Innovations In Memory LLC v. Cisco Systems Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Innovations In Memory LLC (Delaware)
  • Defendant: Cisco Systems, Inc. (California)
  • Plaintiff’s Counsel: BC LAW GROUP, Group
• Case Identification: 2:24-cv-00360, E.D. Tex., 05/14/2024
• Venue Allegations: Plaintiff alleges venue is proper because Cisco is registered to do business in Texas, has transacted business in the district, and maintains a regular and established place of business in Richardson, Texas, within the district.
• Core Dispute: Plaintiff alleges that Defendant’s server, switch, and unified computing products infringe three patents related to dynamic performance management for storage, Fibre Channel path redundancy verification, and transparent proxying in storage networks.
• Technical Context: The technologies at issue concern performance optimization, reliability, and management in enterprise-grade Storage Area Networks (SANs), which form the backbone of modern data centers.
• Key Procedural History: The asserted patents were originally developed by Violin Memory, whose assets were acquired by the Plaintiff following Violin's bankruptcy. The complaint alleges Plaintiff sent a notice letter to Defendant on August 11, 2022, initiating pre-suit licensing discussions that were unsuccessful, a fact which may be used to support allegations of willful infringement.

Case Timeline

Date	Event
2002-09-09	Priority Date for U.S. Patent No. 7,672,226
2008-09-30	Priority Date for U.S. Patent No. 8,160,070
2008-11-13	Priority Date for U.S. Patent No. 8,285,961
2010-03-02	U.S. Patent No. 7,672,226 Issues
2012-04-17	U.S. Patent No. 8,160,070 Issues
2012-10-09	U.S. Patent No. 8,285,961 Issues
2022-08-11	Plaintiff sends pre-suit notice letter to Cisco
2022-09-01	Cisco responds to Plaintiff's letter
2024-05-14	Complaint Filed

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

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

• Issued: October 9, 2012

The Invention Explained

• Problem Addressed: The patent describes the issue of conventional disk storage arrays being too slow to meet the varied performance demands (e.g., low latency, high throughput) of different applications, which are often codified in Service Level Agreements (SLAs) (’961 Patent, col. 1:9-21).
• The Patented Solution: The invention proposes a "performance virtualization appliance" that sits between clients and a disk array. This appliance uses faster "tiering media," such as DRAM and Flash memory, to cache or store data. A virtualization controller monitors application performance, compares it against predefined SLAs, and dynamically allocates more or less of the fast tiering media to different data volumes to ensure the SLAs are met ('961 Patent, Abstract; col. 2:1-9).
• Technical Importance: This approach enables granular, policy-based control over storage performance, allowing organizations to optimize the use of expensive high-speed memory for the most critical workloads without reconfiguring the underlying storage hardware ('961 Patent, col. 2:36-41).

Key Claims at a Glance

• The complaint asserts independent claim 1 ('961 Patent, Compl. ¶17).
• The essential elements of independent claim 1 are:
  • Logic circuitry configured to identify service level agreements associated with different storage volumes;
  • Logic circuitry configured to monitor storage access performance for the different storage volumes;
  • Logic circuitry configured to compare the storage access performance with the service level agreements; and
  • Logic circuitry configured to allocate tiering media to the different storage volumes, and allocate more tiering media in response to performance not meeting the service level agreements.
• The complaint alleges infringement of "one or more claims" of the patent, which may include dependent claims (Compl. ¶16).

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

The Invention Explained

• Problem Addressed: In high-availability Fibre Channel environments, systems rely on redundant communication paths for failover. The patent notes the need for a mechanism to ensure that a redundant path is actually available and functional before a failure occurs, as simply having a second physical connection does not guarantee connectivity (’226 Patent, col. 3:6-14).
• The Patented Solution: The invention discloses a system, typically within a storage node, that maintains a "topology database" of network paths. This system is configured to detect changes in the network (e.g., a device being added or removed) and, in response, use the topology database to "verify" that at least two paths still exist to a given host node. This verification ensures that failover remains possible ('226 Patent, Abstract; col. 4:35-44).
• Technical Importance: The invention provides a proactive method for ensuring resiliency in a Storage Area Network (SAN), shifting from a reactive failover model to one that continuously validates the integrity of backup connections ('226 Patent, col. 3:24-31).

Key Claims at a Glance

• The complaint asserts independent claim 18 ('226 Patent, Compl. ¶28).
• The essential elements of independent claim 18 are:
  • A port within a storage node coupled to a Fibre Channel network;
  • A topology database that stores paths through the network to connect the storage node to a host node; and
  • A processor configured for detecting a connection change and verifying, using the topology database, that the port has at least two such paths to the host node.
• The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶27).

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

• Issued: April 17, 2012 (Compl. ¶37)

Technology Synopsis

• This patent addresses the challenge of inserting an intermediary device (a proxy) into a Fibre Channel network without requiring manual reconfiguration of the servers (initiators) and storage arrays (targets). The invention achieves this by having the proxy transparently adopt and use the network identifiers (World Wide Names) of the endpoints, making the proxy functionally invisible while allowing it to intercept and manage traffic for purposes like caching or security (’070 Patent, Abstract; col. 4:18-28).

Asserted Claims

• The complaint asserts independent claim 1 (Compl. ¶39).

Accused Features

• The complaint accuses Cisco's Unified Computing System (UCS) products, specifically the UCS 6300, 6400, and 6500 Series Fabric Interconnects operating with Cisco UCS Manager software (Compl. ¶38).

III. The Accused Instrumentality

For the ’961 Patent

• Product Identification: The accused products are Cisco's C-Series Rack Servers and X-Series Modular Systems when managed by Cisco Intersight with the Cisco Intersight Workload Optimizer functionality (Compl. ¶16).
• Functionality and Market Context: The complaint alleges that the Intersight Workload Optimizer "continuously analyzes workload consumption, costs, and policy constraints across the full stack, from applications to infrastructure, and automatically scales resources in real-time to ensure application performance" (Compl. ¶19). This functionality is central to managing performance in complex, virtualized data center environments, where resources must be allocated dynamically to meet changing demands.

For the ’226 Patent

• Product Identification: The accused products are Cisco's MDS 9000 Series Switches, including the MDS 9700 Series Directors, when used with the Cisco Nexus Dashboard Fabric Controller (NDFC) software (Compl. ¶27).
• Functionality and Market Context: The complaint alleges these products are advertised as utilizing "topology information to connect and monitor multiple devices through a Fibre Channel network" (Compl. ¶30). These switches and controllers are core components of enterprise SANs, responsible for routing traffic and maintaining the health and connectivity of the storage network fabric.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint states that claim charts are attached as exhibits (e.g., Ex. 6, 10, 14), but these exhibits were not included with the filed complaint document. As such, the infringement allegations are summarized below based on the narrative text of the complaint.

• ’961 Patent Infringement Allegations: The complaint alleges that the Cisco Intersight Workload Optimizer infringes claim 1. The theory appears to be that the Optimizer's function of analyzing workloads against "policy constraints" and "automatically scal[ing] resources" directly maps to the claimed steps of comparing performance against "service level agreements" and allocating "tiering media" to meet those agreements (Compl. ¶¶16, 19).

• ’226 Patent Infringement Allegations: The complaint alleges that the Cisco MDS Switches with NDFC infringe claim 18. The infringement theory is that these products necessarily build and maintain a map of the network, which corresponds to the claimed "topology database." The system's alleged function of using this information to "monitor multiple devices" is asserted to constitute the claimed steps of detecting connection changes and "verifying" the existence of redundant paths (Compl. ¶¶27, 30).

V. Key Claim Terms for Construction

For the ’961 Patent

• The Term: "tiering media"
• Context and Importance: The infringement analysis for the ’961 Patent will heavily depend on whether the "resources" that the accused Intersight Workload Optimizer "scales" are considered "tiering media." The patent focuses on storage media like DRAM and Flash, while the accused product manages a wider array of infrastructure resources. Practitioners may focus on this term because if it is construed narrowly to only include dedicated cache-like storage, Cisco may argue its general-purpose resource allocation (e.g., CPU, VM memory) falls outside the claim scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states, "other types of Random Access Memory... or other relatively fast disk or solid state memory devices can also be used in tiering media 50," suggesting the term is not exhaustively defined by the primary examples ('961 Patent, col. 3:19-24).
  • Evidence for a Narrower Interpretation: The primary embodiments and figures consistently depict "tiering media" as comprising "Flash memory 20 and DRAM Memory 22," which are distinct storage components separate from the main disk array. An argument could be made that the invention is limited to this specific architectural arrangement of tiered storage media ('961 Patent, Fig. 1; col. 2:21-26).

For the ’226 Patent

• The Term: "verifying... that the port has at least two such paths"
• Context and Importance: The dispute may center on the required action for "verifying." Does it necessitate an active, explicit test for a redundant path, or is the passive maintenance of a network topology map sufficient? The accused products "monitor" the network; whether this action meets the "verifying" limitation is a critical question.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests verification can occur by "polling the name table located in the fabric or as part of the loop or port initialization process," which does not necessarily require sending a new, dedicated test packet across the network ('226 Patent, col. 7:37-44).
  • Evidence for a Narrower Interpretation: Figure 6 of the patent shows a flowchart with distinct steps to "Verify Backup Physical I/F Has Connection" (640) and check if a "Redundant Path" exists (650). This may support an argument that "verifying" is an explicit, discrete action rather than an inherent result of passive monitoring.

VI. Other Allegations

• Indirect Infringement: For all three asserted patents, the complaint alleges induced infringement under 35 U.S.C. § 271(b). The allegations are based on Cisco providing product documentation, datasheets, and online instructions that allegedly encourage and instruct customers to configure and use the accused products in an infringing manner (Compl. ¶¶19, 30, 41).
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It specifically points to a letter sent to Cisco on August 11, 2022, which allegedly put Cisco on notice of the patents and its infringing activities. The complaint further alleges that any continued infringement after the filing of the suit is also willful and deliberate (Compl. ¶¶23, 34, 45).

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

1. A central issue will be one of technical mapping: Does the functionality of Cisco's accused software—such as the "Intersight Workload Optimizer" that manages general "resources"—perform the specific functions required by the patent claims, such as allocating "tiering media" in the ’961 Patent? The court will need to determine if there is a functional match between the accused commercial systems and the more specific solutions described in the patents.

2. The case will also turn on questions of claim construction and scope. For the ’226 Patent, can the "monitoring" of a network by Cisco's NDFC be construed as "verifying" redundant paths as the claim requires? For the ’070 Patent, do Cisco's Fabric Interconnects, which are foundational network components, operate as a "proxy" by transparently using endpoint identifiers in the specific manner claimed?

3. Finally, should infringement be found, a key evidentiary question will be damages and apportionment. The accused features are largely software functionalities integrated into complex and expensive hardware systems. A significant focus of the litigation would likely be on determining the proper royalty base and apportioning the value of the allegedly infringing features from the overall value of the Cisco products.