Paper 13 Tel: Entered: January 16, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE

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1 Paper 13 Tel: Entered: January 16, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DELL INC. Petitioner v. ACCELERON, LLC Patent Owner Case IPR Before THOMAS L. GIANNETTI, TRENTON A. WARD, and JEREMY M. PLENZLER, Administrative Patent Judges. WARD, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION A. Background Dell Inc. ( Petitioner ) a petition to institute an inter partes review of claims 1-4, 6-19, 30, and (the challenged claims ) of U.S. Patent No. 6,948,021 B2 (Ex. 1001, the 021 Patent ) pursuant to 35 U.S.C Paper 5 ( Pet. ). Acceleron, LLC ( Patent Owner ) submitted a preliminary response. Paper 9 ( Prelim. Resp. ). We have jurisdiction under 35 U.S.C The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a), which provides as follows: THRESHOLD The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition under section 311 and any response under section 313 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. The information presented in the Petition sets forth Petitioner s contentions of unpatentability of the challenged claims under 35 U.S.C. 102 and/or 103 based on the following specific grounds (Pet ): Reference[s] Basis Claims challenged Fung , 6, 7, 13, 18, and 19 Fung and Gasparik Fung and Gallagher Fung, Gasparik, and Gallagher U.S. Patent No. 7,032,119 B2 (Ex. 1005) ( Fung ). 2 U.S. Patent No. 6,157,974 (Ex. 1007) ( Gasparik ). 3 U.S. Patent No. 6,742,068 B2 (Ex. 1008) ( Gallagher ). 2

3 Reference[s] Basis Claims challenged Fung and PXE Fung, Gasparik, and PXE Bottom , 6-9, 13, 18, and 19 Bottom and Gasparik and 30 Bottom and Gallagher Bottom, Gasparik, and Gallagher For the reasons described below, we determine that the present record fails to show a reasonable likelihood Petitioner will prevail in showing the unpatentability of any claim. Accordingly, we deny institution as to all claims of the 021 Patent. B. Related Proceedings Petitioner indicates that the 021 Patent is the subject of the following copending federal district court litigation: Acceleron, LLC v. Hitachi Data Systems Corp., Case No. 1:12-cv (N.D. Ga.); and Acceleron, LLC v. Dell, Inc., Case No. 1:12-cv (N.D. Ga.). Pet. 2. Additionally, the 021 Patent at issue in this proceeding is also at issue in Inter Partes Review No. IPR , which was concurrently with this Petition by Petitioner. C. The 021 Patent The 021 Patent is titled Cluster Component Network Appliance System and Method for Enhancing Fault Tolerance and Hot-Swapping and generally 4 Preboot Execution Environment (PXE) Specification, Version 2.1, September 20, 1999 (EX. 1015) ( PXE ). 5 U.S. Patent No. 6,950,895 (Ex. 1006) ( Bottom ). 3

4 relates to a computer network appliance including CPU modules, a power module, and an Ethernet switch module having hot-swappable connectors corresponding to mating hot swap connectors on a backplane board. Ex. 1001, 3: The 021 Patent describes a computer network appliance that allows replacement of the various modules via hot swap connectors in order to reducee the mean time to repair the computer network appliance. Id. at 5: Figure 1 of the 021 Patent, reproduced below, illustrates computer network appliance 100. As shown above in Figure 1 of the 021 Patent, computer network appliance 100 includes CPU modules 102( (a)-(e), power modulee 106, microcontroller module 108, and Ethernet switch module 110 connected to the backplane 104 via hot swap connectors. Id. at 3:18-23, The 021 Patent describes the CPU modules each functioning as a stand- alone computer. Id. at 4: Each CPU module in the 021 Patent includes a 4

5 microprocessor 202, memory module 204, bus management chipset including a Northbridge chip 206(a) and a Southbridge chip 206(b), an ethernet interface chip 208, hardware BIOS 210 and a hot swap connector 212 mounted on a PCB. Id. at 4: The hardware BIOS 210 for each CPU module provides remote boot capability enabling the CPU modules to run different types of operating systems. Id. at 4: Different CPU modules operating in the same chassis may be booted with different operating systems and different applications. Id. at 4: The status of each CPU module can be monitored by a microcontroller so that the CPU modules can be reset remotely in the event of operating system instability or crash. Id. at 4:64-5:6. matter: Claim 1, reproduced below, is illustrative of the claimed subject 1. A computer network appliance, comprising: a plurality of hot-swappable CPU modules, wherein each CPU module is a stand-alone independently-functioning computer; a hot-swappable power module; a hot-swappable ethernet switch module; and a backplane board having a plurality of hot swap mating connectors, wherein the at least one backplane board interconnects each of the CPU modules with the at least one power module and the at least one ethernet switch module, such that the at least one power module and the at least one ethernet switch module can be used as a shared resource by the plurality of CPU modules. D. Claim Construction Consistent with the statute and the legislative history of the Leahy-Smith America Invents Act, the Board will interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 5

6 37 C.F.R (b). Claims are to be given their broadest reasonable interpretation consistent with the specification, reading the claim in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 1. is a stand-alone... computer Petitioner proposes that a stand-alone computer is a computer that is configured to operate as a computer when not connected to a computer network appliance or to any other CPU. Pet. 9. Furthermore, Petitioner argues that the phrase is a stand-alone computer recited in claim 1 should be construed as a computer capable of operating as a stand-alone computer. Pet. 9 (emphasis added). Petitioner explains that the proposed construction is required because claim 13, which depends from claim 1, further recites that a CPU module operates as a stand[-]alone computer. Pet. 9. Specifically, Petitioner explains that 35 U.S.C. 112, 4 requires the phrase is a stand-alone computer to be construed more broadly than the phrase operates as a stand-alone computer recited in claim 13. Id. We are not persuaded by Petitioner s argument. The plain language of claim 1 clearly states that the CPU module is a stand-alone computer. We see no reason to construe the phrase in a manner contrary to its plain and ordinary meaning, as proposed by Petitioner. For purposes of the decision, therefore, we construe the phrase is a standalone computer to require a computer that is configured to operate as a computer when not connected to a computer network appliance or to any other CPU. 2. independently-functioning computer The term independently-functioning computer does not appear in the specification of the 021 Patent. Petitioner proposes that the term independentlyfunctioning computer be construed to have its plain meaning, which Petitioner 6

7 argues is a computer that functions independently of the operations or functions of any other CPU in the computer network appliance. Pet. 7 (quoting Declaration of Robert Horst ( Horst Declaration ), Ex. 1018, 27). We determine that this construction is consistent with the specification, which explains that different CPU modules operating in the same chassis may be booted with different OS s and different applications. Ex. 1001, 4: Therefore, we construe the term independently-functioning computer to mean a computer that functions independently of the operations or functions of any other CPU in a computer network appliance (e.g., a server). II. ANALYSIS A. Priority Claim for the 021 Patent Petitioner argues that certain claims of the 021 Patent are not entitled to the benefit of the filing date of U.S. Provisional Application No. 60/248,834 ( 834 Provisional ). Pet. 5-6 (citing Ex. 1002). Specifically, Petitioner argues that claims 1-4, 6-19, 30, and of the 021 Patent are not entitled to the provisional filing date because those claims are not explicitly or implicitly described, supported, or enabled by the disclosure of the 834 Provisional. Pet. 7. Petitioner argues that the 834 Provisional does not disclose a hot-swappable CPU module wherein each CPU module is a stand-alone independently-functioning computer, as required by claims 1-4 and 6-19, or wherein each CPU module is an independently functioning stand-alone computer, as required by claims 30 and Id. Petitioner further argues that an independently-functioning computer is not inherently a stand-alone computer and that independently-functioning is 7

8 not an inherent requirement of the hot-swappable CPU module claimed by the 021 Patent. Id. at 8. Patent Owner counters that the independently functioning feature is supported by the 834 Provisional and, therefore, all the claims of the 021 Patent are entitled to the priority date of the 834 Provisional. Specifically, Patent Owner cites to the disclosure in the 834 Provisional that heterogeneous CPU modules (different CPU speeds, memory space and bus chipsets, etc.) may be mounted in the same chassis without affecting the operation of any other CPU module. Prelim. Resp. 6 (citing Ex. 2004, 3). Additionally, Patent Owner cites to the disclosure in the 834 Provisional that different generations of CPU modules may operate in the same chassis without requiring an update of existing modules. Id. Patent Owner argues that the 834 Provisional s disclosure of mounting without affecting the operation of any other CPU module supports the notion of independently functioning. Prelim. Resp. 6. Furthermore, Patent Owner argues that the ability to mount a new-generation CPU module without updating the existing CPU modules further supports the notion of independently-functioning. Id. Thus, Patent Owner argues that the 834 Provisional provides sufficient support for the claimed stand-alone, independently-functioning computer. Id. For purposes of this decision, we are persuaded by Patent Owner s arguments that the 834 Provisional discloses a CPU module that is independently-functioning. Accordingly, we are persuaded that claims 1-4, 6-19, 30, and of the 021 Patent are entitled to the filing date of the 834 Provisional. B. Status of Fung As Prior Art Petitioner argues that Fung qualifies as prior art under 35 U.S.C. 102(e) because Fung claims the benefit of the filing date of two provisional applications 8

9 before the 834 Provisional. Pet. 17. Specifically, Petitioner states that Fung was on May 18, 2001, and claims the benefit of Provisional Application No. 60/283,375, on April 11, 2001, Provisional Application No. 60/236,043 ( Fung Provisional 1 ), on September 27, 2000, and Provisional Application No. 60/236,062 ( Fung Provisional 2 ), on September 27, Pet. 17. As shown in the timeline of filing dates for the relevant patents and their provisionals provided in Diagram 1 below, the 021 Patent was after Fung, but the 021 Patent claims the benefit of the 834 Provisional, prior to Fung. 9/27/00 4/11/01 5/18/01 11/16/00 4/30/01 6/13/01 11/16/ Prov. Fung Prov. 1 & Fung Prov. 2 Fung Prov. 3 Bottom Prov. Fung Patent Bottom Patent 021 Patent Diagram 1 As further illustrated in Diagram 1 above, Fung claims priority to three provisional applications, Fung Provisionals 1 and 2 ( before the 834 Provisional) and a third provisional application, Provisional Application No. 60/283,375, on April 11, 2001 ( Fung Provisional 3 ). Therefore, only subject matter receiving the benefit of either the Fung Provisional 1 or Fung Provisional 2 filing date would qualify as prior art to the 021 Patent under 35 U.S.C. 102(e). 9

10 Patent Owner argues that Fung does not qualify as prior art under 35 U.S.C. 102(e) because the subject matter of Fung relied upon by Petitioner is not present in either Fung Provisional 1 or Fung Provisional 2. Prelim. Resp More particularly, Patent Owner states that Petitioner identifies a server module in Fung as disclosing the CPU module claimed in the 021 Patent, but Patent Owner maintains that neither Fung Provisional 1 (Ex. 2006) nor Fung Provisional 2 (Ex. 2007) discloses a server module. Prelim. Resp. 9. Patent Owner maintains that Fung Provisional 1 discloses a computer node, but fails to disclose a server module. Prelim. Resp. 9 (citing Ex. 2006, 10). Patent Owner further notes that neither the Petition nor the supporting Horst Declaration (Ex. 1018) provides citations to either Fung Provisional 1 or Fung Provisional 2. Prelim. Resp. 9. Petitioner asserts that Fung qualifies as prior art... under 35 U.S.C. 102(e). Pet. 17. Petitioner further asserts that Fung claims the benefit of the three provisional applications. Id. But Petitioner does not provide any support from those documents. Only two of the three provisional applications referenced by Fung (Fung Provisional 1 and Fung Provisional 2) were prior to the effective date of the 021 Patent (see Diagram 1 above). For Petitioner to establish Fung Provisionals 1 and 2 as a prior art patent or printed publication, it must specify the disclosure in those references that support the relied upon subject matter from Fung. 37 C.F.R (b)(4). The Petition fails to specify such disclosure. As Patent Owner notes, neither the Petitioner nor its expert, Dr. Horst, cite either to Fung Provisional 1 or Fung Provisional 2. See Pet ; see also Ex. 1018, In fact, Petitioner fails to provide copies of Fung Provisional 1 or Fung Provisional 2 as exhibits. The Petition and the Horst Declaration rely only 10

11 upon the issued Fung patent (Ex. 1005), without demonstrating how the pertinent subject matter in Fung is supported by Fung Provisional 1 or Fung Provisional 2. See Pet ; see also Ex. 1018, Therefore, Petitioner fails to identify the specific portions of the evidence that support its challenges, as required by 37 C.F.R (b)(5). We determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail with respect to the challenges that include Fung, and these challenges are denied. C. Status of Bottom As Prior Art Petitioner argues that Bottom qualifies as prior art at least to claims 1-4, 6-13, 18, 19, 30, and under 35 U.S.C. 102(e) because Bottom claims the benefit of a provisional application before the 021 Patent. Pet Specifically, Petitioner states that Bottom was on June 13, 2001, and claims the benefit of U.S. Provisional Application No. 60/287,466, on April 30, 2001 ( Bottom Provisional ). Pet. 17. As shown in Diagram 1 above, although Bottom and the Bottom Provisional were before the filing date of the 021 Patent, they were after the 834 Provisional. Therefore, Bottom would qualify as prior art to the challenged claims only in the event that we were to agree with Petitioner that these claims of the 021 Patent are not entitled to the benefit of the 834 Provisional. As discussed above, we are not persuaded by Petitioner s argument. Accordingly, we determine that Bottom does not qualify as prior art to the challenged claims of the 021 Patent. Therefore, Petitioner has not demonstrated a reasonable likelihood that it will prevail with respect to the challenges that include Bottom, and these challenges are denied. 11

12 III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its assertions as to any of the challenged claims. We therefore do not institute an inter partes review on any of the asserted grounds as to any of the challenged claims. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to the challenged claims of the 021 Patent. PETITIONER: Kevin J. Meek Paula D. Heyman Nicholas A. Schuneman BAKER BOTTS LLP kevin.meek@bakerbotts.com paula.heyman@bakerbotts.com nick.schuneman@bakerbotts.com PATENT OWNER: N. Andrew Crain Scott Horstemeyer THOMAS HORSTEMEYER LLP andrew.crain@thomashorstemeyer.com scott.horstemeyer@thomashorstemeyer.com 12