Dell Inc v. Acceleron LLC

1. Case Identification

• Case #: IPR2013-00443
• Patent #: 6,948,021
• Filed: July 12, 2013
• Petitioner(s): Dell Inc.
• Patent Owner(s): Acceleron, LLC
• Challenged Claims: 1-4, 6-19, 30, and 34-36

2. Patent Overview

• Title: Cluster Component Network Appliance System and Method for Enhancing Fault Tolerance and Hot-Swapping
• Brief Description: The ’021 patent describes a computer network appliance, such as a blade server system, comprising a backplane and multiple hot-swappable modules including CPU modules (server blades), power modules, and ethernet switch modules. The system is designed to provide high availability through shared, redundant, and hot-swappable components.

3. Grounds for Unpatentability

Ground 1: Anticipation over Fung - Claims 1-4, 6-7, 13, 18, and 19 are anticipated by Fung under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Fung (Patent 7,032,119).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fung, which was not considered during prosecution, discloses an integrated server system with all the features of the challenged claims. Fung’s system includes a chassis, a backplane, and modular, hot-swappable components, including server modules (CPU modules), power supplies, and switch modules. Petitioner contended that Fung’s server modules are stand-alone, independently-functioning computers and that the power and switch modules are shared resources interconnected by the backplane, directly mapping to the limitations of independent claim 1 and its dependents.
  • Key Aspects: This ground asserted that Fung’s disclosure of an "integrated server system" with "modular servers" that are "hotswappable to the backplane" is a complete anticipation of the core invention.

Ground 2: Obviousness over Fung and Gasparik - Claim 30 is obvious over Fung in view of Gasparik.

• Prior Art Relied Upon: Fung (Patent 7,032,119) and Gasparik (Patent 6,157,974).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Fung teaches the base method of mounting a plurality of hot-swappable, independently-functioning CPU modules in a network appliance, as required by the preamble of method claim 30. Gasparik was introduced to teach the specific hot-swap connector pin sequence recited in the method steps: connecting ground pins first, followed by power pins, and then signal pins. Gasparik explicitly discloses a hot-swappable connector with a "sequential connection" of pins with different lengths to achieve this staged connection.
  • Motivation to Combine: A POSITA would combine Fung’s modular server system with Gasparik’s connector technology because both references address the same field of hot-swappable computer systems. Implementing a well-known, safe, sequential connection for hot-swapping modules, as taught by Gasparik, would have been an obvious and predictable improvement to Fung’s system.
  • Expectation of Success: The combination was argued to be a straightforward application of known connector principles to a known system architecture, yielding predictable results with a high expectation of success.

Ground 3: Anticipation over Bottom - Claims 1-4, 6-9, 13, 18, and 19 are anticipated by Bottom under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Bottom (Patent 6,950,895).

• Core Argument for this Ground:

  • Prior Art Mapping: As an alternative to Fung, Petitioner argued that Bottom also anticipates the key claims. Bottom, also not considered during prosecution, discloses a modular server system with a "midplane" (backplane) interconnecting server blades (CPU modules), switch blades, and load-sharing power supplies. Petitioner mapped Bottom’s disclosure of "up to sixteen independent server blades" that are "adapted to be hot swapped" to the limitations of claim 1. Bottom’s use of the CompactPCI standard for its connectors was argued to inherently teach the hot-swap capabilities and pin arrangements required by dependent claims.
  • Key Aspects: This ground presented a second, independent primary reference that Petitioner alleged contained all claimed elements, strengthening the overall unpatentability case by showing the claimed features were not unique but were instead part of the established art for modular server design.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These included combining Fung or Bottom with Gallagher (Patent 6,742,068) to teach remote booting from a network attached storage (NAS) without a local hard drive. Further combinations included Fung or Bottom with PXE (a preboot execution environment specification) for similar remote booting functionalities. Finally, three-way combinations of Fung/Bottom, Gasparik, and Gallagher/PXE were asserted against method claims 34-36.

4. Key Claim Construction Positions

• "Independently-Functioning Computer": Petitioner proposed this term means a computer that "functions independently of the operations or functions of any other CPU in the computer network appliance." This construction was based on arguments the patentee made during prosecution to distinguish the invention from a prior art reference (Chen) that disclosed master/slave processor cards operating in a symbiotic relationship.
• "Stand-Alone Computer": Petitioner argued that "each CPU module is a stand-alone...computer" should be construed to mean each CPU module is "capable of operating as a stand-alone computer." This construction was derived by comparing independent claim 1 with dependent claim 13 (which recites that a CPU module operates as a stand-alone computer), asserting that the broader claim must encompass capability, not just actual operation.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner dedicated a significant portion of the petition to arguing that the challenged claims were not entitled to the filing date of the ’021 patent’s provisional application. The argument centered on the assertion that the terms "independently-functioning" and "stand-alone"—critical limitations added during prosecution—lacked written description support in the provisional disclosure. By establishing a later effective filing date of November 16, 2001, Petitioner positioned Fung and Bottom, among others, as qualifying prior art under §102(e).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6-19, 30, and 34-36 of the ’021 patent as unpatentable.