DCT

2:24-cv-00296

Innovations In Memory LLC v. IBM Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00296, E.D. Tex., 05/01/2024
  • Venue Allegations: Plaintiff alleges venue is proper because IBM is registered to do business in Texas, has transacted business in the Eastern District, and maintains regular and established places of business within the District, including in Plano, Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s enterprise storage systems and tape libraries infringe six patents related to data storage management, performance, and network connectivity.
  • Technical Context: The technologies at issue involve high-performance data storage architectures, including flash memory tiering, distributed data management, and resilient network protocols, which are foundational to modern enterprise and cloud computing environments.
  • Key Procedural History: The complaint alleges that Plaintiff and Defendant engaged in pre-suit licensing discussions beginning with a letter dated August 11, 2022. It further alleges that Defendant had notice of each asserted patent years prior to this communication, through citations made during the prosecution of Defendant's own patent applications, a fact that may be central to Plaintiff's claims of willful infringement.

Case Timeline

Date Event
2002-09-09 ’226 Patent Priority Date
2005-10-27 Alleged notice of ’226 Patent to IBM via IDS citation
2008-09-30 ’070 Patent Priority Date
2008-11-13 ’961 Patent Priority Date
2010-03-02 ’226 Patent Issue Date
2010-04-13 ’871 Patent Priority Date
2010-12-06 ’340 Patent Priority Date
2012-04-17 ’070 Patent Issue Date
2012-10-09 ’961 Patent Issue Date
2012-04-20 ’714 Patent Priority Date
2013-04-09 ’871 Patent Issue Date
2014-07-15 ’340 Patent Issue Date
2014-09-25 Alleged notice of ’871 Patent to IBM via IDS citation
2014-11-17 Alleged notice of ’070 Patent to IBM via IDS citation
2015-01-05 Alleged notice of ’961 Patent to IBM via IDS citation
2016-04-05 ’714 Patent Issue Date
2016-11-04 Alleged notice of ’714 Patent to IBM via prior art rejection
2016-11-23 Alleged notice of ’340 Patent to IBM via prior art rejection
2022-08-11 Plaintiff sends pre-suit letter to Defendant
2022-08-31 Plaintiff and Defendant hold introductory call
2024-05-01 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,304,714 - LUN management with distributed RAID controllers

  • Issued: April 5, 2016 (Compl. ¶16).

The Invention Explained

  • Problem Addressed: In large, distributed memory systems with multiple controllers accessing shared memory modules, there is a need to coordinate memory allocation to avoid conflicts, such as two different controllers assigning the same block of free memory to different logical units (LUNs) simultaneously (’714 Patent, col. 1:9-40; col. 2:54-67).
  • The Patented Solution: The invention describes a system where a group of distributed controllers each maintains a "same pool of free memory areas." When one controller receives a request to allocate memory to a LUN, it selects a free area from its local pool and then requests that the other controllers in the group make the same assignment from their pools. The system includes a process for detecting and resolving misallocations according to a defined policy, ensuring coherent management of the shared memory space without a single point of failure (’714 Patent, Abstract; col. 2:1-26).
  • Technical Importance: This approach enables scalable and resilient enterprise storage systems by allowing multiple controllers to manage a common memory pool in a distributed fashion, enhancing performance and availability.

Key Claims at a Glance

  • The complaint asserts exemplary independent claim 12 (Compl. ¶18).
  • Essential elements of claim 12 include:
    • A memory system comprising a plurality of memory controllers and memory modules.
    • Each controller is operable to maintain a pool of free memory areas.
    • A logical unit is formed from free memory areas selected from the same pool.
    • A first controller receives a request for maintenance of the logical unit.
    • The first controller selects a first free memory area from its pool and associates it with the logical unit.
    • The first controller requests that other controllers associate the same first free memory area with the logical unit.
    • The first controller receives a status message from the other controllers regarding the request.

U.S. Patent No. 8,285,961 - Dynamic performance virtualization for disk access

  • Issued: October 9, 2012 (Compl. ¶28).

The Invention Explained

  • Problem Addressed: Different applications and data volumes have varying performance requirements, often defined by Service Level Agreements (SLAs). In storage systems with multiple tiers of media (e.g., fast, expensive Flash memory and slower, cheaper disk drives), the technical challenge is to allocate the limited high-performance media intelligently to meet these disparate SLAs without manual intervention (’961 Patent, col. 1:9-32).
  • The Patented Solution: The patent describes a "performance virtualization appliance" that sits between clients and a disk storage array. The appliance includes logic to monitor storage access performance (e.g., latency, IOPS), compare this real-world performance against target SLAs associated with different storage volumes, and dynamically allocate faster "tiering media" (such as Flash or DRAM) to those volumes that are not meeting their SLAs. This allocation is responsive to the monitored performance data (’961 Patent, Abstract; col. 2:37-54).
  • Technical Importance: The invention provides a method for automated storage tiering, allowing systems to balance performance and cost by dynamically applying expensive, high-speed resources only where needed to satisfy defined service levels.

Key Claims at a Glance

  • The complaint asserts exemplary independent claim 1 (Compl. ¶30).
  • Essential elements of claim 1 include:
    • Logic circuitry configured to identify service level agreements for different storage volumes.
    • Logic to monitor storage access performance for the volumes.
    • Logic to compare the monitored performance with the service level agreements.
    • Logic to allocate tiering media to the volumes in response to the performance not meeting the service level agreements.

U.S. Patent No. 8,782,340 - Hot sheet upgrade facility

  • Issued: July 15, 2014 (Compl. ¶40).
  • Technology Synopsis: The patent addresses data migration in a tiered storage system (e.g., SSDs and HDDs). It proposes a "hot sheet upgrade facility" that uses a return-on-investment (ROI) analysis to determine whether migrating a "sheet" of data from a slow pool to a fast pool is justified. This decision is based on monitoring I/O activity over time to ensure that the performance benefit of migration outweighs the system cost (’340 Patent, Abstract).
  • Asserted Claims: Exemplary independent claim 1 is asserted (Compl. ¶42).
  • Accused Features: The complaint accuses IBM's SAN Volume Controller and DS8000 products that include "Easy Tier functionality" of infringement (Compl. ¶41).

U.S. Patent No. 7,672,226 - Method, apparatus and program storage device for verifying existence of a redundant fibre channel path

  • Issued: March 2, 2010 (Compl. ¶52).
  • Technology Synopsis: The invention relates to high-availability in Fibre Channel storage networks. It describes a method for verifying that a redundant communication path to a device exists before a failover event is required. The system detects a network connection change and verifies that a backup physical interface has a valid connection path, ensuring that a failover (e.g., moving a World Wide Name) would be successful (’226 Patent, Abstract).
  • Asserted Claims: Exemplary independent claim 18 is asserted (Compl. ¶54).
  • Accused Features: The complaint accuses IBM's Diamondback, TS4300, and TS4500 tape libraries and compatible drives, which allegedly provide "multiple communication paths between devices, including for path failover functionality" (Compl. ¶53, ¶57).

U.S. Patent No. 8,160,070 - Fibre channel proxy

  • Issued: April 17, 2012 (Compl. ¶64).
  • Technology Synopsis: This patent describes a Fibre Channel proxy device that can be inserted transparently between an initiator (e.g., server) and a target (e.g., storage array). The proxy operates by using the port identifiers (World Wide Names) of the endpoints to communicate with them, making the proxy's presence invisible and avoiding the need to reconfigure access controls on the initiator or target. This allows it to intercept and manage storage operations without disrupting the existing network configuration (’070 Patent, Abstract; ’070 Patent, col. 2:21-34).
  • Asserted Claims: Exemplary independent claim 1 is asserted (Compl. ¶66).
  • Accused Features: The complaint accuses IBM's SAN Volume Controller with Storage Virtualize software, which allegedly can "present themselves to hosts as a storage provider and to the storage system as a host" (Compl. ¶65, ¶69).

U.S. Patent No. 8,417,871 - System for increasing storage media performance

  • Issued: April 9, 2013 (Compl. ¶76).
  • Technology Synopsis: The technology is designed to improve performance for storage media with inconsistent write latency, such as flash SSDs. The system writes the same data iteratively to multiple separate media devices. This duplication allows subsequent read requests to be serviced by a device that is not currently occupied with a slow write operation, thereby reducing read bottlenecks and improving performance consistency (’871 Patent, Abstract).
  • Asserted Claims: Exemplary independent claim 13 is asserted (Compl. ¶78).
  • Accused Features: The complaint accuses IBM's SAN Volume Controllers with Storage Virtualize software, which allegedly are "able to write data into storage elements sequentially and in consideration of performance indices" (Compl. ¶77, ¶81).

III. The Accused Instrumentality

Product Identification

The complaint names several families of IBM enterprise storage products and software as the accused instrumentalities. These include the IBM Storage Scale System (formerly Elastic Storage System) product line (ESS 3000, 5000, 3200, 3500) with Storage Scale software (Compl. ¶17); the IBM SAN Volume Controller (SVC) and DS8000 series products featuring "Easy Tier functionality" (Compl. ¶29, ¶41); IBM tape libraries such as the Diamondback, TS4300, and TS4500 with compatible LTO and IBM tape drives (Compl. ¶53); and the IBM SAN Volume Controllers with IBM Storage Virtualize software (Compl. ¶65, ¶77).

Functionality and Market Context

The accused products are high-performance storage solutions marketed to enterprise customers. The complaint alleges these products incorporate specific functionalities that infringe the patents-in-suit. These functionalities include "declustered array functionality" for distributed data management (Compl. ¶21), "Easy Tier functionality" for automatically moving data between different storage tiers (Compl. ¶33, ¶45), "multiple communication paths" for network failover in tape libraries (Compl. ¶57), and virtualization capabilities that allow a controller to act as a proxy between servers and storage systems (Compl. ¶69).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

As the complaint references claim-chart exhibits that are not provided with the pleading, the infringement theories for the lead patents are summarized below in prose.

'714 Patent Infringement Allegations

The complaint alleges that IBM’s Storage Scale System products directly and indirectly infringe at least claim 12 of the ’714 Patent (Compl. ¶17-18). The infringement theory appears to be centered on the system's use of "declustered array functionality" (Compl. ¶21). The complaint does not provide sufficient detail to analyze how this specific functionality is alleged to map to the claim elements of maintaining a "same pool of free memory areas" across distributed controllers and executing a conflict resolution protocol.

Identified Points of Contention

  • Technical Questions: A primary question will be how the accused "declustered array functionality" technically operates and whether this operation meets the claim requirement of multiple controllers each "maintaining... a same pool of free memory areas." Evidence will be needed to show whether the accused system performs the claimed steps of selecting a free area, requesting other controllers to make the same association, and receiving status messages in response.

'961 Patent Infringement Allegations

The complaint alleges that IBM’s SAN Volume Controller and DS8000 products with "Easy Tier functionality" infringe at least claim 1 of the ’961 Patent (Compl. ¶29-30). The narrative theory is that the "Easy Tier" feature, which "allocates data to different storage volumes" (Compl. ¶33, Ex. 11), performs the patented method of dynamic performance virtualization. This suggests Plaintiff's position is that "Easy Tier" monitors performance against implicit or explicit policies ("service level agreements") and moves data to faster "tiering media" when performance targets are not met.

Identified Points of Contention

  • Scope Questions: The analysis may focus on whether the operational parameters of "Easy Tier" can be properly construed as "service level agreements" as required by the claim.
  • Technical Questions: A key factual question is whether the allocation of data in the accused products is performed "in response to the storage access performance not meeting the service level agreements," as the claim requires. The dispute may turn on whether "Easy Tier" is a reactive, performance-driven system that maps to the claim logic, or a more general data management tool that operates on different principles.

V. Key Claim Terms for Construction

For the ’714 Patent (Claim 12)

The Term

"maintaining... a same pool of free memory areas"

Context and Importance

This term is the foundation of the patent's distributed management scheme. The dispute will likely center on the definition of a "same pool" across physically distinct controllers and what actions constitute "maintaining" it. Practitioners may focus on this term because demonstrating that the accused distributed system's data structures are functionally equivalent to a "same pool" will be critical to proving infringement.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification's description of a "group of controllers" managing "a plurality of memory modules" could support a view that any system where controllers coordinate to manage a shared set of free resources meets this limitation, even if their internal tables are not instantaneously identical (’714 Patent, col. 2:54-67).
  • Evidence for a Narrower Interpretation: The description of a "free memory table" that is the "same... at each of the controllers" and the detailed conflict resolution procedure could support a narrower construction requiring a specific, synchronized data structure that is kept coherent through the patented protocol (’714 Patent, col. 2:23-26).

For the ’961 Patent (Claim 1)

The Term

"service level agreements"

Context and Importance

This term defines the performance benchmark against which the accused system's actions are measured. The viability of the infringement claim depends on whether the policies governing the accused "Easy Tier" functionality fall within the scope of this term.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification describes an SLA as a "storage access performance level that is expected," which could encompass any user-defined or system-default performance target, such as latency or IOPS goals (’961 Patent, col. 2:32-35).
  • Evidence for a Narrower Interpretation: The patent's context of enterprise storage and its detailed discussion of tracking specific metrics like Input/Outputs (I), Latency (L), and Throughput (T) might be used to argue that "service level agreements" requires a more formal set of defined performance parameters rather than general operational policies (’961 Patent, col. 2:48-54).

VI. Other Allegations

Indirect Infringement

For all asserted patents, the complaint alleges induced infringement under 35 U.S.C. § 271(b) and contributory infringement under § 271(c). The inducement allegations are based on claims that Defendant provides user manuals, technical documents (e.g., "IBM Redbooks"), and other instructions that actively encourage and instruct customers on how to configure and use the accused products in an infringing manner (Compl. ¶21, ¶33, ¶57). The contributory infringement allegations assert that the accused software and hardware components are especially made or adapted for infringing the patents and are not staple articles of commerce (Compl. ¶22, ¶34, ¶58).

Willful Infringement

The complaint alleges that Defendant’s infringement has been and continues to be willful. This allegation is primarily based on Defendant's alleged pre-suit knowledge of each asserted patent. For each patent, the complaint identifies a specific date (ranging from 2005 to 2016) on which Defendant allegedly gained knowledge because the patent or its application was cited during the U.S. Patent and Trademark Office's examination of one of Defendant's own patent applications (Compl. ¶19, ¶31, ¶43, ¶55, ¶67, ¶79). Willfulness is also alleged based on the notice provided by Plaintiff’s letter of August 11, 2022 (Compl. ¶25, ¶37).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A central threshold issue will be one of pre-suit knowledge and willfulness: The complaint’s assertion that Defendant had notice of each patent years before any direct communication—based on citations in its own patent prosecution history—will be a key battleground. The case will test whether such constructive notice is sufficient to establish the knowledge and intent required for willful infringement from those early dates.
  2. A key technical question spanning multiple patents will be one of functional mapping: Does the accused functionality of features like IBM's "Easy Tier" and "Storage Scale" perform the specific, multi-step logical processes required by the asserted claims? The dispute will likely focus on whether there is a direct operational correspondence or a fundamental mismatch between the accused commercial systems and the patented methods for performance virtualization and distributed data management.
  3. For patents concerning network protocols, a core issue will be one of definitional scope: Can the functionalities of IBM's Storage Virtualize software and tape library failover systems be construed to meet the specific claim limitations of a "Fibre channel proxy" that operates transparently, or a system that "verif[ies] existence of a redundant... path" before a failure? The outcome may depend on how broadly these terms are interpreted in light of the patent specifications.