISE CO.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`
`IPR2022-00096
`Patent RE44,818 E
`
`
`Before DAVID C. MCKONE, JOHN A. HUDALLA, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Petitioner, Hewlett Packard Enterprise Company (“Petitioner”), filed a
`Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1–3, 6,
`7, 17–19, 30, 32–34, 37, 38, and 40 (“the challenged claims”) of U.S. Patent
`No. RE44,818 E (Ex. 1001, “the ’818 patent”). Petitioner filed a Declaration
`
`
`571-272-7822
`
`Paper 11
`Entered: May 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`HEWLETT PACKARD ENTERPRISE CO.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`
`IPR2022-00096
`Patent RE44,818 E
`
`
`Before DAVID C. MCKONE, JOHN A. HUDALLA, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Petitioner, Hewlett Packard Enterprise Company (“Petitioner”), filed a
`Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1–3, 6,
`7, 17–19, 30, 32–34, 37, 38, and 40 (“the challenged claims”) of U.S. Patent
`No. RE44,818 E (Ex. 1001, “the ’818 patent”). Petitioner filed a Declaration
`
`
`
`IPR2022-00096
`Patent RE44,818 E
`of Aaron D. Striegel, Ph.D. (Ex. 1003) with its Petition. Patent Owner,
`Intellectual Ventures II LLC (“Patent Owner”), filed a Preliminary Response
`(Paper 10, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “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.” For the reasons that follow, we institute
`an inter partes review as to claims 1–3, 6, 7, 17–19, 30, 32–34, 37, 38, and
`40 of the ’818 patent on all grounds of unpatentability presented.
`
`
`
`A.
`
`I. BACKGROUND
`Real Parties-in-Interest
`Petitioner identifies Hewlett Packard Enterprise Company as the real
`party-in-interest. Pet. 1. Patent Owner identifies Intellectual Ventures II
`LLC as the real party-in-interest. Paper 5, 1.
`
`Related Proceedings
`The parties identify the following proceeding related to the
`’818 patent (Pet. 1; Paper 5, 1):
`Intellectual Ventures I LLC v. Hewlett Packard Enterprise Co., Case
`No. 6-21-cv-00226 (W.D. Tex. filed Mar. 9, 2021).1
`
`B.
`
`
`1 Patent Owner indicates that this action is currently being transferred to the
`U.S. District Court for the Northern District of California. Paper 6, 1.
`
`2
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`IPR2022-00096
`Patent RE44,818 E
`Petitioner also notes that the ’818 patent was the subject of
`IPR2020-00859 and IPR2020-01081 filed by a different petitioner, VMware,
`Inc. Pet. 13. VMware challenged claims 1, 30, 32, 33, and 37–42 in
`IPR2020-00859, and we instituted an inter partes review on November 5,
`2020. Exs. 1013, 1015. On February 2, 2021, we terminated
`IPR2020-00859 based on a settlement. Ex. 1016. VMware challenged
`claim 17 in IPR2020-01081. Ex. 1017. On January 26, 2021, and prior to
`rendering an institution decision, we terminated IPR2020-01081 based on a
`settlement. Ex. 1019.
`
`The ’818 patent
`The ’818 patent is a broadening reissue of U.S. Patent No. 7,711,789
`B1 (“the ’789 patent”). Ex. 1001, code (64), 1:12–16. The ’818 patent is
`directed to “distributed computing systems and, more particularly, to the
`quality of service (QoS) management of virtualized input/output (I/O)
`subsystems in virtual I/O servers.” Id. at 1:20–23. Figure 1 of the
`’818 patent is reproduced below.
`
`C.
`
`3
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`IPR2022-00096
`Patent RE44,818 E
`
`
`Figure 1 depicts I/O switch fabric 104 interconnecting application
`servers 102a–c and virtual I/O server 106. Id. at 2:66–3:2. Storage area
`network (SAN) I/O subsystems 114 and local area network (LAN) I/O
`subsystems 116 are attached to virtual I/O server 106. Id. at 3:2–4. Virtual
`I/O server 106 has host bus adapters (HBAs) 108 as physical storage
`network interfaces connecting with SAN I/O subsystems 114 and network
`interfaces (NICs) 112 as physical LAN interfaces connecting with LAN I/O
`subsystems 116. Id. at 3:4–9. Virtual I/O server 106 connects to I/O switch
`fabric 104 through I/O fabric interface 110. Id. at 3:9–11. Virtual I/O
`server 106 creates virtual device interfaces for application servers 102 to
`
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`IPR2022-00096
`Patent RE44,818 E
`access the I/O subsystems as if the I/O subsystems were directly connected
`to application servers 102. Id. at 3:18–21.
`Figure 2 of the ’818 patent is reproduced below.
`
`
`Figure 2 is a schematic diagram illustrating a protocol stack and software
`modules of an application server. Id. at 2:32–34. I/O fabric PHY
`interface 202 is a hardware interface or interconnection to I/O switch
`fabric 104. Id. at 4:32–33. Encapsulation module 206 handles
`encapsulation processes associated with the virtualization of I/O subsystems
`between application server 102 and network interfaces 112 and host bus
`adapters 108. Id. at 4:51–55. Encapsulation module 206 presents a generic
`interface to higher layer virtual interfaces, such as virtual HBA layer 208a.
`Id. at 4:55–57. Virtual HBA layer 208a establishes a connection with the
`
`5
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`IPR2022-00096
`Patent RE44,818 E
`virtual block interface of virtual I/O server 106 to forward commands or
`other messages. Id. at 5:10–13. Virtual network interface 220 is used to
`access network interfaces of virtual I/O server 106 over I/O switch
`fabric 104. Id. at 5:17–20. Virtual HBA layer 208a is assigned one or more
`virtual World Wide Names (WWNs). Id. at 7:30–32.
`The ’818 patent also discloses a hierarchical token bucket (HTB)
`scheduling mechanism that controls whether packets are forwarded for
`further processing or enqueued. Id. at 9:66–10:2, 10:21–36. Such a
`mechanism may include hierarchical classes. Id. at 10:15–21.
`The ’789 patent issued from an application that was filed on
`December 7, 2007. Ex. 1002, code (22). Accordingly, the earliest possible
`effective filing date for the claims of the ’818 patent is December 7, 2007.
`Ex. 1001, code (64). Petitioner applies this date for qualifying the asserted
`references as prior art. See Pet. 12, 22.
`
`Illustrative Claim
`Of the challenged claims, claims 1, 17, 30, and 32 are independent.
`Claims 2, 3, 6, and 7 depend directly or indirectly from claim 1; claims 18
`and 19 depend from claim 17; and claims 33, 34, 37, 38, and 40 depend
`directly or indirectly from claim 32. Claim 1 is illustrative of the challenged
`claims and recites:
`1.
`A method, comprising
`maintaining a connection, over a network fabric, to a
`virtual storage network interface layer of an application server,
`
`D.
`
`6
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`IPR2022-00096
`Patent RE44,818 E
`wherein the virtual storage network interface layer is associated
`with a virtual storage node identifier;
`presenting, at a physical storage network interface, the
`virtual storage node identifier to a storage area network;
`enforcing a hierarchical token bucket resource allocation
`of bandwidth across the physical storage network interface;
`receiving, over the connection, a storage command from
`the virtual storage network interface layer of the application
`server, wherein the storage command is a command to read data
`from, or write data to, a target connected to the storage area
`network;
`classifying the storage command relative to the
`hierarchical token bucket resource allocation to determine a
`current amount of tokens available;
`comparing a data transfer size of the storage command to
`the current amount of tokens available;
`forwarding the data associated with the storage command
`to the data’s destination, if the current amount of tokens
`available are sufficient; and
`buffering the storage command, if the current amount of
`tokens available are insufficient.
`Ex. 1001, 17:44–18:5.
`
`Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 7,782,869 B1, filed Nov. 29, 2007,
`issued Aug. 24, 2010 (Ex. 1006, “Srinivasa”);
`U.S. Patent Application No. 2003/0172149 A1, filed
`Jan. 23, 2002, published Sept. 11, 2003 (Ex. 1007, “Edsall”);
`and
`
`E.
`
`Wu, J. et al., “Hierarchical Disk Sharing for Multimedia
`Systems,” Proceedings of the 15th International Workshop on
`Network and Operating Systems Support for Digital Audio and
`Video, June 13–14, 2005, pp. 189–94 (Ex. 1008, “Wu”).
`
`7
`
`
`
`IPR2022-00096
`Patent RE44,818 E
`The Asserted Grounds
`F.
`Petitioner challenges claims 1–3, 6, 7, 17–19, 30, 32–34, 37, 38, and
`40 of the ’818 patent on the following grounds (Pet. 3):
`Claims Challenged
`35 U.S.C. §
`References
`1–3, 6, 7, 17–19, 30,
`102(e)2
`32–34, 37, 38, 40
`1–3, 6, 7, 17–19, 30,
`32–34, 37, 38, 40
`
`Srinivasa
`
`103(a)
`
`Edsall, Wu
`
`
`
`A.
`
`II. ANALYSIS
`We now consider Petitioner’s asserted grounds and Patent Owner’s
`arguments in the Preliminary Response to determine whether Petitioner has
`met the “reasonable likelihood” standard for institution under 35 U.S.C.
`§ 314(a).
`
`Legal Standards
`A claim is anticipated if a single prior art reference either expressly or
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
`be arranged or combined in the same way as in the claim, “the reference
`need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
`required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
`Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, and 112.
`Because the ’818 patent was filed before March 16, 2013 (the effective date
`of the relevant amendments), the pre-AIA versions of §§ 102, 103, and 112
`apply.
`
`8
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`
`
`IPR2022-00096
`Patent RE44,818 E
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. 3 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
`559, 562 (CCPA 1978)).
`
`Level of Ordinary Skill in the Art
`Citing testimony from Dr. Striegel, Petitioner contends a person of
`ordinary skill in the art “would have had a bachelor’s degree in electrical
`engineering, computer science, computer engineering, or an equivalent field
`of study, with at least two years of experience working with distributed
`computer systems involving virtualization as well as QoS, including class-
`based scheduling mechanisms such as hierarchical token bucket (‘HTB’).”
`Pet. 15 (citing Ex. 1003 ¶¶ 27–34). Petitioner notes that we previously
`adopted this definition in IPR2020-00859. Id. (citing Ex. 1015, 9). Patent
`
`B.
`
`
`3 The present record does not include any evidence of secondary
`considerations of nonobviousness.
`
`9
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`IPR2022-00096
`Patent RE44,818 E
`Owner does not dispute Petitioner’s definition of the level of ordinary skill
`at this time.
`For purposes of this Decision, we adopt Petitioner’s definition of the
`level of ordinary skill in the art. On the present record, we are satisfied that
`this definition comports with the level of skill necessary to understand and
`implement the teachings of the ’818 patent and the asserted prior art.
`
`C. Claim Interpretation
`In an inter partes review, we construe each claim “in accordance with
`the ordinary and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the
`same as that of a district court. See id. Under the standard applied by
`district courts, claim terms are generally given their plain and ordinary
`meaning as would have been understood by a person of ordinary skill in the
`art at the time of the invention and in the context of the entire patent
`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc). “There are only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`We determine that no aspects of the challenged claims require explicit
`construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . .
`that are in controversy, and only to the extent necessary to resolve the
`
`10
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`IPR2022-00096
`Patent RE44,818 E
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`D.
`
`Patent Owner’s Arguments Regarding Discretionary Denial
`Patent Owner contends we should exercise our discretion to deny
`institution “because the Petition presents substantially the same art and
`arguments considered by the Office during prosecution.” Prelim. Resp. 44–
`49. Petitioner disagrees. Pet. 10–11.
`Institution of inter partes review is discretionary. SAS Inst. Inc. v.
`Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director
`with discretion on the question whether to institute review . . . .” (emphasis
`omitted); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never
`compelled, to institute an [inter partes review] proceeding.”). When
`determining whether to institute an inter partes review, “the Director may
`take into account whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments previously were
`presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part
`framework in determining whether to exercise its discretion under § 325(d),
`specifically:
`(1) whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office;
`and (2) if either condition of the first part of the framework is
`satisfied, whether the petitioner has demonstrated that the
`
`11
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`IPR2022-00096
`Patent RE44,818 E
`Office erred in a manner material to the patentability of
`challenged claims.
`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In
`applying the two-part framework, we consider several non-exclusive factors,
`including:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in
`which Petitioner relies on the prior art or Patent Owner
`distinguishes the prior art; (e) whether Petitioner has pointed
`out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art; and (f) the extent to which additional
`evidence and facts presented in the Petition warrant
`reconsideration of the prior art or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5,
`first paragraph). If, after review of factors (a), (b), and (d), we determine
`that the same or substantially the same art or arguments previously were
`presented to the Office, then factors (c), (e), and (f) relate to whether the
`petitioner demonstrates that the Office erred in a manner material to the
`patentability of the challenged claims. Advanced Bionics, Paper 6 at 10.
`Patent Owner contends that Wu was disclosed by the patent applicants
`and cited during prosecution of the ’789 patent and ’818 patent. Prelim.
`Resp. 48 (citing Ex. 1002, 136, 365; Ex. 1005, 523). According to Patent
`Owner, the first part of the Advanced Bionics framework is satisfied if there
`is “either overlapping art or argument,” so the patent applicants’ citation of
`
`12
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`IPR2022-00096
`Patent RE44,818 E
`Wu is sufficient to satisfy the first prong. Id. (citing Advanced Bionics,
`Paper 6 at 8). Patent Owner further contends that, under the second part of
`the Advanced Bionics framework, “the burden shifts to Petitioner to
`demonstrate a material error in the Office’s consideration of Wu,” but
`“Petitioner has failed to meet this burden.” Id.
`Petitioner argues that “[t]he prior art and arguments presented in this
`petition were not previously considered and overcome before the Office.”
`Pet. 10. In particular, Petitioner argues that “Wu was identified in an
`[Information Disclosure Statement] but never discussed or analyzed” during
`prosecution. Id. (citing Ex. 1002, 822). Petitioner likewise argues that “it
`cannot attempt to show how the Office erred in applying Wu other than by
`noting that there is no evidence to suggest that the Office reviewed or
`attempted to apply Wu at all.” Id. at 11. Petitioner additionally argues that
`the combination of Edsall and Wu asserted here has never been considered
`by the Office. 4 Id.
`Petitioner’s anticipation ground based on Srinivasa applies a reference
`that was not previously considered before the Office. In addition, Patent
`Owner’s arguments regarding § 325(d) relate solely to the obviousness
`ground based on Edsall and Wu, whereas Srinivasa is asserted in an
`anticipation ground. Because the Srinivasa ground applies different art in a
`
`
`4 Petitioner also argues that our disposition of Patent Owner’s § 325(d)
`arguments in IPR2020-00859 weighs in Petitioner’s favor here. Pet. 10.
`Patent Owner argues that this argument is “a new legal doctrine from whole
`cloth” that is “completely untethered from § 325(d) and the factors laid out
`in Advanced Bionics.” Prelim. Resp. 47. We need not and do not consider
`the disposition of the prior case in assessing Patent Owner’s arguments
`under § 325(d) here.
`
`13
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`IPR2022-00096
`Patent RE44,818 E
`different way, we find that the same or substantially the same art or
`arguments was not previously presented. Accordingly, we need not proceed
`past the first stage of the Advanced Bionics framework with respect to
`Srinivasa. Thus, § 325(d) is not implicated by Petitioner’s reliance on
`Srinivasa.
`Regarding the obviousness ground based on Edsall and Wu, we note
`that Wu was cited in an Information Disclosure Statement during
`prosecution of the ’789 patent. Ex. 1005, 523. Nevertheless, Edsall was not
`before the Office. Petitioner relies on Edsall to teach most of the limitations
`of the challenged claims. Petitioner relies on Wu only for teaching the use
`of hierarchical token buckets for disk sharing when combined with Edsall.
`See Pet. 49–51. The combination of Edsall and Wu was never previously
`evaluated. Because the Edsall–Wu obviousness ground applies different art
`in a different way, we find that the same or substantially the same art or
`arguments was not previously presented. Again, we need not proceed past
`the first stage of the Advanced Bionics framework with respect to this
`combination, and we determine that § 325(d) is not implicated by
`Petitioner’s reliance on this combination.
`Accordingly, we do not exercise our discretion to deny the Petition
`under 35 U.S.C. § 325(d).
`
`Anticipation Ground Based on Srinivasa
`Petitioner contends claims 1–3, 6, 7, 17–19, 30, 32–34, 37, 38, and 40
`are anticipated by Srinivasa. Pet. 22–47. Patent Owner disputes Petitioner’s
`contentions. Prelim. Resp. 28–39.
`
`
`E.
`
`14
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`IPR2022-00096
`Patent RE44,818 E
`Srinivasa
`1.
`Srinivasa is a U.S. patent directed to “quality of service (QoS) and the
`shaping of traffic over a switch fabric network in a distributed system that
`includes virtualization of input/output (I/O) subsystems.” Ex. 1006, 1:6–9.
`Figure 1 of Srinivasa is reproduced below.
`
`
`Figure 1 is a functional block diagram illustrating I/O switch fabric 50
`interconnecting application servers 102 and virtual I/O servers 60. Id. at
`3:8–10, 3:59–62, 16:30–32. Packets or frames of data are transmitted across
`I/O switch fabric 50. Id. at 16:30–32.
`
`15
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`IPR2022-00096
`Patent RE44,818 E
`Figure 3 of Srinivasa is reproduced below.
`
`
`Figure 3 is a schematic diagram illustrating a protocol stack and software
`modules of virtual I/O server 60. Id. at 3:14–16, 4:29–31. Multiplexer 308
`is a kernel module that transfers incoming requests from application
`servers 102 to the appropriate native HBA or NIC driver attached to virtual
`I/O servers 60. Id. at 3:67–4:3. Encapsulation modules 306 tunnel I/O
`traffic over I/O switch fabric 50 between virtual device interfaces on
`application server 102 and multiplexer 308 of virtual I/O server 60. Id. at
`4:3–6. Multiplexer 308 can be configured to provide Quality of Service
`(QoS) to the client application and servers. Id. at 4:14–15. Host bus PHY
`interface 320 is the physical hardware interface or adapter that interconnects
`virtual I/O server 60 to a mass storage system or storage network system.
`
`16
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`IPR2022-00096
`Patent RE44,818 E
`Id. at 4:47–49. Network PHY interface 340 is the physical hardware that
`provides a connection to a network, such as a LAN. Id. at 4:66–5:1.
`Figure 5 of Srinivasa is reproduced below.
`
`
`Figure 5 is schematic diagram illustrating a protocol stack and software
`modules of an application server 102. Id. at 3:20–22. Virtual block device
`driver 208 receives block requests for a given device. Id. at 8:20–23.
`Encapsulation module 206 consumes messages from higher layers of the
`protocol stack, encapsulates messages with a header, and transmit messages
`across I/O switch fabric 50 to virtual I/O Server 60.
`
`17
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`IPR2022-00096
`Patent RE44,818 E
`Figure 5A of Srinivasa is reproduced below.
`
`
`Figure 5A is a schematic diagram illustrating another implementation of
`protocol stack and software modules of application server 102. Id. at 3:23–
`25. In this implementation, virtual HBA module 208a emulates a physical
`host bus adapter relative to the native operating system executed on
`application server 102. Id. at 14:58–61. Virtual HBA module 208a, which
`is assigned one or more virtual WWNs, passes Small Computer System
`Interface (SCSI) commands, including read, write, inquiry and mode sense,
`from storage driver stack 209 to virtual I/O server 60 for execution. Id. at
`14:49–51, 15:9–12.
`The sole named inventor for Srinivasa is Venkatesh Babu Chitlur
`Srinivasa. Id. at code (75). Petitioner contends Srinivasa qualifies as prior
`
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`IPR2022-00096
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`art under pre-AIA 35 U.S.C. § 102(e) based on its U.S. filing date. Pet. 22–
`23. Petitioner notes that Mr. Srinivasa is the sole inventor for Srinivasa and
`contends that the inventive entities of Srinivasa and the ’818 patent are not
`the same because “Mr. Srinivasa and Rohit Jnagal are the named joint
`inventors on the ’818 patent.” Id. at 22.
`Patent Owner argues that “Srinivasa does not qualify as prior art
`under § 102(e) because Srinivasa is not ‘by another.’” Prelim. Resp. 34.
`According to Patent Owner, Petitioner relies “exclusively on the extra
`inventor listed on the ’818 patent as compared to Srinivasa” for establishing
`that Srinivasa is “by another.” Id. at 35–36 (citing Pet. 22). Patent Owner
`contends that this is not the relevant inquiry and, rather, that we should
`consider “whether the portions of the reference relied on as prior art, and the
`subject matter of the claims in question, represent the work of a common
`inventive entity.” Id. at 36 (quoting EmeraChem Holdings, LLC v.
`Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345 (Fed. Cir. 2017)).
`Patent Owner further argues that Petitioner’s cited portions of Srinivasa and
`the subject matter of the challenged claims of the ’818 patent must have a
`common inventive entity because Petitioner’s anticipation ground posits that
`the claims were described in a patent with Mr. Srinivasa as the sole named
`inventor. Id. at 36–37.
`The relevant portion of the pre-AIA version of § 102(e) states that “[a]
`person shall be entitled to a patent unless . . . the invention was described in
`. . . a patent granted on an application for patent by another filed in the
`United States before the invention by the applicant for patent.” 35 U.S.C.
`§ 102(e) (emphasis added). To determine whether Srinivasa qualifies under
`§ 102(e) as a patent granted on an application for patent by another, we must
`
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`IPR2022-00096
`Patent RE44,818 E
`determine whether the portions of Srinivasa relied on as prior art, and the
`subject matter of the challenged claims, represent the work of a common
`inventive entity. See EmeraChem, 859 F.3d at 1345.
`On the present record, we do not have sufficient evidence about the
`inventive entity for any of the asserted claims. Although Patent Owner
`would have us assume that Mr. Srinivasa alone must be the inventive entity
`for the asserted claims based on Petitioner’s anticipation challenge (Prelim.
`Resp. 36–37), we decline to do so. In the absence of sufficient evidence
`about the inventive entity for particular asserted claims, we are preliminarily
`persuaded by Petitioner’s showing that the ’818 patent and Srinivasa (each
`as a whole) have different named inventors. Compare Ex. 1001, code (75),
`with Ex. 1006, code (75). Thus, for purposes of this Decision, we find that
`Srinivasa qualifies as prior art “by another” under § 102(e).
`We also do not have evidence of an invention date on the present
`record other than the earliest possible effective filing date of the challenged
`claims. For purposes of this Decision, we determine that Srinivasa qualifies
`as prior art under 35 U.S.C. § 102(e) because Srinivasa’s U.S. filing date of
`November 29, 2007, is before the earliest possible effective filing date of the
`challenged claims, which is December 7, 2007. Ex. 1001, code (64);
`Ex. 1006, code (22).
`At trial, the parties may further develop the record regarding the
`inventive entity for particular asserted claims. Given that Petitioner has
`satisfied its initial burden of production regarding whether Srinivasa
`qualifies as prior art under § 102(e), the burden of production shifts to Patent
`Owner to argue or produce evidence that Srinivasa does not qualify as prior
`art. Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`
`20
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`IPR2022-00096
`Patent RE44,818 E
`1379–80 (Fed. Cir. 2015). As such, we do not agree with Patent Owner’s
`argument (Prelim. Resp. 35) that we are improperly shifting the burden of
`persuasion to Patent Owner in making this preliminary determination about
`the prior art status of Srinivasa. See Dynamic Drinkware, 800 F.3d at 1378
`(“In an inter partes review, the burden of persuasion is on the petitioner to
`prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C.
`§ 316(e), and that burden never shifts to the patentee.”).
`
`
`Claim 1
`2.
`The preamble of claim 1 recites “[a] method.” Ex. 1001, 17:44.
`Petitioner contends that Srinivasa discloses the recited “method” based on its
`anticipation analysis of the method steps in the body of claim 1. Pet. 23. As
`discussed below, we find Petitioner’s analysis these method steps to be
`sufficient for institution.
`Claim 1 further recites “maintaining a connection, over a network
`fabric, to a virtual storage network interface layer of an application server,
`wherein the virtual storage network interface layer is associated with a
`virtual storage node identifier.” Ex. 1001, 17:45–48. Petitioner cites
`Srinivasa’s description of a connection over a network fabric between a
`virtual I/O server and an application server’s virtual host bus adapter (HBA)
`layer, which sends and receives commands. Pet. 23–25 (citing Ex. 1006,
`6:64–7:2, 9:65–10:3, 14:65–15:18, 18:59–19:62, Figs. 3, 5A). Petitioner
`explains that, in Srinivasa, the virtual I/O server’s physical HBA
`“process[es] the commands and pass[es] them on to the SAN, as appropriate,
`as well as pass[es] responses back to virtual HBA 208a.” Id. at 26 (citing
`Ex. 1003 ¶¶ 63–68). Petitioner further contends Srinivasa’s virtual HBA
`
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`IPR2022-00096
`Patent RE44,818 E
`(i.e., the recited “virtual storage network interface layer”) is associated with
`a virtual World Wide Name (VWWN) (i.e., the recited “virtual storage node
`identifier”) because “the virtual HBA was assigned one or more VWWNs,
`which were used by the virtual I/O server’s HBA with respect to a SAN so
`that the virtual HBA 208a could emulate a physical HBA relative to the
`application server’s native operating system.” Id. at 26 (citing Ex. 1003
`¶¶ 68–71; Ex. 1006, 6:1–26, 14:51–64).
`At this stage, Patent Owner does not contest Petitioner’s analysis of
`the “maintaining” step of claim 1. 5 Based on the present record, we are
`persuaded preliminarily that Srinivasa discloses “maintaining a connection”
`based on its teachings of a connection between an application server and a
`virtual I/O server through a switch fabric. See, e.g., Ex. 1006, 9:65–10:3,
`Figs. 3, 5A. Srinivasa also discloses the use of a virtual World Wide Name
`(i.e., a “virtual storage node identifier”) to identify a virtual HBA (i.e., a
`“virtual storage network interface layer”) within the application server. See,
`e.g., id. at 6:9–16.
`Claim 1 further recites “presenting, at a physical storage network
`interface, the virtual storage node identifier to a storage area network.”
`Ex. 1001, 17:49–50. Petitioner maps the recited “physical storage network
`interface” to the HBA or host bus PHY interface 320 in Srinivasa’s virtual
`I/O server. Pet. 27 (citing Ex. 1006, 4:47–50, 6:1–2, 6:67–7:2). Petitioner
`contends that “the physical storage network interface for the SAN [i]s the
`virtual I/O server’s HBA.” Id. Petitioner further contends that the virtual
`
`
`5 Although Patent Owner does not dispute Petitioner’s analysis for any
`particular limitation in claim 1, Patent Owner does put forth arguments
`against Petitioner’s anticipation contentions as a whole, as discussed below.
`
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`IPR2022-00096
`Patent RE44,818 E
`World Wide Name (i.e., the recited “virtual storage node identifier”) for a
`SAN is presented to the virtual I/O server’s HBA. Id. at 27–28 (citing
`Ex. 1006, 6:9–26, 12:41–60, 14:45–15:18).
`Patent Owner does not contest Petitioner’s analysis of the
`“presenting” step of claim 1 at this time. Based on the present record,
`Petitioner has shown sufficiently that Srinivasa discloses the use of a World
`Wide Name at the HBA in its virtual I/O server, which is connected to a
`storage area network. See, e.g., Ex. 1006, 4:47–50, 6:67–7:2, 14:52–54.
`Claim 1 further recites “enforcing a hierarchical token bucket resource
`allocation of bandwidth across the physical storage network interface.”
`Ex. 1001, 17:51–53. Petitioner notes that Srinivasa’s virtual I/O server
`receives packets from the application server over the I/O switch fabric via
`PHY interface 302. Pet. 29 (citing Ex. 1006, 15:55–60, 18:23–25).
`Petitioner contends that, in turn, Srinivasa’s encapsulation module 306
`receives packets from PHY interface 302, “performs QoS/traffic shaping[,]
`and then delivers [them] to multiplexer 308.” Id. (quoting Ex. 1006, 15:55–
`60) (citing id. at 18:23–25). Petitioner additionally contends that
`encapsulation module 306 is capable of implementing hierarchical token
`bucket (HTB) resou
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