By Thomas Long, J.D.
Cancellation on anticipation grounds of two claims of an Acceleron, LLC, patent for a computer network appliance with “hot-swappable” components has been vacated by the U.S. Court of Appeals for the Federal Circuit and remanded to the Patent Trial and Appeal Board for reconsideration. Rejection of one claim was based on an incorrect claim construction, and the other rejection was procedurally improper. The court affirmed the Board’s confirmation of seven claims challenged in an inter partes review (IPR) brought by Dell Inc. because the Board did not err in finding that a key prior-art reference failed to disclose a particular claim element (Dell Inc. v. Acceleron, LLC, March 15, 2016, Taranto, R.).
Patent-at-issue. Acceleron owned U.S. Patent No. 6,948,021 (“the ’021 patent”), which disclosed a computer-network appliance containing several hardware modules that could be removed and replaced while the appliance remained on. The removable modules are known as “hot-swappable” components. Hot-swappable components disclosed in the ’021 patent included central-processing unit (CPU) modules, a power module, a microcontroller module, and an ethernet switch module.
Review proceeding. Dell petitioned for IPR of the ’201 patent, arguing that prior art anticipated claims 3, 14-17, and 20, and that the prior art reference, in combination with another prior art patent, rendered claims 34-36 obvious. The Board confirmed the validity of claims 14-17 and 34-36, but it agreed with Dell that claims 3 and 20 were invalid for anticipation. Both parties appealed.
Confirmation of claims 14-17 and 34-36. The key prior-art reference in the case was U.S. Patent No. 6,757,748 (“Hipp”). Hipp described a network interface card that coordinated traffic between multiple web server processing cards over one or more networks. The Board found that Hipp did not meet a requirement in claim 14 for a basic input/output system (BIOS) programmed to instruct “a network attached storage (NAS)” to locate an operating system from which to boot a CPU module. On that basis the Board upheld claim 14. Finding that Dell made no materially different arguments for claims 15-17 and 34-36, the Board upheld those claims as well.
The Federal Circuit noted that Acceleron’s expert explained that, even if Hipp taught that the CPU could boot from software located somewhere on the network, there was no specific teaching or suggestion in Hipp to boot the web server cards from the NAS or to instruct the NAS to locate an operating system from which to boot. No evidence submitted by Dell established the contrary. Thus, the Board could properly have found that Hipp did not explicitly or implicitly describe its web server processing cards as programmed to be capable of remotely booting from the NAS. For anticipation purposes, the absence of such a teaching made it immaterial whether, as Dell contended, a user of the Hipp system could modify the system to activate such remote booting, the court said. Therefore, the court affirmed the Board’s finding that Hipp did not anticipate claims 14-17 and 34-36.
Anticipation of claim 20. The Board found that claim 20 was anticipated by Hipp. Claim 20 disclosed a computer network appliance comprising a hot-swappable CPU module; a hot-swappable power module; a hot-swappable ethernet switch module; and a backplane board having a plurality of hot swap mating connectors; and a microcontroller module and a dedicated Ethernet path. The appliance’s dedicated ethernet path was separate from a switched fast ethernet connection and provided the microcontroller module with a connection to remotely poll the CPU module, the power module, and the Ethernet switch module. The key aspect of the claim for purposes of the IPR was the requirement for “remote polling” of the CPU module.
In its claim construction, the Board concluded that claim 20 did not require the system’s microcontroller module to be programmed for remote polling, but required only that the claimed dedicated ethernet path would allow remote polling if the microcontroller module were so programmed. According to the Board, Hipp’s disclosed inter-integrated circuit (I2C) bus could be used for polling. Therefore, the Board determined that Hipp anticipated claim 20.
On appeal, Acceleron contended that claim 20 could only be reasonably construed to require that the microcontroller module actually be configured for remote polling. The Federal Circuit agreed. The Board’s construction ran counter to the claim-construction principle that meaning should be given to all of a claim’s terms, the court said. The Board’s reading of claim 20 denied any substantial meaning to “remotely poll.” Therefore, the court vacated the Board’s cancellation of claim 20 and remand for reconsideration under the correct claim construction.
Anticipation of claim 3. The Board found that claim 3 is anticipated by Hipp. This finding was based entirely on the Board’s agreement with a contention by Dell that a figure in Hipp showed “slides” that constituted caddies as required by claim 3. Acceleron argued that Dell’s contention should be disregarded because it had been improperly presented for the first time at oral argument. The Board disagreed, concluding that Dell had pointed to that structure in its reply.
The appellate court agreed with Acceleron’s argument that the Board had denied Acceleron notice and a fair opportunity to respond to this basis of cancellation. Therefore, the court vacated and remanded the Board’s ruling as to claim 3.
The case is Nos. 2015-1513 and 2015-1514.
Attorneys: Paula Heyman (Baker Botts, LLP) for Dell Inc. Norman Andrew Crain (Thomas|Horstemeyer LLC) for Acceleron, LLC.
Companies: Dell Inc.; Acceleron, LLC
MainStory: TopStory Patent FedCirNews
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