Dell Inc. v. Elecs. & Telecomms. Research Inst.

Addressing the issue of anticipation in the context of an inter partes review (IPR), the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (Board) rejected a petitioner’s anticipation challenge, finding the cited prior art did not disclose a “RAID” (redundant array of inexpensive disks) as required by the challenged patent.  Dell Inc. v. Elecs. & Telecomms. Research Inst., Case No. IPR 2013-00635 (PTAB, Feb. 27, 2015) (Anderson, APJ).

The petitioners requested an IPR challenging a patent directed to computer network systems.  The Board instituted a trial, and after briefing and an oral hearing, issued a final decision ruling that the petitioners failed to show the patent was invalid. The Board’s decision initially construed a number of claim terms.  Importantly, it construed a RAID to be “a single logical unit for mass storage using multiple physical disk drives.”

After claim construction, the Board found that the asserted prior art did not anticipate the challenged patent because it did not disclose a RAID as construed by the Board.  The petitioners argued that the art’s dynamic access storage devices (DASDs) were the equivalent of the patent’s RAIDs. Specifically, one of the prior art figures, petitioners argued, shows all elements of the challenged patent, but with DASDs substituting for the RAID. Although the figure used DASDs, the prior art’s background discussion states that DASDs can be configured to form a RAID.  Finally, petitioners argued the operation of the prior art’s DASDs was the equivalent of a RAID.

The patent owner argued the prior art figure made no mention of a RAID. Also, the background discussion of the relation between DASDs and a RAID was not related to the figure, making the petitioners’ argument an obviousness inquiry rather than anticipation. Further, the specification made the clear distinction that a RAID would be many DASDs.

The Board concluded that disclosure of DASDs being capable of a RAID configuration is not the same as disclosure of a RAID. As the patent owner argued, the prior art patent (Hathorn) specification created a distinction between the two. The Board agreed that Hathorn may disclose a RAID type configuration and function, but emphasized the question at issue was whether Hathorn disclosed a RAID as a “single logical unit.” In this instance, since the petitioner’s IPR only included an anticipation challenge, the Board concluded it did not meet its burden to establish invalidity.